America-Israel Patent Law

That’s Not Kosher: A Tale of a Treif Trademark Renewal Request

I wrote some time ago about an offer I received to pay a fly-by-night outfit $1700 so that a client’s published PCT application could be included in a private database that contained information already freely available from WIPO.   While IP professionals can readily recognize such ruses, it seems that enough non-professionals fail to ferret out such fakery that it continues to be worthwhile for fraudsters to foment their forgeries: WIPO has a page on its website listing about two dozen names under which such scam artists have been seen to operate in the PCT sphere.

It should perhaps come as no surprise that such trickery is tried in trademark territory too, although WIPO’s warning regarding analogous activities with respect to the Madrid System is considerably shorter than the warning regarding PCT applications.  An example: the “Triangle-K” appears on many food items in the United States, and is the subject of European Community Mark No. 02899144.  The mark is due to be renewed by the end of October this year; the mark holder was recently sent the letter below (click on the pictures for larger images).  Unlike the faux PCT database letter, this letter offers an actual service, namely renewal of the subject mark.  Not that that mitigates the sliminess of the organization, which calls itself "Intellectual Property Agency Ltd.": the price quoted for the renewal, 2900 Euros, is nearly double the actual renewal fee (and more than double if the fee is paid electronically); the mark holder is already represented by counsel before the OHIM; and the best reason I can surmise for listing the company’s address on the front page of the letter as a Brussels address but listing the address in the fine print on the back as being in Seychelles is to lure the unsuspecting into thinking that this is a legitimate organization associated with the EU.  The terms of the agreement are also fairly draconian.  What saved the mark holder from agreeing to pay was the fact that the person who received the correspondence was a lawyer who had enough sense to ask an IP attorney if the letter meant anything, but presumably there are enough unwary mark holders out there to make this venture a profitable one for its proponents.

 

Update: I just saw a post on the IPWatchdog site about a similar notice sent to Gene Quinn, the proprietor of that site and the owner of the IPWatchdog mark.

 

Does the Recent U.S. Patent Reform Prove that American Politicians are the Best That Money Can Buy?

Ok, notwithstanding the catchy title, my intent here is not to indict all members of Congress who voted in favor the recently-enacted “America Invents Act”, the real title of which is the “America Invents New Ways to Obfuscate and Complicate Patent Law Act”. I just want to shed a little light on one of those members, namely Carl Levin, the senior Senator from my home state of Michigan.

Mr. Levin, a democrat, was elected to the Senate in 1978 and has been reelected every six years since then. He’s generally not been a flashy Senator. He first got my attention when I wrote his office while the Obamacare bill was being considered. The bill as drafted contained a provision that would have forced expats to buy health insurance for all members of their households at a cost of $750 per person. But as ex-pats they wouldn’t have been able to use the insurance. So I emailed his office to complain about that. When I eventually received a response – several weeks later – it was completely off target, relating to issues I hadn’t raised and not addressing the one I had. Let’s just say this is not the way to try to win over this particular voter (although the provision that concerned me was eventually dropped from the bill).

Then in the spring of 2010, Senator Levin got himself a boatload of publicity when, as chairman of the Permanent Subcommittee on Investigations, he excoriated senior members of Goldman Sachs over their role in the financial meltdown of 2008, using some colorful language that U.S. Senators tend not to use in public.

Had the Senator taken steps in 2006 and 2007 to ensure that the meltdown never happened, I might have been impressed. Here, given that the gate had been left wide open and the horse had left the barn long before, it was obviously just posturing (but it sure made for a good sound bite!). Which is why it came as no surprise when last month that same expletive-spewing Senator Levin voted in favor of the AIA, including its tailor-made provisions to protect the banking industry from patent infringement lawsuits. Those provisions were a response to litigation instituted by DataTreasury, a company (some would say patent troll) that had patents covering check processing methods and that sued several banks for infringement. Oh, those pesky trolls! If you’ve got the money to buy legislation, why should you have to suffer those trolls, or even legitimate inventors, like everyone else does? The new law makes it easier for banks to challenge such patents and to keep them tied up in proceedings before the USPTO, with litigation frozen for the duration. One wonders if after the public dressing-down Senator Levin gave the Goldman guys, they privately made up – and we’re not talking simply doing a pinky handshake and saying “shalom shalom kol hazman, brogez brogez af paam” like little kids here in Israel do.

Not only isn’t it surprising that the Senator voted in favor of the AIA, it was pretty much a foregone conclusion, as the AIA includes some classic pork: the establishment of a USPTO satellite office in Michigan, which should be good for a few hundred jobs; plus the establishment of prior user rights, which will effectively let the auto companies implement new processes and equipment that they maintain as trade secrets, then in certain instances use that same secret implementation as a defense to a charge of patent infringement.

