America-Israel Patent Law

It Took A Few Years, But We Can Finally Attend That Party To Which We Were Invited

Six years ago I blogged about my response to being invited (along with, presumably, every other IP practitioner on the planet) to a conference in Dubai, with which Israel did not have diplomatic relations at the time.  But then last year the Trump team pulled off the Abraham accords, and now I can even take a non-stop flight from Tel-Aviv to Dubai to participate in next year's iteration of this same conference.  Probably won't attend - won't even arrive fashionably late - but at least this time around I could if I wanted to.  So thanks to Mr. Trump and Mr. Netanyahu for that.

Let’s Go Brandon? Or Let’s Go, No-Brand: Some Thoughts On Trademark Protection From a Non-Trademark Practitioner

If you’re up on current events in the USA, skip to the next paragraph.  If you don’t follow cultural and political developments in the USA, then you’re unaware that the performance of the current occupant of the White House has led crowds at certain events – notably some college football games and some automobile races – to shout, in 4/4 time, “F**k Joe Bi-den” (clap, clap, clap clap, clap). Recently, at a race won by a driver named Brandon, with the FJB chant clearly audible in the background, a TV announcer wearing a straight face told the viewers that the attendees were chanting “Let’s go Brandon”.  Thus was born a polite way for critics of Mr. Biden to express their displeasure with both him and the various media outlets that seem unable to find anything wrong with his mental acuity or his administration’s policies, without actually uttering what many consider to be a profanity.

The popularization of the phrase has caused some consternation (ok, apoplexy might be a better word) among some of the self-appointed cognoscenti working for tabloids like the New York Times and the Washington Post, who seem to have quickly forgotten some of the rhetoric used by their colleagues and others with reference to Mr. Biden’s immediate predecessor.  This popularization has also, predictably, resulted in the availability of items like hats, t-shirts, flags and bumper stickers bearing the phrase “Let’s Go Brandon”. And wherever you find commerce in a phrase, you can be sure that someone is going to try to cash in by protecting the phrase using trademark or copyright law. Or in the case of political speech, to try to suppress that speech, by asserting rights in the phrase (recall Hillary “I am a dingbat, hear me roar” Clinton’s attempt to stifle the production of paraphernalia mocking her campaign slogan in 2014, or a similarly unsuccessful attempt in 2015 by one Donald “Don’t Call Me Thin-Skinned” Trump to silence critics).

So, surprise, surprise (not!), as of today there are six pending applications for US trademark registrations for the phrase “Let’s Go Brandon” (some with an exclamation point):

For those of you who don’t want to look up each application, here’s a summary:

No.	applicant, location	class	description	first use/first use in commerce	filed
97061110	NovelTEA Gifts LLC, Wisconsin	25	“Clothing, namely, sweatshirts, T-shirts, tank tops, long sleeve shirts; headwear, namely, caps and hats; baby clothing, namely, one piece garments; children's clothing, namely, t-shirts”	02 Oct /05 Oct 21	05 Oct 21
97059307	NovelTEA Gifts LLC, Wisconsin	16	bumper stickers	02 Oct/04 Oct 21	04 Oct 21
97087688	Shenzhen Hengda Century Electronic Commerce Co.,Ltd, China	24	“Brocade flags; Cloth flags; Fabric flags; Flags of textile; Nylon flags; Plastic flags”	Both 01 Oct 21	22 Oct 21
97085454	YANG LEISHENG, China	24	“Pillow covers; Cloth flags; Fabric flags; Nylon flags”	Both 02 Oct 2021	21 Oct 2021
97084267	Robert Wong DBA Bulletproof Tips Corporation, California	24	“Flags of textile; Flags of textile or plastic; Banners and flags of textile; Brocade flags; Cloth flags; Fabric flags; Fabrics with Let's Go Brandon printed thereon for the manufacture of Flags; Nylon flags; Plastic flags”	Both 19 Oct 2021	20 Oct 2021
97070721	Angela Thurman, Tennessee	25	“Clothes, stickers, hats, and bags”	none	12 Oct 2021

If the USPTO allows these to proceed, it looks like some folks are going to be duking it out over rights. Based on e.g. the PTO’s past granting of registrations of certain names of places in Yosemite National Park to a private party rather than the US government, no questions asked, it won’t be surprising if the USPTO ultimately grants some of these registrations. And unlike, say, the short-lived contretemps over the rights in the phrase “Left Shark” (short-lived because within a month of the Superbowl in 2015 it was a forgotten “meme” and no one was going to buy “Left Shark” merchandise), Mr. Biden will presumably remain in office until January 20, 2025, so the market for “Let’s Go Brandon” items will remain strong for some time.  

