US 20140208439 published yesterday, with the intriguing title, "INJUSTICE DETECTING SYSTEM, INJUSTICE DETECTING DEVICE AND INJUSTICE DETECTING METHOD". Thinking that someone may have invented a way to identify rogue regimes - a method for which there is a long-felt need, considering that much of the world seems to be unable to identify Hamas as such, even though there couldn't be a clearer example - I quickly looked at the claims. Imagine my disappointment when I saw that claim 1 reads,
1. An injustice detecting system, comprising: a history storing unit which stores operation history information of a monitored device; an audit information disclosing unit which discloses audit information including at least information which indicates that an audit for detecting an injustice; and an injustice detecting unit which detects an injustice on the basis of pre-disclosure operation history information corresponding to said operation history information before a time when said audit information is disclosed, and post-disclosure operation history information corresponding to said operation history information after the time when said audit information is disclosed.
My hopes dashed, I surmised that there must be a mistake in translation somewhere (the application belongs to Japan's NEC Corporation, not an industrial lightweight). so I looked at the related PCT/JP2012/061799 (WO/2012/153746) for clues. The PCT has the title, "FRAUD DETECTION SYSTEM, FRAUD DETECTION DEVICE, FRAUD DETECTION METHOD, AND NON-VOLATILE MEDIUM", and the English-language abstract,
"The present invention provides a fraud detection system enabling detection of fraud that is performed through an operation that cannot be distinguished from normal operation. This fraud detection system is provided with: a history recorder for recording operational history information for a monitored device; an audit information disclosure unit for disclosing audit information including at least information indicating that an audit for detecting fraud is to be implemented; and a fraud detector for detecting fraud on the basis of pre-disclosure operation history information, which is operation history information from before the time at which the audit information is disclosed, and post-disclosure operation history information, which is operation history information from after the time at which the audit information is disclosed."
Ahh, that's more like it. But where did the "injustice" make its way into the US application?
One question I repeatedly hear from non-Israelis is, Why is there so much innovation coming out of Israel? It’s a question that a number of people have tried to answer, and even gave rise to a book, “Start-Up Nation”. I think the current missile attacks from Gaza, and how those have been parried, provide a good illustration of at least part of the answer.
In 1991, during the Gulf War, Saddam Hussein launched 42 Scud missiles at Israel, i.e. about one a day for the duration of the war. Despite being fired from several hundred miles away, thus providing several minutes’ lead time to determine when and where a missile would hit, each time a Scud was fired, warning sirens went off all over the country. US-built Patriot missile batteries were deployed in Israel, but their success rate in intercepting incoming Scuds was abysmal.
Flash forward to today. In the past month, Hamas has fired over 1000 missiles into Israel, from right on the border, not far-off Iraq, leaving far more less time to respond to a much larger barrage than was faced in 1991. Within seconds after launch, the fact that it’s a missile (and not something else) and its trajectory are known, and the population in the neighborhood where the missile will land is warned (via air raid sirens, television and radio notices, and a smartphone app); there are no sirens in nearby towns. According this July 13 Times of Israel article, the country is presently divided into 235 sectors for this purpose, and in the future that number is likely to double.
The warning system itself constitutes a major accomplishment, but then comes the truly amazing part: in cases where missiles are calculated to hit populated areas, an interceptor missile is launched. (If you’re my age, think back to Atari Missile Command, except this system is real.) And unlike the Gulf War-era Patriot missiles, today’s Iron Dome missile system, developed here in Israel, has been remarkably effective in blowing Hamas’ weaponry out of the sky, even as it travels at supersonic speeds. No one else has developed anything close.
Of course, technology developed for military purposes eventually finds its way into civilian applications. More importantly, when the kind of brainpower that went into developing the Iron Dome is turned to other areas, you get innovative solutions to many problems.
On July 13 the ILPTO posted the notification at right on its website. The notification links to this notice from the Justice Ministry, also dated July 13. (A separate notification was sent out a few days earlier via the ILPTO's email distribution list, which links to what appears to be the same MOJ notice, but dated July 10.)
