(As the Israel PTO is closed this week for Passover, I thought it would be a good time to discuss two not-so-recent ILPTO decisions that pertain tangentially to the Exodus from Egypt; I leave it to the reader to figure out the connection.)
Most people are familiar with the tallit, a rectangular garment with strings (called tzitzit) tied at the corners worn by Jews when praying. Fewer people are familiar with the tallit katan (literally “little tallit”) that religiously observant Jews wear throughout the day. Both garments are derived from the Biblical command (Numbers 15:38-39) to “make for themselves tzitzit on the corners of their garments throughout their generations”.
Unlike the tallit, which the wearer wraps around himself over his clothing, the tallit katan is worn over the torso, usually under one’s shirt, and thus requires a hole in the middle through which the wearer’s head can fit. In some cases this is provided as a simple oval-shaped hole; in other cases the hole is smaller but is accompanied by a slit running from the front middle thereof along the longitudinal axis of the garment. The edge of the head opening often tears over the course of use, particularly when the opening is not an oval but includes the slit, in which case tearing at the apex of the slit is common. This problem exists notwithstanding the fact that many manufacturers reinforce the edge of the head opening with stitching. And notwithstanding the fact that other similarly-worn garments – a poncho, say, or Hanes undershirts – don’t seem to suffer similar fates, which would seem to suggest that the problem inheres in the current manufacturing practices of the manufacturers of tallitot katanot, and not in the garments themselves.
Shlomo Avrahami of Mishkan Hatchelet Industries Ltd., a company based in Beer Sheva that manufacturers tallitot ktanot (and not to be confused with the Ptil Tchelet association that makes blue-dyed strings for tzitzit), developed what he (or his boss) thought was a new and non-obvious solution to the problem of tear-prone head openings: reinforce the edge of the head opening by sewing a strip of polyester to the edge, using overlock stitching such that the stitching goes through the polyester strip, and doesn’t merely hold the strip in place without actually piercing the strip. So Mishkan Hatchelet engaged the services of local patent agent firm and on March 4, 2002 filed Israel Patent Application No. 148492 on the improved tallit katan. And that’s where the trouble started.
Actually, the trouble seemed to start even before they filed the patent application. First, judging from the fact that no IDS was filed with the filing of USSN 10/117435 (the only corresponding case filed outside of Israel) in April 2002 (just one month after the Israel application was filed), Mishkan Hatchelet didn’t conduct or order a prior art search before having the application drafted. Which was a shame, because they probably would have found no shortage of art describing overlock stitching, or the reinforcement of garment edges.
This led to the second problem. While it seems that Mr. Avrahami devised a particular solution (the sewing of a flat polyester strip to the edge of the head opening using an overlock stitch that penetrates the strip) to a particular problem (the tearing of the apex of the slit of the head opening in a tallit katan having a slit), his patent agent drafted a single independent claim that was a smidgen broader than that:
1. A religious article with at least one reinforced edge, said reinforced edge comprising a strip of material which is capable of being stitched to the fabric from which the religious article is produced, said strip of material having a sufficiently high tensile strength such that said at least one reinforced edge is not able to be torn with two hands.
Now, every good patent practitioner will tell you that you want to draft your independent claims as broadly as possible, but that’s usually expressed as, “as broadly as possible in view of the prior art and the supporting description”. But here, Mishkan Hatchelet’s agent evidently failed to notice that “A religious article” isn’t limited to the edge of a head opening in a tallit katan. Or even to tallitot katanot in general. Or to garments. Or to Jewish religious articles. In fact, that only thing that differentiates this claim from a claim on an article with a reinforcing strip attached to the edge (such as, say a plastic bag with oval-shaped holes near the top and having additional plastic around those holes for reinforcement) is that word “religious”. That’s a pretty thin peg on which to hang your patentability arguments.
