America-Israel Patent Law

Fawning Over Francis?

As reported in an earlier post, last fall the Israel patent community was left scratching its head as a result of the Commissioner’s about-face regarding Australia.  Specifically, in December 2008 the Commissioner indicated that applicants would no longer be able to piggy-back on an allowance in Australia to obtain allowance of a corresponding patent application in Israel, because the ILPTO’s experience had shown that Australian examinations weren’t reliable.  In September 2009, the Commissioner reversed course and again recognized Australia for this purpose, announcing his decision in a tersely worded statement that provided no reasons for the change of heart.  At the time, some speculated, jokingly, that there had been a pay-off of some sort to the ILPTO, perhaps a junket to Australia.

 

The joke wasn’t far off the mark.  In late September, the WIPO general assembly decided to grant Israel the opportunity to become a PCT International Search and Examination Authority.  The reinstatement of Australia a few weeks earlier was done in anticipation of the WIPO meeting at which this decision was taken: Dr. Meir Noam, the Commissioner of Patents, reasoned that by reinstating Australia, he would curry favor with Francis Gurry, the head of WIPO and an Australian national.  While it’s impossible to know if the ruse worked without asking Mr. Gurry himself, it’s hard to believe that the head of WIPO would condition support for recognition of any particular country as an ISA on how that country regarded the WIPO head’s home country, rather than, say, that country’s competence at prior art searching and analysis.  It’s even more difficult to believe that Mr. Gurry actually pays attention to details of Israel patent practice such as whether or not one can piggy-back on Australia to gain allowance in Israel. 

 

While Dr. Noam has admitted that he was trying to get in Mr. Gurry’s good graces for purposes of having Israel named as a potential ISA, it’s hard not to wonder if, in reversing his position on Australia, Dr. Noam wasn’t also angling for a job at WIPO.  He has been pushing for stronger ties with WIPO, and during his tenure hired an Israeli national from WIPO’s administrative ranks to be an adjudicator at the ILPTO.  In February 2009 the Cabinet decided to limit the terms of high-ranking civil servants across the board, so by last September, it was probably clear to Dr. Noam that he would be out of a job at the end of 2010.  Maybe he was hoping that by placing politics, both ILPTO and personal, above substantive concerns about the quality of patent examination in Australia, Mr. Gurry would be more likely to offer him a job.

 

What is clear is that although during Dr. Noam’s tenure as Commissioner, the ILPTO has made progress on some fronts, in others it still lags behind, and in some ways things have gone precipitously downhill.  On the up side, many new examiners have been hired, and according to the ILPTO, as of April 2010 the backlog in patent examination had dropped in most areas to between about 2-3 years from national phase entry to the beginning of examination.  Similarly, the backlog in judicial decisions (e.g. patent and trademark oppositions; patent, trademark and design cancellation actions; ex parte appeals within the ILPTO) had dropped significantly – although given the fact that Dr. Noam’s predecessor had failed to render a single substantive patent decision in the over four years he was on the job, things couldn’t have gotten any worse in that regard.  And as discussed in a previous post, there is now a publicly-available online database that facilitates checking the status of Israel patent applications. 

 

Nevertheless, not all is rosy.  The quality of OAs remains spotty, with many examiners, even senior ones, still failing to explain how the art they cite applies to which claims.  In the 1990’s Israel was one of the first countries to introduce electronic filing of trademarks – credit Nurit Maoz, who is still head of the trademarks division, for that – but it still isn’t possible to file a patent application electronically in Israel, let alone to view patent file histories online.  Similarly, the quality of the judicial decisions has not always been on the mark.  Witness, for example, Dr. Noam’s decision in IL 100816, a case in which a patent containing 1 independent and five dependent claims was at issue.  After disposing of claim 1 as being obvious over the prior art, Dr. Noam concluded that the remaining claims, by virtue of being dependent from claim 1, were necessarily obvious and thus invalid – without actually analyzing the additional recitations in those dependent claims to see if they distinguished over the prior art.

 

Of greater concern is the observation that Dr. Noam has become increasingly authoritarian in his approach to the running of the ILPTO.  While it was traditional for Commissioner to circulate letters from time to time clarifying ILPTO policies, Dr. Noam has issued more such circulars, over 80, than any of his predecessors.  (One PTO employee I spoke with said that they no longer keep up with all the circulars because there are simply too many.)  In several cases, these circulars were so unclear that they necessitated subsequent letters of clarification – in some cases several such clarification letters. 