The MOJ has proposed significant changes to the implementation rules for the patent statute, and in its notice it has requested public comments, which can be sent to firstname.lastname@example.org.
By today, July 22.
Yup, a total of nine days (12 if you got the ILPTO's email) to comment.
There's no explanation of the rationale behind the proposed rule changes, although looking through them (detailed comments to follow later), it appears that these are the brainchild of ILPTO itself, rather the something originating in the MOJ. There's also no mention of where, if at all, the comments will be posted for public consumption.
The short comment period, coupled with lack of explanatory material, is enough to make one think the prime mover behind the proposed rules (the MOJ or, more likely, the ILPTO) isn't really interested in hearing from the public. But even the USPTO, which also sometimes seems not to care too much what the public has to say, nevertheless gives about two months minimum to post comments on proposed rules, and those comments are made available for the public to view. See, for example, here, with public comments on the so-called "attributable ownership rules"; those proposed rules were first published on January 24 and the comment period, originally set for March 24, was then extended into April.
There's also the small matter of Hamas ratcheting up its latest round of missile attacks on Israeli citizenry around July 4, and Israel beginning to root out the problem with air strikes on July 8 followed by a massive call-up of reserve soldiers not long thereafter, and the present ground action to destroy tunnels used by Hamas to store weapons, protect its leadership (but not other Gazans) from aerial bombardment, and enter Israel to carry out terrorist attacks. No doubt some people who might want to comment have thus been otherwise preoccupied.
There's no real reason to rush the comment period: the rules will have to go through the Knesset Constitution, Statute and Law Committee, which will be on break throughout August and unlikely to schedule these proposed rules for discussion until at least September.
If the MOJ is serious about wanting public comments, it will extend the comment period by at least a month, and post the comments received for public viewing. I'm fairly sure it will do the former, but in case it doesn't do the latter, I ask any readers who do submit comments to send copies to me so they can at least be posted here.
In Israeli slang there’s the person who is a “rosh gadol” versus the person who is a “rosh katan”, literally “big head” versus “small head”. A “rosh gadol” is someone who volunteers to take on responsibility. A “rosh katan” is someone who avoids taking on responsibility and who tries hard not to stand out, someone who in English we would describe as a person who keeps his head down.
The “rosh gadol”/”rosh katan” dichotomy came to mind as I was listening to Drew Hirshfeld and June Cohan of the USPTO talk yesterday at BIO 2014 about the USPTO’s patent eligibility guidelines, which were published earlier this year in response to the Mayo and Myriad decisions. (I leave it to the wonderful guys and gals at PatentDocs to report on the substance of those talks.) From the moment of their issuance, those guidelines have been roundly attacked by people in nearly all corners of the patent world, both on procedural grounds (for first publishing the guidelines and only afterward soliciting outside input) and substantive grounds, and Mr. Hirshfeld addressed many of the criticisms that have been raised against the guidelines. Specifically with respect to the complaint that the guidelines are overly broad and go well beyond what the Supreme Court said in the Myriad and Mayo decisions, Mr. Hirshfeld explained that in issuing the guidelines, the PTO attempted to synthesize all the Supreme Court caselaw on patent eligibility – Funk Brothers, Benson, Flook, Chakrabarty, Mayo, Myriad, etc.
The problem, of course, is that those cases are not reconcilable, and collectively the later cases in the group represent the conflation of the novelty and obviousness tests of 25 U.S.C. 102 and 103 with the patent-eligibility requirement of 101 – in other words, a complete ignoring by the Court of the enactment of the 1952 statute and a return to the pre-1952 law. In the face of such an impossibility, the “rosh katan” approach would have been to simply take Myriad and Mayo at face value, and limit their applicability to the exact facts at issue in those cases. The PTO’s choice to instead attempt to synthesize those cases into a set of coherent rules for patent eligibility is a very “rosh gadol” thing to do, because it’s unnecessary to try do the impossible.