The icing on the cake came in the form of this press release from Senator Levin’s office, the first sentence of which reads: “After years of work to ban patents on tax shelters, Sen. Carl Levin’s legislative efforts became law when, on Friday, September 16, 2011, President Obama signed the America Invests Act and cited U.S. patent reform as a key component in job growth”. It’s not a typo: the bill is referred to later in the press release by the same name. Impressive.

Keep up the good work, Senator. It’s comforting to know that if I ever become obscenely rich and need some legislation to help me keep my gelt, I’ll have a sympathetic ear.

If For Some Inexplicable Reason You Want To File A PCT Application In Hebrew, Where Can You File?

The Israel PTO will accept patent applications filed in Hebrew, Arabic or English (as discussed in an earlier post), but I’ve never filed a patent application in Hebrew. Nor, as far as I know, has any local practitioner with whom I’ve ever worked or come into contact. Unless you’re only interested in protection in Israel, there’s not really much point: as soon as you go to file elsewhere, you’re going to have to translate to a more commonly-used language. To the extent I’ve encountered Hebrew-language patent applications, they’ve been filed by local pro se inventors.

Which brings up today’s trivia question: if for some inexplicable reason, you have an insatiable desire to file a Hebew-language PCT application, where can you file?

If you’re not sure, here’s a hint: it’s not in Jerusalem. (Don’t ask me why not, I’m still looking into that one.) Not the Vatican either, where you might expect someone to speak Hebrew.

Still not sure? The answer is at that bastion of Hebrew, the PCT International Bureau, in Geneva.  (Switzerland, not New York.)  It's good to know someone out there is defending the use of Hebrew. Unfortunately, since Hebrew isn’t a language used by any of the PCT International Search Authorities, you’ll still need to file a translation so the ISA can do its job.

My question is, if Israel eventually becomes an ISA itself, as is the plan, will the IL-ISA search Hebrew-language applications? Or Arabic ones? Or will Israelis need to file English translations to have their PCT applications searched at their own ISA? It may make business sense to allow searching of Arabic-language applications, thereby giving the only other potential Arabic-language ISA, the patent office in Egypt (that well-known IP powerhouse), a run for its money. Especially since Arabic, unlike Hebrew, is one of the languages in which PCT applications are published. That means that once there’s an Arabic-language ISA, in principle translations of Arabic-language applications won’t need to be prepared until national phase time.

In contrast, since Hebrew isn’t a PCT publication language, even if the IL-ISA searches Hebrew applications, a translation will still need to be filed to enable publication. And given the miniscule number of Hebrew-language applications filed, there’s probably no need to enable Hebrew-language searches.  Sorry, Ben-Yehuda.

You’d Think They Could Be More Efficient

I’m a fan of the USPTO’s electronic filing system (EFS) and Patent Application Information Retrieval system (PAIR) for patent applications.  The former enables applicants to file applications and responses, and to pay fees, online – no papers to print, no envelopes to fill, no trips to the post office, just a computer and a program to generate pdf files.  The latter allows applicants to check on the status of their own applications, as well as those of others.  I’m waiting for the day when the Israel PTO gets around to enabling both of these. 

What I’m not so keen on is the USPTO’s method for alerting applicants when an examiner has mailed an office action.  The USPTO presents applicants and practitioners with a choice: either we can receive notices in a given application by snail mail, or we can receive them by email, but we can’t have both.  Personally, since I receive far more email correspondence each day than snail mail correspondence (who doesn’t?), I choose to have notices in my cases sent by snail mail – I figure they’re less likely to get lost in the shuffle than if they’re sent by email. 

That calculus is of course predicated on the assumption that letters sent by snail mail will actually reach me – or that I have another way of being notified in case something goes awry.  In my case, it’s the latter: I check PAIR almost daily for actions in my cases, and I docket on the basis of PAIR.  So in practice it doesn’t really matter much if I receive USPTO communications by email or snail mail – I’m going to see any action within a day of its being posted on PAIR. 

The good thing about checking PAIR for USPTO communications is that it shows that the snail mail sent to me by the USPTO does get through, usually within about 7-10 days of being posted on PAIR.  This week, though, there was a glitch.  An OA was mailed in one of my cases about three weeks ago, and thanks to PAIR it’s in my docket, but I still haven’t seen the hard copy.  Yesterday I received an email from the USPTO, telling me that the letter mailed in that case had been returned to the USPTO as undeliverable. 