But it’s not clear to me that any of these entities are entitled to TM registration, for at least three reasons.

First, none of them came up with the phrase. I suppose that’s more of a patent person’s way of thinking than a TM person’s way of thinking, but something seems amiss if one person can coin a phrase and someone else can then obtain rights in the phrase, merely because that other person was the first to put the phrase on a t-shirt.  The fact that within a period of about two weeks, multiple entities sought TM protection for the same types of goods indicates that it’s an obvious idea.  Of course, “obviousness” is a patent term, not a TM term, but if you’re not a TM attorney, I’m sure you’ll get the idea. 

Second, going back to first principles, trademarks are supposed to indicate the source of the goods. If you’re buying French fries in a red carton with the golden arches on it, you’re supposed to be getting the genuine article from Mickey D’s.  Same thing if your shoes say “Nike” or your purse says “Gucci”.  It’s both an indication to the buyer that the goods meet a certain standard of quality (or not), and for the status-conscious, a signal to others that someone paid for the real McCoy.  Here, none of that is applicable. There’s no company called “Let’s Go Brandon” that’s producing goods, and no one who plans to wear a cap with “Let’s Go Brandon” printed on it cares who the manufacturer is or that others see that the wearer bought the cap from a particular manufacturer.  The wearer just wants to express displeasure with the POTUS (or to indicate his support for a friend or relative named Brandon). So TM protection seems inapposite here.  These TM registration applications appear to be attempts at unjustified rent-seeking, as none of the applicants invented anything or invested time and money in developing a brand (or, as far as I know, raising a Brandon). 

The logic behind that second reason derives from the third reason: if, as the pro-Biden press asserts, the phrase is now a veiled way of saying “F**k Joe Biden”, then use of that phrase constitutes political speech, and therefore the placement of it on articles of clothing, bumper stickers or flags shouldn’t be subject to the injunctions that can come with trademark protection.  What the Chinese Communist Party does to its own people is bad enough; should it now be given control over political speech in the USA too?

So it seems that the parties seeking to register “Let’s Go Brandon” are really saying, “Let’s Go, No-Brand”.

By comparison, despite the Supreme Court’s 2019 decision allowing the registration of “FUCT” as a mark (on the grounds that the “immoral or scandalous” clause of the Lanham Act was unconstitutional), no one has sought to register “Fuck Joe Biden” or F**k Joe Biden” for any class of goods.

Israel PTO to Issue Patent Office Actions in English (and How Some Firms Will Continue to Fleece Their Clients)

This morning the Israel PTO announced that, beginning January 1, 2022, applicants for patents may receive their substantive examination reports (aka “office actions”, or “OAs”) in English. This service is only available for patent applications for which substantive examination has not yet commenced.  Although the Office indicated that this is a pilot program, neither an end date for the pilot program, nor criteria for deciding if the program is to become permanent, were announced. I would include a hyperlink to the announcement, but if it’s on the ILPTO’s web site as of this writing, I can’t find it, so at the end of this post I include the full text of the email announcement.

There are two ways an applicant can request to be enrolled in the English OA program.  The first is by writing an email to Ms. Ora Sasson (orasa@justice.gov.il) by December 7, 2021, in which case all of an applicant’s applications will be enrolled in the program.  Truthfully, the notice is a bit vague on this point, because it’s worded “Those who are interested in participating in the pilot and to commence to program with respect to all of their applications” [emphasis in the original] are requested to notify Ms. Sasson by email.  So it may be that by “Those who are interested”, the Israel PTO means those patent practitioner firms, rather than individual applicants.  I’ll return to this point in a moment.