 

Furthermore, whereas in the past those circulars were issued with respect to questions that had arisen regarding interpretation of the Patent statute and regulations, or policies adopted for administrative convenience, Dr. Noam has in some cases tried to impose new policies that are substantive policy-making and thus properly the province the Knesset (the legislature), not a civil servant.  Placing limitations on the filings of divisionals-of-divisionals is one example.  Another, on tap for the beginning of July, is a requirement, newly imposed by the Commissioner without legal basis therefor, that applicants provide copies of OAs from corresponding applications in foreign jurisdictions and their responses to the points raised in those foreign OAs – even if the claims pending in Israel are different or the applicant has not yet filed a response to the original OA.  (American readers: echoes of the Dudas administration?)

 

Nor has the Commissioner made his administration a model of transparency.  The decision to reinstate Australia was done without explanation, as was the decision to attempt to require applicants to do the ILPTO’s work by imposing draconian reporting requirements.  (Curiously, earlier this month, in yet another circular, the Commissioner announced that in the future he would disseminate draft circulars and solicit comments before issuing new circulars.  Yet later in the same week, he issued more circulars without going through such a process; and to date, no draft circulars have been disseminated.)  Until March of this year, the ILPTO’s web site contained telephone listings of all examiners and many other ILPTO personnel; that list is now gone, replaced with a much more truncated list that doesn’t include examiner telephone numbers.  (Here is a copy of the list of ILPTO personnel from March 2009, organized by department.) In addition, in some cases information is sent via email, without being posted on the ILPTO’s web site.  And the web site itself doesn’t contain, for example, copies of all ILPTO judicial decisions.  

 

Given some of his more recent actions, there will probably be many in the Israel patent community who will not mourn Dr. Noam’s exit as Commissioner.  As for his relationship with WIPO, we will have to wait and see if Dr. Noam ultimately lands a WIPO sinecure, and if he does secure such a post, we may never know if he actively pursued it.  One interesting tidbit, though: Mr. Gurry is in Israel this week, and a letter from the Association of Patent Attorneys in Israel (APAI) to its members stated that Dr. Noam urged that there be a “massive” turnout of patent practitioners at a reception for Mr. Gurry to be held tomorrow in Tel-Aviv.  So that we can show our collective obsequiousness?

A Story From the Fringe That Won’t Leave You in Stitches

(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.

 

Finally, the applicant fared no better in the USA, where after several rounds of prosecution and an RCE, the applicant let the application go abandoned.  Although there it appears that the applicant was the victim of less than thorough examination: well into prosecution, the applicant amended the independent claim by incorporating limitations from some of the dependent claims.  At which point the Examiner issued a restriction requirement, asserting that the new claims were directed to species that by virtue of original presentation were unelected.  Apparently the tzitzit manufacturer got tired of being strung out by the USPTO.  Or by its Israeli and US counsel, who not once over the course of several years of prosecution picked up the phone to discuss the case with the Examiner, let alone flew to DC for an in-person interview and presentation of physical samples, in a case where an interview and presentation of samples would probably have been very helpful in advancing patent prosecution.  No doubt Mishkan Tchelet’s representatives were well-compensated for their many written OA responses.

Procedure, Proschmedure

For people who observe both the US and Israeli legal scenes, one striking difference between the two is the emphasis placed on judicial procedure.  Put coarsely, the USA places more emphasis on procedure than does Israel.  While this difference is most visibly reflected in the courtroom itself – from where I sit, it appears that US judges are more likely than their Israeli counterparts to enter default judgments or base other ruling on purely procedural grounds – it shows up elsewhere as well.  For example, civil procedure is deemed sufficiently important in US law that US law schools teach civil procedure as a year-long, required first-year course.  In contrast, in Israel civ pro is taught as a one-semester course, in the in the last semester of law school – almost as an afterthought.

 

Three recent decisions, two from the ILPTO, one from a US court, reminded me of this difference in emphases as it plays out in the patent sphere.  The US case was the Federal Circuit’s December 22, 2009 decision in i4i vs Microsoft, which was reissued by the panel on March 10, 2010.  In that case, a feature in Microsoft Word was alleged to infringe i4i’s patent.  The feature at issue in Microsoft’s program was a minor one that relatively few users utilize - and that Microsoft was ultimately readily able to re-tool to be non-infringing.  Microsoft was found by jury verdict in the district court to have infringed i4i’s patent, was ordered to pay close to $300 million in damages, and was enjoined from selling versions of MS Word that contained the infringing software.