At that point the USPTO said, Here’s the address we have on file for you, please report any change of address to us.  And attached to the email was a pdf form for reporting an address change. 

Truthfully, it’s good to know that that the USPTO keeps tabs on undelivered mail, and that it tries to contact intended recipients when letters are returned.  And at first blush, the USPTO’s response in this case makes sense: if a letter gets returned, the sender is going to wonder if the address is correct. 

But there are two things in this instance that bother me.  First, no other piece of correspondence from the USPTO addressed to me has ever been returned to the USPTO, including mail sent around the same time as the OA in question.  This is first time the USPTO has mailed something that didn’t get through to me.  But with budget cuts and all, I can understand the USPTO not being able to spend the time poking through all my files to determine that this is an isolated incident.

What I find more curious is what wasn’t attached to the email: a copy of the OA itself.  It’s ironic that the USPTO is willing to rely on email to inform me that a letter it sent me didn’t get through, but that, rather than attach the letter in question to that same email, the USPTO would prefer that I fill out a change of address form and return it to the USPTO, so that the USPTO can use another envelope and another stamp to send the same letter by snail mail.  In this case, it would have been a lot more efficient for the USPTO to have included a copy of the OA.

I responded to the email by informing the USPTO that I hadn’t moved and that snail mail to that address had been arriving.  And although I suggested allowing applicants and practitioners to be notified by both snail mail and email, I figured that the USPTO was so intent on snail mailing the letter to me, I shouldn’t mention that I already had a copy of the OA and that there was no need to re-send it.

Jumping the Gun in Texas – It’s not Just for Patent Trolls Anymore

Fans of patent blogs will recall the now-defunct Troll Tracker blog.  That blog, which was written anonymously, unmasked the various shell corporations behind which the ownership of many asserted patents was hidden.  Along the way, the blog attracted the attention – and scorn – of several attorneys who represented those non-practicing owners.  One of those attorneys offered a bounty for revealing the identity of the Troll Tracker, and eventually, when threatened with being outed, the author revealed himself: he was Rick Frenkel, who at the time worked for Cisco. 

This in turn led to the filing of a lawsuit against Mr. Frenkel by two irate lawyers from the Eastern District of Texas.  They had filed a patent infringement suit that was stamped by the court as being received a day before the patent issued; the date stamp was then later changed to the following date, without the court records indicating that the change had been made, let alone why. In his blog Mr. Frenkel was none-too-sympathetic in his characterization of the lawyers’ behavior, leading to the filing of the suit against him.  I won’t go into the rest of the details; interested readers can Google the story or read this paper by Jake Ward of the Anticipate This! blog that tells the tale.  (The case against Mr. Frenkel ultimately settled; under the terms of the settlement he’s not allowed to discuss it.)

Turns out that patent trolls (or non-practicing entities, or whatever you want to call them) aren’t the only ones who jump the gun in trigger-happy Texas (where, I’m told, but haven’t confirmed, it’s legal to carry open liquor, firearms and ammunition in the cab of one’s pick-up truck).  According to court records, yesterday (June 6) Hydro-Quebec – hardly a patent troll – filed suit in the Northern District of Texas (Civil Action No. 3:11-cv-01216-B , the Hon. Jane J Boyle presiding), asserting a patent relating to the very non-troll-like subject of materials for lithium batteries (US 7,955,733) that only issued today (June 7).  Apparently someone realized what had happened, but, learning from the mistakes of their brethren in the bar in EDTX, had the good sense to re-file the same complaint shortly after midnight today (Civil Action No. 3:11-cv-01217-K , the Hon. Ed Kinkeade presiding), rather than contact the court clerk and have that person change the filing date.  A notice of related case has already been filed and presumably the plaintiff will move to dismiss the earlier-filed case without prejudice.

(Hat tip to PriorSmart for reporting both filings.)

 

Plaese Poorf Raed (2): Be Careful What You Wish For

Today I came across this declaratory judgment complaint, filed yesterday in the Southern District of West Virginia (hat tip to kyle(at)priorsmart.com).  The DJ plaintiff, A. L. Lee Corporation, asks that the court declare that its manufacture of a particular rescue chamber to be used in mines does not infringe any valid claim of U.S. patent no. 7,941,971.  The patent issued yesterday, the same day the suit was filed; according to the complaint it is owned by the DJ defendants, Edward Roscioli and Willem Van Basten, and is entitled “Inflatable Shelter for Use in Hostile Environment”.