The alternative is to enroll in the program on a case-by-case basis, by filing a paper via the Israel PTO’s electronic filing system under the heading “request to complete/amend an already-filed specification”, requesting enrollment in the program.  You might ask, “Why does a request for English OAs need to be submitted under the heading “request to complete/amend an already-filed specification?”  For those of us who have been forced to use the IL-EFS for nearly five-and-half years now, the answer is self-evident: IL-EFS makes the user pick one of a limited number of pre-defined actions, and since “request to complete/amend an already-filed specification” is (a) already defined, (b) one of only a handful of actions that one can take at any time (most actions are only allowed at certain periods in an application’s life, in accordance with definitions in the EFS), and (c) something that an examiner must look at prior to commencing examination, it’s easier for the Israel PTO to it this way than to define a new action, viz. “request that OAs be issued in English”.

Inasmuch as the vast majority of patent applications filed in Israel are filed by non-Israeli entities, it’s likely that most applicants will want to take advantage of this program, because the issuance of an OA in English will presumably reduce costs – applicants can just receive the OA as-is from the Israel patent counsel, and then ask counsel any questions the applicant wishes to ask.  This stands in direct contrast to the interest of many practitioner firms, for which the translation of OAs is a source of income. So what will those firms do now?

My prediction is that the firms that process lots of Israel OAs, and generate revenue by translating those OAs to English, will do the following:

First, sometime this week, firms with lots of clients from outside Israel will send a letter to those clients, informing the clients of the option to receive Israel PTO OAs in English, and asking if the clients wish to receive their OAs in English.  The firms will bill those clients for those letters. 

What might be conveniently omitted from those letters is possibility of giving the Israel PTO a standing order to issue OAs in English.  This omission might be justified (or maybe “rationalized” would be a better word) on the grounds that the wording of the notice is vague about whether the program can be applied to all of an applicant’s applications or to all of a practitioner’s applications, and if the firm doesn’t get buy-in from all of its clients, it can’t give a standing order to the ILPTO to issue all OAs in English. 

Then, what some firms will subsequently do is not email Ms. Sasson, but instead make a note in their own docketing systems that clients X, Y and Z want OAs in English.  Those firms will then request English OAs individually, in each application in which examination has not yet commenced, and in each new application filed.  Because that’s another billable task, one that can be multiplied many times over if you’re filing several dozen or several hundred applications at the Israel PTO each year.

For myself, I’ll be contacting my clients and letting them know of this possibility, but I don’t see any of my clients from outside Israel not wanting their OAs in English.

I do wonder about one thing, though: until now, it’s often been the case that OAs written in Hebrew have been unclear on certain points.  I don’t know if switching to English will affect that, as for many examiners both Hebrew and English are second languages.

ציבור המבקשים, עורכי הדין ועורכי הפטנטים שלום רב

רשות הפטנטים מתכוונת להתחיל פיילוט במסגרתו הודעות על ליקויים לפי תקנות 41 ו-43 והודעה לפני קיבול בבקשות שטרם החלה בחינתן יופקו בשפה האנגלית וזאת לבקשת המבקש או בא כוחו.

הפיילוט יחל ב1.1.2022

השירות נועד להקל על המבקשים ולייתר את הצורך בתרגום הדו"חות שמפיקה הרשות לשפה האנגלית, על מנת שניתן יהיה להעבירם למבקשים

המעוניינים להשתתף בפיילוט ולהחיל את האפשרות  באופן גורף על כול בקשותיהם, מתבקשים להודיע זאת על-ידי פניה במייל לגב' אורה ששון לכתובת : orasa@justice.gov.il   עד ליום 7.12.2021

בנוסף ניתן לבקש להחיל את הפיילוט  לגבי בקשה מסוימת בלבד וזאת ע"י הגשת הודעה בפניה מסוג "בקשה להשלמה/תיקון פירוט שהוגש"

 

New York Times Gets It Wrong, But What’s New?

Once upon a time the New York Times was a respected publication. These days it’s overpriced toilet paper (and not very soft at that, let alone perforated for easy use). Case in point: a piece it ran at the end of January under the heading, “Colombians Ask: Who Would Dare Patent Panela?”.