 

Before the case went to the jury, Microsoft motioned for judgment as a matter of law (JMOL) – a request that the court decide the issue right then and there on the basis of the facts as developed – on the grounds that the patent was invalid due prior sale of the invention.  However, Microsoft did not move for JMOL on the basis of obviousness. 

 

After the verdict, Microsoft appealed to the CAFC, in part on the grounds that the patent was obvious over the prior art and that the jury had erred in determining otherwise.  The CAFC ignored this part of Microsoft’s invalidity challenge on grounds that because of a procedural failure on the part of Microsoft, namely Microsoft’s failure to motion for JMOL for obviousness before the case went to the jury, the CAFC could not review the jury’s findings on obviousness:

 

“Microsoft has waived its right to challenge the factual findings underlying the jury’s implicit obviousness verdict because it did not file a pre-verdict JMOL on obviousness for the Rita, DeRose and Kugimiya references. Fed. R. Civ. P. 50(a), (b)…Microsoft’s pre-verdict JMOL on anticipation, based on S4, was insufficient to preserve its right to post-verdict JMOL on a different theory (obviousness), or on different prior art (Rita, DeRose, Kugimiya) … Accordingly, we do not consider whether the evidence presented at trial was legally sufficient to support the jury’s verdict.  Our review is limited to determining whether the district court’s legal conclusion of nonobviousness was correct, based on the presumed factual findings.”

 

A cynic could read that as the CAFC politely saying, “We don’t care if the patent is valid or not, and we don’t care about the size of the award.  Procedurally, your lawyers goofed by failing to preserve your right to JMOL, and if that costs you, so be it.”  Personally I’d characterize the CAFC’s approach a bit more generously: courts have heavy caseloads, and the procedural rules are there to protect the integrity of the process and the efficiency of the system for all litigants, so the procedural rules matter, and litigants choose to flaunt those rules at their own peril. 

 

Contrast that decision with the ILPTO’s decisions in opposition proceedings against patent applications nos. 120382 and 151450, and in a revocation action against Israel Patent No. 168574, where the amounts of money at stake weren’t anywhere close to the $300 million of the i4i case.  (Copies of the decisions can be downloaded here 120382, 151450 and here 168574; due to a mistake on the ILPTO’s web site, no decisions regarding patents from 2009 are presently downloadable there.)  Patent revocation actions in Israel (also sometimes called cancellation actions) are sort of like inter partes reexaminations in the USA, but with teeth: both are conducted before the respective patent offices, but unlike so-called US inter partes reexam, Israel revocations proceedings really are inter partes.  Ditto for opposition proceedings, except that Israel oppositions are conducted pre-grant.  In both types of actions, both sides participate fully throughout, with submission of written direct testimony and cross-examination of witnesses. 

 

A word about the procedure in both types of proceedings.  Opposition proceedings commence with the filing of a notice of opposition (and payment of a fee, of course), which must be filed within three months of publication of the acceptance of the application by the ILPTO.  The opposer then has a month to file its pleadings, and the applicant has three months to file its pleadings in response.  The opposer then has three months to file its written evidence-in-chief; the applicant then has three months to file its written evidence in reply.  The opposer then has three months to file supplemental evidence to rebut points made in the applicant’s evidence.  Thereafter there’s a hearing at which the parties cross-examine each other’s witnesses, followed by written summations.

 

Revocation proceedings follow a similar trajectory, except that in accordance with Regulation 103(a), the party seeking revocation must come out with all guns blazing: the request to revoke the patent must be accompanied not only by the required fee but by the requestor’s pleadings and written evidence.  Thereafter the proceedings are akin to those of an opposition.  The logic behind requiring revocation requestors, but not opposers, to file everything at once would seem to be that whereas the opposer only gets to look at the application file upon publication (as explained here), and therefore may require more time to get its pleadings and evidence in order, the revocation requestor has had time to evaluate the patent and marshall its forces for attacking the patent.  Therefore, for the sake of efficiency, the requestor has to lay all its cards on the table from the get-go. 