If indeed it is the ‘971 patent that is in question, it’s likely that the defendants will stipulate to non-infringement, and the plaintiffs will get what they told the court they want.  That’s because the ‘971 patent is owned not by the named defendants, but one Avraham Tamir of Israel, and is entitled “Irrigation System”.  Apparently the plaintiffs meant to list U.S. patent no. 7,941,974, which also issued yesterday, to Edward Roscioli and Willem Van Basten, and is entitled “Inflatable Shelter for Use in Hostile Environment”. 

Oops.  

Eagerness to get a DJ suit on file, before the patentee can file an infringement suit in a different jurisdiction, is understandable.  But proof reading is still a good idea.

Interestingly, according to the complaint, the DJ plaintiffs became aware of the impending patent issuance through a lawsuit between the same parties which is presently pending in WV state court.  Did the patentees themselves incorrectly list the patent number in that proceeding?  The USPTO Issue notification lists the correct patent number.

From The Mouths of Babes (or, Does It Take One to Know One?)

In 2004 my wife and I decided to do a crazy thing: take off six weeks from work and take a long vacation in the USA with our kids.  OK, it wasn’t all fun and games – I did a fair amount of work on the trip – but we had plenty of vacation time, and in total drove about 4000 miles traversing much of the country and seeing all 5 Great Lakes.  

One of the interesting things for me was just how many IP-related things we saw.  Like the 19th-century lifeboat that we saw at Whitefish Point on Lake Superior, which bore a U.S. patent number.  Or the exhibit on glass inventions at the Museum of Glass in Corning, New York, which included a display about the use various combinations of lenses to reduce what are known as chromatic aberrations.  That particular technology was prior art in an opposition I was working on at the time.   At the Smithsonian, we saw the Wright brothers' original airplane - a patentable invention if ever there was one - as well as examples of crystalline polymorphs, something that's occupied no small part of my professional life.

Then there was our visit to Niagra falls, where I delivered a letter to the U.S. and Canadian park authorities, telling them to cease and desist use of the term “Niagra” which was confusingly similar to my client’s mark for a well-known erectile dysfunction drug.  Ok, I didn’t really deliver the letter.  But the firm I worked for at the time did represent Pfizer in many seizures of counterfeit Viagra^®. 

Without a doubt, though, the best IP-related part of the trip was our visit to the Utz potato chip factory in Hanover, Pennsylvania.  There’s an enclosed walkway over the production floor that enables visitors to take a self-guided tour and observe the manufacturing process.  It’s pretty clear that considerable thought went into the machinery used to transport the chips during production and to package them, and no doubt over the years more than a few patents were issued for those devices.  And we got free samples at the end of the tour, with OU kosher certification.  Not bad.  I highly recommend it for anyone traveling through Lancaster County.  If you time it right, you can tour the Snyder’s of Hanover Pretzel factory on the same day for a clean sweep of the snack industry.  

Near the entrance/exit of the Utz visitors’ gallery, there’s a display of vintage Utz products (or at least old-style packaging).  So as we were leaving the premises, I took a picture of our kids next to the display.  At which point our then-8-year-old son protested, “Daddy, the sign says no picture taking!”  I explained that the sign meant you can’t take pictures of the production area, but there was nothing wrong with taking pictures by the display of old products.  “Why don’t they want you to take pictures inside the factory?”, he asked.  Well, I explained, they’re afraid that another potato chip company might send spies and find out how they make their chips.  It’s called industrial espionage, I explained.  

Without losing a beat, our son said, “Hey, I have an idea!  Maybe I’ll go and work for Utz for a few years, then open my own potato chip factory!”  

“You know,” I said to him, after I stopped laughing, “we help defend people like you.  Sometimes we go after people like you!”  

I mentioned that story because of this complaint filed yesterday in the Eastern District of Ohio.  Snack Alliance and Shearer’s Foods allege that another company is infringing US 7,189,424 and US 7,416,755, which claim fried, crisp rice snack chips and processes for making them.  Shearer’s markets rice snacks under the name “riceworks”, in several flavors; according to the plaintiffs, in making a competing product the defendant not only infringes the patents, but also uses the same names for several of the flavors and uses similarly colored packaging.   Hence in addition to patent infringement the plaintiffs also allege unjust enrichment, federal false designation and unfair competition, and state deceptive trade practices and unfair competition claims.  And who would that defendant be?  None other than…Utz. 

Below are pictures of Shearer’s products and Utz’s products, taken from the complaint.  Whaddaya think?

 
   

I also want to take this opportunity to say for the record my son did NOT advise Utz in any way and received no compensation from Utz for consulting with regard to product development or any other matters. :-)

A Purim Post

 

Belloq: Dr. Jones. Again we see there is nothing you can possess which I cannot take away.