Unfortunately, this particular attempt to do the impossible is also harmful. As anyone who has read the guidelines knows, at best they will cause examiners to waste time assessing the patent-eligibility of claimed inventions the patent-eligibility of which is a no-brainer. See example “C” of the guidelines, which takes a whole page to explain why – duh! – a claim on a firework cartridge is patent-eligible. At worst, the guidelines make it impossible to have patent claims of meaningful scope deemed patent-eligible when those claims include a recitation of materials that are (sort of) found in nature.
For instance, instead of judging whether an antibiotic isolated from nature is new or non-obvious, a claim drawn to such an isolated antibiotic will be deemed patent-ineligible, even though the antibiotic is not found in isolation in nature, because the antibiotic compound itself exists in nature. And the guidelines indicate (see example “B” therein) that a claim drawn broadly to a method of treating an infection using that antibiotic will be deemed patent-ineligible as well; only if a particular dosing regimen is recited will they be considered patent-eligible. Such preclusion from patent protection will in turn preclude the development of new antibiotics isolated from nature – who’s going to invest over a billion dollars running the FDA gauntlet for a compound that anyone else can then use or sell?
Instead of taking a Quixotic, “rosh gadol” approach, the PTO would have done better to be a “rosh katan” and to simply limit its guidelines to the facts of each case, thereby limiting the potential damage to patentability. The Supreme Court has said (incorrectly) that DNA clipped from a gene is the same as naturally occurring DNA, and therefore patent-ineligible? Ok. Make that your guideline, and leave it at that. No need to extrapolate from a decision that’s founded on (un)scientific nonsense. Likewise for the administering-measuring-correlating steps at issue in Mayo that the Court said are patent-ineligible – limit the guidelines to that particular case. If the PTO later issues a patent with claims that the nine robed wizards who have shown themselves to constitute one the dumbest groups of smart people in the world think are directed to patent-ineligible subject matter, they’ll say so. In the meantime, the PTO won’t be pulling the rug out from under an entire field of endeavor, namely the development of new medicines and diagnostic tests.
Unquestionably the highlight of the session was the rebuke given to the PTO by one of their own, Nancy Linck. Dr. Linck, now of counsel at Rothwell Figg, served as the Solicitor at the PTO (the top legal advisor) in the mid-1990’s, and also served as an administrative patent judge before returning to private practice. She put it simply (and if this isn’t an exact quote, it’s close): “You’re going about this all wrong”. When she was at the PTO and new examination guidelines needed to be put in place, she said, the PTO tried to limit the damage, and issue minimally invasive guidelines. If there’s a question of patent-eligibility, she said, then the PTO should err on the side of eligibility, not the other way around.
In other words, on the patent-eligibility issue, the PTO should be a “rosh katan”.
Comments on the guidelines may be submitted until July 31 to email@example.com. If you think new medical treatments are a good thing, you should weigh in on why the guidelines are bad.
Yesterday Elon Musk of Tesla Motors put up this blog post, in which he is apparently trying to say that as long as he's in charge, Telsa won't enforce any of its patents, because he wants to encourage others to develop sustainable transportation. (That reading of it seems to be consensus among tech business writers, such as Will Oremus at Slate.)
Inasmuch as none of the big automakers are trying to copy Tesla or even make a serious run at the non-hydrocarbon burning vehicle market, a point that Musk makes in his post, there seems to be little downside to taking this stance, and far be it for me to second guess his business strategy. As a lawyer, however, I ask myself if his promise is backed up by action. For example, by dedicating Tesla's patents to the public, something that can be done through the USPTO.
Last year I helped organize a panel for the AIPLA national meeting on the intersection between IP rights and free speech. One of the speakers was Paul Levy of Public Citizen, who at the time was representing a designer and a purveyor of T-shirts and coffee mugs in a suit filed against some rather humorless goons at the NSA. The NSA had sent a cease-and-desist letter and was threatening the merchants with criminal prosecution for selling wares emblazoned with the logos below:
I was reminded of this when Patently-o reported earlier this week about another group of humorless people, namely Hillary Clinton and her lawyers, who tried to stop the same merchants from selling t-shirts that modified her campaign logo to make a point:
This time, the bozos are asserting trademark and copyright infringement, and have told the online sellers to remove the goods in question. Mr. Levy has told them in lawyerspeak to back off; they have until tomorrow to rescind their takedown demand or he's going to haul them into court, where he will trounce them if the case is ever heard on the merits. You'd think a lady with a law degree from Yale would know better. Particular a lady who aspires to take an oath of office in which she'll swear to uphold the Constitition of the United States, the First Amendment of which protects this kind of speech.