 

In both opposition and revocation proceedings, the pleadings (referred to in the regulations as the “statement of arguments”) are supposed to “specify the grounds for the opposition [or revocation]” and “the facts upon which the opposer’s [or requestor’s] pleadings are based”.  In the oppositions to Wyeth’s patent applications nos. 120382 and 151450 (a parent and its divisional), the opposer filed pleadings that evidently included a statement of the prior publications upon which it planned to rely, and then, after the applicant had filed its pleadings, motioned to file written evidence that relied upon additional publications not mentioned in the opposer’s own pleadings.  (I say “evidently” because, as discussed in an earlier post, the ILPTO’s online database doesn’t include file histories or papers filed in oppositions, so my knowledge of what transpired here comes from the ILPTO’s decision itself.)  The applicant opposed the motion, not per se on grounds that the new publications should have been mentioned in the pleadings, but on the related grounds that the applicant would be prejudiced by this late inclusion, and that in any event, since the publications weren’t mentioned earlier, the request for their late inclusion should have been supported by an affidavit.

 

The adjudicator deciding the case agreed that, as set forth in the relevant regulations, publications impacting the patentability of the invention upon which an opposer plans to rely should be mentioned in the pleadings.  Consequently, in order to rely on previously unmentioned publications, the opposer should have filed a motion to amend its pleadings, explaining why such late inclusion was necessary and including an affidavit in support of the motion.  Such motions, wrote the adjudicator, are not granted as a matter of course, as it is the exchange of pleadings that establishes the scope of the disagreement between the parties.  Consequently, allowing an opposer to amend its pleadings after the applicant has filed its own pleadings could be prejudicial to the applicant. 

 

Furthermore, said the adjudicator, the “purity of the patents register” – a phrase commonly invoked by opposers when seeking late introduction of evidence, used by opposers to imply that having an invalid patent on the register would constitute a crime against humanity, and therefore it is imperative that the ILPTO allow that evidence into the record – was not per se reason to allow amendment of the opposer’s pleadings.  The adjudicator even went so far as to say, “As explained supra, there is great importance in the procedural rules pertaining to the deadlines for the submission of the parties’ pleadings and their content, as these establish the bounds of the disagreement between the parties…In view of the foregoing, I must deny the opposer’s motion.”

 

So far, this doesn’t sound different from the US approach.  But then, if you’re a champion of procedure, the adjudicator inexplicably snatched defeat from the jaws of victory:

 

“Nevertheless, since the opposer has repeatedly asserted that there is nothing in the prior publications it now seeks to introduce to expand the scope of the disagreement, and in view of the particular circumstances before me, I accede to the request to allow the opposer’s declarant to rely on publications that were not listed in the pleadings and appended to his declaration, provided that they will be insufficient to tip the scales in the decision in the opposition proper.  For this purpose, I do not find it necessary to order the opposer to submit a declaration in support of its motion.” [emphasis in the original]

 

Talk about paying lip service to procedure.  The adjudicator didn’t explain how the “particular circumstances” here warranted treatment that deviated from the procedures established by the regulations.  And what does it mean that the publications will only be allowed in as long as they’re “insufficient to tip the scales in the decision in the opposition proper”?  If those publications prove critical to the opposer’s case, will the adjudicator really be capable of ignoring the additional publications when deciding the matter? 

 

As to the revocation proceedings, IL 168574 was granted in March 2006.  The request to revoke the patent was filed in February 2009, without any evidence in support of the request.  In April 2009 the patentee asked for summary judgment in view of the lack of evidence supporting the revocation request.  Apparently the SJ request was denied, as the patentee filed its response (including evidence) in July 2009 (presumably after having been granted an extension to file), and in October 2009 the requestor filed (a) evidence in reply, (b) with additional pleadings, and (c) a declaration that was intended to serve as evidence-in-chief – i.e. a declaration that should have been filed with the revocation request itself some eight months earlier. 

 

The patentee objected to both the filing of the supplemental pleadings, as well as the late filing of the evidence-in-chief, and motioned that both documents be stricken from the record.  The ILPTO adjudicator did not hesitate in acceding to the motion regarding the supplemental pleadings: the regulations don’t provide for a requestor to file supplemental pleadings as a matter of right, only supplemental evidence, and the requestor didn’t ask for leave to file the supplemental pleadings.  Hence the supplemental pleadings were out.  Score one for procedure. 

 

The late-filed evidence-in-chief should have received the same treatment, a fact admitted to by the adjudicator herself: not only did the requestor fail to file evidence-in-chief with her revocation request, per the statute and regulations, but she didn’t even seek to file such evidence when responding to the motion for summary judgment for lack of requestor’s evidence.  As the adjudicator wrote, 

 

“I find the requestor’s behavior deficient.  Once the date for submission of her declaration was set, it was not up to her to take the law into her own hands, to not timely file the declaration, and then late in the proceedings to request an extension to file the declaration.”