--Raiders of the Lost Ark of the Covenant, 1982

 

“Of course we should keep the Panama Canal, we stole it fair and square.”

--attributed to U.S. Senate candidate S.E. Hayakawa, 1976 

 

Sunday will mark the holiday of Purim, in which Jews commemorate escape from annihilation – and obliteration of their enemies – in Persia long ago.  One of the themes of Purim is nahafoch hu, which can be idiomatically translated, roughly, as “the tables are turned”.  In that vein, and Purim being a festive and joyous holiday, I thought the news item at right from the February 21 edition of the Jerusalem Post was worth sharing.  (You can click on the image for a larger version; the html version of the article can be found here, but I don’t know how long it will continue to be available for free).  I’m not going to comment, but for those readers who aren’t familiar with the Israeli pharmaceutical scene and can’t figure out why the article brought the above quotes to mind, I’ll mention that the particular pharmaceutical company named in the article doesn’t have any patents.  As they say in Hebrew, hameivin yavin, or as they say in Yiddish, farshtey?

Plaese Poorf Raed: Patent Attorney Trainee Sought; Knowledge of English Spelling and Grammar Not Necessary

 

Recently the following advertisement was posted on one of the English-language “help wanted” bulletin boards in Israel.  I’ve decided to spare the guilty parties further embarrassment and redacted their names:

 

Patent Attorney Intern Needed

 

We are looking for a patent attorney intern.

 

XYZ is a mid-size UK-Israeli firm with a fun atmosphere. We draft and prosecute patent applications for fortune 500 companies and universities, and we need help.

 

Relevent fields are software, electornics, and electro-optics.

 

We are looking for candidates who are after a career at the patent industry and therefore, candidates should be willing to work hard for an intern wage in order to get good training.

 

English should be at native-tongue level. Candidates will be expected to write a short paper to prove their English level.

 

Please send CVs by email only to XXX@__.com. Thank you!

 

Well, if this advertisement is any indication of the quality of their patent applications, then yes, they most certainly need some help!  So in the interest of collegiality, I offer a few suggestions for how the members of this firm might ensure that they identify the best candidate.

 

They should begin by asking candidates to spell “relevant” and “electronics”.  Inasmuch as their web site also contains the statement that “Israeli PTO circulars will become affective 3 months after publication on the PTO’s website”, they should probably ask candidates to write essays that use both “affective” and “effective”. 

 

Similarly, candidates should be asked to explain the meaning of the term “conflicating”, which appears in the following sentence on the firm’s website: “We are pleased to try to help conflicating parties resolve their conflicts in peaceful manners, as an alternative to litigation proceedings.”  (The paragraph goes on to conclude, “Our managing partner is well-known for his mediation skills.”  As well as his gift for lexicographical creativity, no doubt.)

 

The partners should also ask candidates to explain the difference between “[being] after a career at the patent industry” versus “seeking a career in the patent industry”.  For that matter, they should ask candidates to explain the differences between the patent industry and the field of patent law and practice.  I’m not sure I know myself - I haven’t yet seen a patent factory, but then there are many parts of the world I haven’t visited.

 

In addition, candidates should be asked to identify at least two errors in following sentence, taken from the firm’s web site:  “Our double-check procedure makes sure that many professional and experienced eyes review each application before it leaves the office to make sure that it describes the invention well, as broad as reasonably possible, and design to fly through the examiners as easily as possible.”

 

In any case, full credit to this firm for its adherence to truth-in-advertising strictures.  Not everyone would be so bold as to tell job candidates of whom perfect English is demanded that they should be prepared to work long hours for low wages, for professionals whose own English skills are wanting.  Low pay and a boss you don’t respect – that’s always a winning combination.  I’m sure many excellent candidates have already beaten a path to this firm’s door.

Did the USPTO Invent A Time Machine?

I’m a big fan of the USPTO’s electronic filing capabilities, but nothing’s perfect.  This morning while playing around with the Electronic Patent Assignment Service (EPAS), I discovered that if you pay by credit card, you can go back in time nearly 20 years: you can list your billing address as being in the USSR.  (Click on the thumbnail to the right for a larger image.)   Since I’m pretty sure that EPAS only came online after the demise of the Soviet Union, I wonder if this means that the person who designed the system invented a method for time travel. 

I didn’t try to pay this way, so I don’t know if this time traveling thing works (I didn’t want to risk getting hit with interest charges dating back to 1991, even on a measly 40 bucks for filing an assignment), but if it does, I wonder if the inventor was able to get his patent application allowed by the USPTO.  My money says he had to file at least one RCE.

 

Or maybe the system designer is merely nostalgic for the Beatles.