I pointed out the Hillary debacle to some friends who I thought would appreciate it, and one of them was kind enough to send me this link to a T-shirt that as an IP practitioner I find very funny:
As Homer Simpson might say, "It works on so many levels."
UPDATE: Hillary (or her sycophants) remembered what the First Amendment is about and backed down before the expiration of the June 12 deadline. No suit filed, T-shirts again available at CafePress and Zazzle.
If you're going to sue someone for infringement, it's a good idea before filing suit to make sure that you've got at least a colorable argument that your claims cover the allegedly infringing product. Not only will you increase the odds that you (or your client) will prevail, but you can avoid those nasty Rule 11 sanctions. As the CAFC just explained to some Israeli expats who were playing New York lawyer.
Yesterday I discussed the ILPTO’s new policy requiring applicants, in certain situations, to submit to the ILPTO certified copies of their own Israel priority documents, notwithstanding the fact that the ILPTO is already in possession of those documents.
Apparently the ILPTO is actively looking for ways to reach greater heights of inanity. A colleague has now related that the ILPTO will not provide him with a certified copy of an issued patent because he is neither the agent of record nor the applicant.
That position doesn’t just defy logic. Someone at the ILPTO needs to go back and read the patent statute, section 168 of which says:
עיון לציבור וקבלת נסחים מאושרים
(א) הפנקס והמסמכים שיש לשמרם לפי סעיף 167 יהיו פתוחים לעיון הקהל; אולם מסמכים הנוגעים לבקשת-פטנט שעדיין לא פורסמה לגביה הודעה לפי סעיף 16א או לפי סעיף 26, לפי המוקדם, לא יהיו פתוחים לעיון.
(ב) כל אדם יהא זכאי לקבל נסח מאושר בחותם הלשכה מכל דבר שבפנקס או מהמסמכים הפתוחים לעיון לפי סעיף זה אם ביקש זאת בדרך שנקבעה ואם שילם את האגרה שנקבעה.
168. Public Inspection and Certified Copies
(a) The Register [of patents] and the documents that must be retained [by the Office] per section 167 shall be open to public inspection; however, documents pertaining to a patent application for which a notice per section 16A or 26 has not yet been published [i.e. which has not yet been opened for public inspection], whichever is earlier, shall not be open for inspection.
(b) Any person shall be entitled to obtain a certified copy, impressed with the seal of the Office, of anything in the Register or from the documents which are available for public inspection in accordance with this section, if he so requested in the manner to be prescribed [in the Regulations] and paid the prescribed fee.
If that’s not a clear instruction, you shouldn’t be working at the ILPTO.
Even without that particular part of the patent statute, my colleague would still be entitled to have the ILPTO provide him with a copy of the patent (presumably certified as being a true and correct copy from the ILPTO’s records) under the Freedom of Information Act (חוק חופש המידע).
Ah, who cares? What’s a little refusal to follow statutory instructions between friends?
Last week the Israel PTO published two more “Commissioner’s circulars” (חוזרי רשם in Hebrew) to add to the burgeoning number of such expressions of ILPTO policy. A jar of Jelly Bellies to anyone who can indicate off the top of their head a complete list of circulars that are currently in force. An extra box of spicy cinnamon jelly beans if you can also tell us which “Commissioner’s notices” (הודעות רשם) are still relevant.
One of the new circulars deals with cases in which an Israel patent application serves as a priority document for another Israel application.