 

At this point it sounds like the requestor is about to get tossed out on her ear – as according to the regulations she should have been.  But, continued the adjudicator,

 

“Nevertheless, under the circumstances, I believe the request [to file the declaration late] should be granted, and the requestor shouldn’t be denied her day in court just because failed to follow the procedural rules.” 

 

The adjudicator then cited two cases that purportedly supported the proposition that deviation from procedurals rules is ok.  However, the adjudicator conveniently ignored that one of the two cases was a district court case, and therefore of no precedential value; and she also ignored that the other case, a Supreme Court case, was distinguishable, inter alia on grounds that in that case, it was the respondant, not the movant, who was late in filing his declaration, and he missed the deadline by only a week, not eight months.  In other words, in that case, neither party was really prejudiced by the grant of the extension.

 

But the adjudicator’s real reason for not tossing out the requestor’s declaration was that the requestor was acting pro se.  “This is not to say that a different law applies to pro se litigants”, said the adjudicator, but, “Nevertheless, I believe that when the situation warrants it, a certain amount of flexibility in the application of procedural rules is called for when dealing with procedural mistakes by pro se litigants”.  To the extent the other side is prejudiced by the pro se litigant’s behavior, said the adjudicator, that can be compensated for in the award of costs at the end of the proceedings. 

 

Seems like the adjudicator may as well have written, “A different law doesn’t apply to pro se litigants…except when it does”.  By giving the requestor in this case the opportunity to file evidence-in-chief after the patentee had already filed its pleadings and evidence, she turned the entire revocation procedure on its head.  But hey, it’s only procedure, right?  Those procedural rules probably appeared out of thin air.  It’s not like there was any thought that went into them, right?

 

Curiously, in another pro se litigant case, an ex parte matter concerning several design applications, the same adjudicator took a strict view with regard to the pro se party.  But that’s a case for a different post. 

Commissioner-cum-Magician: Making Australia Disappear and Reappear

Like the USPTO, the Israel PTO is blessed with some good patent examiners.  Like the USPTO, it also has more than its fair share of less-than-stellar examiners.  And like the USPTO, the ILPTO has a backlog of cases to examine.  Unlike the USPTO, however, the ILPTO long ago decided to admit it had a problem, and to do something constructive about it.  Thus, in the 1980’s, the ILPTO began allowing applicants to piggyback their Israel applications on the allowance of a corresponding application in certain other jurisdictions, most notably the USA and the EPO.  In 1995 this practice was enacted into legislation the form of §17(c) of the Patents Act. 

 

As one might imagine, examination under §17(c) has been a popular choice with applicants who also file outside Israel and who seek to reduce their patent prosecution costs: coupled with the fact that applications can be filed in Israel in English, §17(c) practice enables applicants to leverage allowance in jurisdictions in which they will prosecute anyway to obtain an Israel patent inexpensively.[1]

 

§17(c) practice has also caught the attention of proponents of patent office worksharing.  If two patent offices can conduct equally good examination, the argument goes, and their substantive criteria for patentability are similar, why should both offices devote resources to examining what is substantively the same application?  It would be more efficient to let one office do the examination and for the other to rely on the examination conducted by the first.  In this regard, Israel’s §17(c) practice is remarkably progressive, as it sets aside national pride or arrogance, in principle acknowledges that other patent offices can do as good or better a job of examination as the Israel PTO, and takes advantage of that fact to reduce examiner workload. 

 

Nor does §17(c) practice divest the Israel PTO of control over the examination: under §17(d), the Commissioner may refuse a request under §17(c) if the conditions of §17(c) have not been fulfilled, or if “there exists another a special reason not to accept the application”.  (More on the latter statement below.)

 

The statute vests the authority to determine which patent-granting authorities may be relied under §17(c) in the Commissioner of Patents.  The statute provides no guidance as to how the Commissioner is to determine whether or not a particular jurisdiction should be included in the list, and the ILPTO itself has never published the criteria it uses in making such determinations.  Nevertheless, presumably, the Commissioner must be satisfied that a given patent office has high-quality control; of the offices currently on the list, none is a registration-only jurisdiction.[2]  In fact, in December 2008, the Commissioner issued Circular No. 65, in which he removed Australia from the list of countries:

 

“Because of the experience that the Patent Office has accumulated in implementing §17(c) of the Patents Act, it has been decided to remove Australia from the list of countries in which acceptance of a patent application enables an applicant file a request under §17(c).  This is in view of the fact that in most of the instances in which applicants request examination per §17(c) on the basis of an Australian patent, §17(d) is invoked [i.e. the Commissioner found there were grounds to refuse the request].”