Would the claim have been drafted more narrowly had a search been done? Who knows. Even without a search, it’s still difficult to fathom why someone would put forth so broad a claim. It’s inconceivable that the people at Mishkan Hatchelet or even their local patent agent have never been in a synagogue. The decorated cloths used in synagogues to cover the ark where the Torah scrolls are kept, as well as the cloth Torah scroll covers themselves, often have fringed strips sewn to their edges. While those strips are there for aesthetic purposes, they also serve to reinforce the edge, such that it can’t be torn “with two hands”. Why submit a claim that you know is anticipated?
The third problem for the applicant was that not only were many of the claims too broad, but the application itself doesn’t actually state that the overlock stitch has to penetrate the reinforcement strip. This became a crucial point for the applicant once revocation proceedings were instituted (see below). This oversight may not have been the agent’s fault: it’s possible that Mishkan Hatchelet didn’t explain to the agent that this feature was crucial. It’s also possible that no one at Mishkan Hatchelet who reviewed the application had sufficient knowledge of English to appreciate what was (and more importantly, what wasn’t) described in the application, and didn’t realize that the application didn’t set forth the actual commercial embodiment.
As Israel file histories are not available online, I don’t know exactly what transpired during prosecution of IL 148492. However, from the decision in the cancellation action, as well as the lone IDS filed during US prosecution, it appears that the Israel Examiner cited three pieces of prior art, and that the applicant overcame these references by amending the claims to refer to a religious garment rather than a religious article. Whatever happened, a few months after grant a third party sought to have the patent revoked. During the revocation proceedings, the sides agreed that the patentee could further amend the claims to refer to a “religious garment” rather than a “religious article”, so that claim 1 was amended to read:
1. A religious garment with at least one reinforced edge, said reinforced edge comprising a strip of material which is stitched by overlock stitching to the fabric from which the religious garment is produced, said strip of material having a sufficiently high tensile strength such that said at least one reinforced edge is not able to be torn with two hands.
Mishkan Hatchelet’s argument boiled down to the following:
(a) the skilled artisan to be considered in this case wasn’t someone familiar with garment manufacturing or stitching in general, but the manufacturer of tallitot katanot in particular; and
(b) it wouldn’t have been obvious to such a person to use overlock stitching that went through the reinforcing strip, as the closest art at best disclosed trapping a cord between stitches.
The problem with that argument was that, even after the claim amendments during revocation proceedings, neither claim 1 nor any of the claims dependent therefrom actually recited that the overlock stitch went through the reinforcing strip.
In a loquacious decision issued nearly three years (!) after the parties had submitted their written summations, the Deputy Commissioner ruled that (1) the skilled artisan was someone familiar with stitching and/or garment manufacture in general, not someone specifically engaged in the manufacture of tallitot katanot; and (2) it would have been obvious to such a person to reinforce the edges of a tallit katan using an overlock stitch, optionally by sewing a reinforcing strip in place at the edge. As none of the dependent claims were deemed to impart patentability, the patent was revoked.
If that’s all the Deputy Commissioner had done, the decision would have been routine: the claims were obvious in view of the prior art patent had a deficient But here, as in some other decisions he has issued, the Deputy Commissioner went on say things that even he admitted weren’t necessary for the disposition of the case, and that merely muddled the waters for patentees and applicants for patents.
Specifically, here the DC went on to state that the patent was also being revoked because the claims were “covetous”. “Covetous claiming” is a doctrine from English patent law. Over the years I’ve tried to understand the scope of this doctrine, and as best I’ve been able to fathom it (any British practitioners out there who wish to correct me on this if I’ve got it wrong, please do!), it can take one of two forms. In its benign form, it says that a claim (or all your claims) are broader than the specification can support, and are therefore invalid. In other words, “covetous claiming” is just a another way of saying “lack of support” or “lack of enablement”. In its malignant form, this doctrine says that the independent claims are so much broader than the specification can support that it’s clear you should have known you were trying to claim something that’s unpatentable, and therefore as punishment for being so “cheeky” the adjudicator won’t even look at your dependent claims – your whole patent or application is out the window because you included one or more obscenely broad claims.
