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?

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. 

Monty Python and The Israel Patents Database

Fans of Monty Python may recall the “Dead Bishop on the Landing” sketch, which included an exchange that went something like this:

 

“What’s for dessert?”

 

“We got rat pudding, rat pie, rat cake, rat sorbet, and strawberry tart.”

 

“Does it have any rat in it?

 

“Well, it does have some rat in it.”

 

“How much?”

 

“Oh, three or four.  Rather a lot, really.”

 

“Alright, I’ll have one piece of strawberry tart without so much rat in it.”

 

Last week I mentioned that the Israel PTO patents database is a relatively new tool available to the public.  This week I discovered that it does contains some errors. 

 

More than three or four.  Quite a few errors, actually. 

 

For example, according to WIPO’s own publicly-available database, PCT/US2003/000012, entitled “Devices and Methods for Heart Valve Treatment” and filed in the name of Myocor, Inc. on January 8, 2003, published as WO 2003/059209 on July 24, 2003.  But a search for PCT/US2003/000012 in the ILTPO database yields two Israel applications, IL 164219 and IL 164428, neither of which was filed in the name of or subsequently assigned to Myocor.  Conversely, a search for WO 2003/059209 yields no Israel applications, and likewise and a search for applicant “Myocor” turns up empty.  

 

IL 164219 was filed in the name of Bone Care International Inc., and is entitled “Method for Treating and Preventing Hypathyroidism” (the last word of the title being an obvious typographical error).  According to the ILPTO database, the PCT publication number for this national phase application is WO 2003/088976, published October 30, 2003; but WIPO’s own database says that this PCT publication number corresponds to application number PCT/US2003/012013, “Method for Treating and Preventing Hyperparathyroidism”, filed April 17, 2003.  Consistent with the incorrect information in the ILPTO database, a search for application number PCT/US2003/012013 in the ILPTO database yields no results, thus indicating to the searcher that there is no national phase application in Israel; but a search for WO 2003/088976 directs the user to IL 164219.  Interestingly, when one clicks on the “show the WIPO publication” link for IL 164219, one is actually sent to the WIPO page for Myocor’s WO 2003/059209. 

 

As to IL 164428, according to the ILPTO database this application (which is abandoned) is entitled “Computer-implemented system and method for measuring and improving manufacturing processes and maximizing product research and development speed and efficiency”, and corresponds to WO 2003/060812, published July 24, 2003.  But according to WIPO, the PCT application number for that publication is PCT/US2003/001272, filed January 15, 2003.  The ILPTO database has no record for a national phase entry for that PCT application number.

 

This isn’t an isolated instance.  For example, the same problem exists when searching the ILPTO database for national phase applications corresponding to PCT/US2003/000013 (two national phase applications to two different entities listed), PCT/US2003/000017 (ditto), PCT/US2003/000022 (ditto), and PCT/US2003/000018 (three national phase applications to three different entities listed).  That means out of the eleven PCT applications ranging from PCT/US2003/000012 to 000022, at least five are incorrectly linked with the corresponding Israel applications.  “Rather a lot, really.”  I’d rather have a database that doesn’t have so many errors in it, or at least not such a high incidence of errors.

 

That there are errors in the ILPTO database is not surprising - all databases of a sufficiently large size are bound to contain some errors (look for 12:01 Tuesday to post in the future regarding some humorous errors in the USPTO’s searchable patent database).  I think that, for this reason, most patent searchers and patent practitioners recommend utilizing more than one database when searching, on the assumption that multiple sources are more likely to lead to the uncovering of errors or omissions.  Nevertheless, the number of errors in the ILPTO’s database seems to be surprisingly large, to the point that it appears there may be a systemic problem with the database.  Kind of makes you wonder how the ILTPO got approval in September to become a PCT search authority, but that’s for a future post.

In any case, there is a qualitative diffrence between an isolated error in a commercial database, which has no legal ramifications, and what may be a systemic error in an officially-maintained database that ostensibly reflects the legal status of a pending patent application. Significant reduction of such errors is critical if Israel is to really move to paperless patent prosecution

In any case, there is a qualitative diffrence between an isolated error in a commercial database, which has no legal ramifications, and what may be a systemic error in an officially-maintained database that ostensibly reflects the legal status of a pending patent application. Significant reduction of such errors is critical if Israel is to really move to paperless patent prosecution.