 

Put less diplomatically, the ILPTO found that examination by IP Australia wasn’t very good.  Prima facie, then, notwithstanding the absence of clear guidelines for inclusion on the list, the Commissioner tries to limit the list of acceptable countries to those which have a proven track record of good searching and analysis of the prior art.

 

Which is why the Commissioner’s issuance earlier this week of Circular No. 75 raised eyebrows:

 

“Circular No. 65 is hereby canceled.  For the avoidance of doubt, it is clarified that Australia is again included in the list of countries in which acceptance of a patent application enables an applicant file a request under §17(c).”

 

No reasons given, just a reinstatement.  If this were Doug Henning or David Copperfield, it would be great stuff - Poof!  Now you don’t see Australia, it now you do!  But in the context of the ILPTO, it’s not so magical.

 

The lack of a reason for the reinstatement is particularly glaring against the backdrop of the earlier reason for dropping Australia from the list – given the ILPTO’s experience with IP Australia over the course of many years that led to dissatisfaction with Australian examination, what changed in the course of a mere nine months?  And what prompted the Commissioner to re-evaluate the situation so soon?  Is the Israel PTO trying to curry favor with IP Australia as Israel attempts to become certified as a PCT Search Authority?  Did someone at the ILPTO recently get a trip to Australia?  Both of these possibilities are suggested by the Commissioner’s Rosh Hashana greetings, sent out two days after Circular No. 75, in which he acknowledged that Israel is attempting to be certified as a PCT search authority, and that the ILPTO has established “an important connection” with IP Australia.

 

Coupled with the lack of transparency, let alone clear-cut guidelines, in how the Commissioner determines which countries to include on the §17(c) list, the Commissioner’s about-face on the inclusion of Australia in the list of §17(c) countries only serves to undermine confidence in the §17(c) process within the context of Israel patent practice, and to highlight the possibility of manipulation or usurpation of worksharing programs generally by political considerations (a possibility acknowledged by proponents of worksharing).  That’s a shame, because worksharing, done properly, can result in better patents across the board, in a larger number of jurisdictions.   

 

Incidentally, the lack of transparency in §17(c) practice by the ILPTO isn’t confined to the inclusion of countries on the list.  It also applies with respect to the invocation of §17(d) by the ILPTO.  As noted above, under §17(d) the Commissioner may refuse a §17(c) request either because the application doesn’t meet the requirements of §17(c) or if “there exists another a special reason not to accept the application”.  But in the 14 years since §17(c) was enacted, the ILPTO has never clarified what constitutes such a “special reason”.  Thus, unless the ILPTO cites some killer prior art that was missed by the foreign patent office, the applicant is left to wonder why his §17(c) request is being refused.

---

[1] The head of one local in-house patent department even told that if it weren’t for §17(c), his company wouldn’t bother filing in Israel. 

[2] As of September 6, 2009, the list consists of austria, Australia, the USA, Germany, Denmark, the UK, the Russian Federation, Japan, the EPO, Norway, Canada and Sweden.

Not even sublime, just ridiculous - part 1

Israel has both pre-grant patent oppositions as well as post-grant revocation proceedings.  Sometimes the PTO’s decisions in these proceedings make sense.  Sometimes they don’t.  A recent opposition decision, Unipharm v SmithKline Beecham (opposition to patent application no. 117035) falls squarely into the latter category.  In fact, it’s so egregiously bad it’s going to provide fodder for several posts.  I will leave a full discussion of the facts, and my criticisms of the PTO’s reasoning (or lack thereof) for another day. 

 

Today I provide a brief synopsis of the facts and two practical implications for practice before the Israel PTO.  For those who don’t have time or patience to read all the way through even this brief presentation, the practical implications are as follows:

 

(1)

If you have a particularly valuable application pending in Israel that has claims to different types of statutory subject matter, you should consider dividing the application, even if the ILPTO doesn’t tell you to do so.  This is because if the application is opposed, and claims directed to one class are found to be unallowable, the claims to the other class(es) may go down as well, solely on the grounds that they are grouped with the unallowable claims.