I’ve never much liked or understood the rationale behind this malignant form of the doctrine. Part of my distaste for it arises from the fact that in Israel, as in the USA, an applicant is not required to do a search before filing a patent application. The statute thus says that we don’t have any expectations of what the applicant should or shouldn’t know when he files his application. With “covetous claiming”, we deviate from that non-expectation, and start imputing what an applicant “should have known”. In so doing, we say that we’re substituting an “objective” “reasonable man” standard for the applicant’s “subjective” views. In fact, though, more often than not there’s no such thing a “reasonable man” in patents. The straw man in patent law is the skilled artisan, or skilled addressee, or whatever you want to call him. He’s not the “reasonable man” we know from tort law or criminal law, who is supposed to be some sort of everyman. So when we start bandying about a “should have known” standard in context of the breadth of claims, what we’re really doing is substituting the adjudicator’s own subjective views for the applicant’s subjective views. That’s not desirable – particularly in a system such as Israel’s where the adjudicators usually have no more than an LLB to prepare them to think about what someone working in a particular technology should or shouldn’t have known.
Mostly, though, the reason I don’t like the malignant version of “covetous claiming” is because the statute already has a way of dealing with overly broad claims, viz. the claims must be supported by the specification. In Israel this appears in §13 of the statute. I see no need for courts to impose on applicants obligations that the statute itself doesn’t impose. (And yes, for similar reasons I think inequitable conduct jurisprudence in the USA has gotten way out of hand.)
In the Mishkan Tchelet case, as I explained above, I don’t disagree that the patentee filed claims that were far broader than were supported by the specification – and that’s it’s hard to believe he didn’t realize they were ridiculously broad. But so what? To the extent any claim in the patent didn’t “reasonably arise” from the specification, that claim was invalid. End of discussion.
Hitherto, the doctrine of covetous claiming had properly lain largely dormant in Israel patent practice. With this decision the Deputy Commissioner resurrected the doctrine. By not being satisfied with saying that in contravention of section 13, some of the claims didn’t reasonably arise from the specification, and instead saying that the whole patent is invalid as a result of claims that the applicant should have known were overly broad, the Deputy Commissioner has created a new ground on which opponents and seekers of revocations will attack patents. As with his decision in the opposition to IL 117035 (discussed here) given around the same time last year, the Deputy Commissioner’s decision in this case merely gives additional fodder and encouragement to copyists and free-riders, and creates more work for himself, in situations that the statute deals with satisfactorily.
There was an interesting epilogue to this case, which was a direct result of the Deputy Commissioner’s deciding to fix what wasn’t broken: two weeks after the patent was revoked, i.e. well before the deadline for filing an appeal, the patentee sought to amend the claims. The patentee reasoned that if it amended it claims so that they were more limited in scope, the “covetous claiming” part of the decision would be obviated, clearing the way for appeal of the obviousness findings. How does the owner of a revoked patent have a right to amend the claims? According to Mishkan Tchelet’s agents (the same ones who wrote the overly broad claims in the first place), §75 of the statute says that the Commissioner doesn’t enter the revocation order until 30 days after the appeal window has passed; the appeal window here was 60 days. Ergo, at the time the amendment request was filed, the patent was still alive.
The Deputy Commissioner rejected the request out of hand, noting that the patentee had already availed itself of the amendment process and that if it thought there were better claims to present, it should have presented them then, not after the proceedings were over. He also stated that it was clear the intent of the statute was not to enable patentees to amend their claims after a decision on the merits had already been given the ILTPO. Section 75, said the Deputy Commissioner, was meant to ensure that the Commissioner would not strike a patent from the Register while an appeal was pending, not to enable a patentee to change the underlying facts on which an appeal was based by amending the claims after a decision on the merits had issued. To hold otherwise, noted the Deputy Commissioner, would encourage patentees and applicants to wait until after a decision on the merits to put forth what they thought were their best claims.
Interestingly, the ILPTO’s online database (IL 148492 status) still lists this patent as being in force, and makes no mention of a pending appeal. Either an appeal is pending, or after all the proceedings before the ILPTO it still hasn’t updated its records.