A preliminary note: early in his tenure, the present Commissioner published a “circular on circulars”, in which he said that he would publish drafts of new circulars and allow a comment period (usually two weeks) before finalizing them. He didn’t do that for either of the two new circulars, but that’s nothing new, as many (or most? I haven’t counted) circulars published by the PTO since that time have not been subject to comment beforehand. In the present case, aside from exposing the ILPTO’s hypocrisy in talking a good game about “transparency” but clearly having no idea what the word means, comments beforehand would have spared the ILPTO some embarrassment. To wit:
Since around 1995, the Israel patent statute has allowed an applicant to claim Paris Convention priority from an earlier Israel patent application. Prior to that, priority could only be claimed from a non-Israel application, a rule which in effect penalized Israeli applicants with one year less patent term than foreign entities. Nowadays, the most common situation in which priority to an earlier Israel application is claimed is in the filing of a PCT application: a first application is filed in Israel, a PCT is filed claiming priority from the Israel application, and then a national phase application is filed in Israel. In such situations, a certified copy of the priority application must be submitted to the Receiving Office, so there’s no need to file a copy of the priority application with the ILPTO upon national phase entry. Of course, if the ILPTO is the Receiving Office, the applicant can just indicate on the PCT Request form that the RO should provide a copy of the priority application, and the RO/IL will comply.
Less common is the situation in which a follow-on application is filed directly in Israel at the end of the priority year. The new circular sensibly explains that in such a case, there is no need to provide the ILPTO with a certified copy of the priority document. Well, no need, unless the priority application was abandoned before it was laid open to the public 18 months after filing per section 16A of the statute. If the priority application was abandoned before being made public, the new circular says that the applicant needs to provide the ILPTO with a certified copy of the priority document.
Yes, you read that right: the applicant must provide the ILPTO with the priority document that the ILPTO already has in its possession.
What a model of efficiency! Israeli applicants can now order certified, paper copies of their priority documents, which the ILPTO will mail to the applicants, which the applicants can then send back to the ILPTO when filing a follow-on application. Because, you know, it would be too much trouble for the ILPTO to give itself a copy of the priority document.
Keeping in mind that the concept of electronic patent filing remains a foreign one to the ILPTO, the guess here is that the ILPTO doesn’t scan the paper copies of patent applications until close to the 18-month publication date, so that if an application is abandoned before that time, there is no electronic copy of the application available. But I could be wrong about that.
The way the new circular is worded, one can envision several absurd situations arising. For example, if Israel application B is filed within one year of Israel application A, with a priority claim to A, and then A is abandoned after the filing of B but before the 18-month publication date, then apparently the applicant will have to file a paper copy of application A in the file of application B. Why the necessity to file papers in B should be contingent on actions that happen in A, a separate case, after B has already been filed, isn’t immediately clear to this writer or to anyone with whom he has spoken, and the rationale isn’t explained in the circular. If, however, B was a PCT application, then abandoned/pending status of A wouldn’t matter: one could file A in Israel, abandon then next day, then 11 months later file a PCT at the RO/IL claiming priority from Israel application A, and, as noted above, instruct the ILPTO to provide the IB with a copy of the priority document.
By comparison, while the USPTO is far from perfect in its handling of applications, this particular case is another example where the ILPTO would have done well to see how the USPTO does things. One of the nice things about making one’s first filing a US provisional application is that you don’t need to provide the USPTO with a copy of the priority application when subsequently filing a US non-provisional application that claims the benefit of the provisional – you just indicate on the Application Data Sheet that the new application claims the benefit of the provisional. And when filing a PCT application that claims priority from the provisional, it’s easy to tell the US Receiving Office to provide a copy of the priority provisional to WIPO, or to tell the USPTO allow WIPO to obtain a copy of the priority provisional.
I haven’t looked at the numbers, but I suspect that this particular circular will affect a relatively small number of applications. Which makes one wonder why the Commissioner bothered to publish it in the first place, given the maxim “Better to be thought of a fool than to open one’s mouth and remove all doubt”. Perhaps someday the Commissioner will solicit input from people who have actually prepared and filed patent applications before publishing his missives. As his “circular on circulars” asserts is his policy.