(2)

When citing your own earlier application as prior art to the Israel PTO, be sure to cite all the priority applications for that earlier application, unless you’re sure your earlier application contains all the statements that appeared in the priority application.  Failure to do so can be deemed to be the Israel equivalent of inequitable conduct.

  

In a decision given April 16, 2009, the Deputy Commissioner (DC) sustained an opposition to an SKB application that claimed crystalline paroxetine hydrochloride anhydrate (PHA) and a method for making this material.  The DC ruled that the material per se was not novel, because SKB had earlier produced the material.  SKB had argued that since the (published) method by which the material had originally been made stopped working a few years later, and at the time the subject application was filed, that known method yielded the hemi-hydrate, not the anhydrate, there was no enabling description in the prior art at the time the subject application was filed.  Therefore, said SKB, the anhydrate per se was novel at the time the application was filed.  The DC rejected this argument and said that the crystalline anhydrate per se existed, and therefore the claims on this material were anticipated.

 

There were two unfortunate parts of the decision.  The first was that although the DC acknowledged that the newly-claimed process for making the anhydrate was novel and non-obvious (it took several years for SKB to develop the new process, and the process itself involved crystallizing the anhydrous material from an aqueous solution!), he nevertheless refused to allow the method claims, saying that since they were grouped in the same application as the unallowable crystalline form claims, the method claims too had to fall - even though he could have exercised his discretion and allowed the method claims, or ordered their division from the unallowable crystalline form claims. 

 

The second unfortunate part was the DC’s determination that the entire application should also be rejected for failure to disclose prior art.  This part of the decision stemmed from the fact that although SKB mentioned in the application itself the earlier patent, EP 223403B1, which disclosed PHA, SKB did not disclose the existence of an earlier British application from which the ‘403 patent claimed priority.  As will be discussed in a later post, there were slight differences between the priority document and the patent, and apparently the DC felt that these differences were sufficient to warrant non-issuance of the patent – the Israeli equivalent of inequitable conduct in the U.S.A.

 

This is the first opposition of which I am aware in which the ILPTO refused otherwise allowable claims on the grounds that they were grouped with unallowable claims.  Had GSK divided the application and filed the method-of-making claims in a divisional, the DC could not have invoked these grounds for rejecting the claims.  And while it is not the first opposition in which an application has been shot down for failure to disclose prior art, it is the first of which I am aware in which the non-disclosed prior art was a priority application for a patent that the applicant did disclose.

 

It is unclear if this case will remain an isolated instance with regard to the grouping of non-allowable claims with allowable claims, or heralds a new approach from the ILPTO.  It could just be an isolated case, as the rejection of the method claims may have been the DC's way of punishing the applicant for attempting to obtain claims on a material that the applicant acknowledged had at one time been known; this particular fact pattern is unlikely to repeat itself, and thus the PTO may be unlikely to invoke such punitive measures again.  It could also be an isolated instance because this part of the decision may be deemed on appeal to be dictum: since DC also ruled that the entire application was unallowable for failure to disclose prior art, it may be that the DC's statements about the grouping of the claims isn't part of the holding.

 

If, however, the DC's statements indicate a new approach on the part of the ILPTO (even if in this case are they are deemed to be dicta), this new approach places applicants in a tenuous position: once an application has been accepted (i.e. published for opposition), an applicant may cancel claims from the application, but he cannot expand the scope of the claims and he can no longer file divisionals (although, as mentioned above, the Commissioner can order division during an opposition).  Thus applicants in Israel may now be facing the choice of (possibly unnecessarily) dividing the application during ex parte prosecution, or not dividing but then losing otherwise valid claims because the applicants weren't prescient enough to know that some of the other claims would be found invalid during opposition, thus dragging the rest of the application down with them.

 

Because of this decision, its uncertain impact (GSK still has time to appeal the decision, and it cannot be predicted when a decision will be given in the appeal if filed), and the fact if adopted as policy by the ILPTO, applicants' hands will be tied once their applications are published, it appears that in cases of important applications having claims directed to different statutory classes (composition of matter, method for making, pharmaceutical composition and use), applicants should consider voluntarily dividing the application before acceptance.

 

As to the failure to disclose the priority document, if the DC’s determination stands, then it would seem incumbent upon applicants, at least when citing their own prior patents or published applications, to also cite the corresponding priority applications.