The impetus for the article was the issuance in April 2020 of US patent no. 10632167, entitled “System and method for processing raw sugarcane maximizing the preservation of policosanols during production of a shelf stable potable cholesterol-reducing product”.  The premise of the NYT piece is that this patent covers a long-known method to make a long-known product (panela), and thus the issuance of this patent, and related patents in Colombia and other parts of the world, will preclude Colombians from practicing a process, and producing the resulting product, that they’ve been practicing, producing and consuming for generations, and that they will be closed out of the market for export of panela to the USA and Europe. 

In what has become typical fashion for its hit pieces on patents and other disfavored subjects, the piece weaves in select facts and select omissions of facts to imply that the End of World is Nigh. Had the “reporter” done her homework, she would have asked pertinent questions, like, “Does this US patent have effect in Colombia? Does it actually cover the traditional product or the traditional way of making that product? Will it preclude importation of the product into the USA?”  But God forbid that the Times engage in actual reportage.  (Hey, if you can spend eight years doing nothing but deifying an incompetent president, and then more than four years doing nothing but smearing his successor who actually did many things right, not to mention assert, repeatedly and loudly, the canard that the USA was founded in order to perpetuate slavery of black Africans, what’s a hit piece on a single patent, right?)  So let’s delve into those questions ourselves.

First, some history: the US patent mentioned in the piece, 10632167, while constituting the maturation of USSN 15/803,037, filed in October 2017 and the first application in a chain, is not the first US patent to issue from that chain.  That distinction goes to US 10,493,121, granted in December 2019, which was filed as USSN 16/163,365, a continuation-in-part of the ‘037 application.  Those two applications served as the priority applications for PCT/US2018/058537, filed in October 2018.  It is the PCT that gave rise to related applications in Australia, Cuba, the EPO, China, Ecuador, Nicaragua, Peru and Mexico.  A third US application, 16/702,238, was filed in December 2019 on the day that the ‘121 patent issued.

Second, neither of the US patents, nor the pending US application, nor the published PCT application, nor the claims pending in Europe or Australia, claim a product per se.  All of them claim a method to produce a juice, not to produce panela, which is a solid.  Taking US 10632167 as an example, this patent has a single independent claim, which reads:

“A method for processing a quantity of unwashed raw sugarcane sticks to produce a policosanol-rich sugarcane juice product via a sugarcane juice product processing system, the unwashed raw sugarcane sticks each including a sugarcane stalk outer cortex containing natural policosanol-rich waxes and minerals, the method comprising steps of:

shredding the unwashed sugarcane sticks and conveying the shredded and unwashed sugarcane sticks toward a first one of a series of mechanical roller mills;

extracting sugarcane juice from the unwashed shredded sugarcane sticks via the series of roller mills, the shredded sugarcane sticks, while being conveyed through the series of roller mills, macerated with water having a temperature maintained within a temperature range that prevents dissolution of said policosanol-rich natural waxes and minerals in the sugarcane stalk outer cortex, to produce a volume of water-diluted extracted policosanol-rich sugarcane juice product;

filtering the diluted extracted policosanol-rich sugarcane juice product through at least one filter;

stabilizing the pH of the extracted and filtered policosanol-rich sugarcane juice product in a non-acidic solution of calcium hydroxide to a stabilized pH level within a pH range of 7.0 to 7.6;

heating the pH-stabilized sugarcane juice to a temperature maintained within a temperature range precluding evaporation of policosanols from said extracted policosanol-rich sugarcane juice product;

clarifying the heated and pH-stabilized sugarcane juice, wherein the heated and pH-stabilized sugarcane juice is flocculated using a mixture of water and at least one flocculate product, the flocculated sugarcane juice forming a glutinous froth, the glutinous froth retained and subjected to further processing in order to preserve a rich concentration of policosanols contained therein, the policosanol-rich processed froth subsequently reintroduced into the sugarcane juice product being processed;

evaporating the clarified sugarcane juice product via an evaporation apparatus including a series of evaporators, thereby incrementally increasing a sugar and policosanol concentration of the sugarcane juice product to create a post-evaporation, policosanol-rich concentrated sugarcane juice syrup having a desired post-evaporation Brix value, wherein the Brix value of the sugarcane juice product is maintained at or below 70° Bx during the entire evaporation step; and

extracting the evaporated sugarcane juice concentrate from the evaporation apparatus at said desired post-evaporation Brix value,

wherein, the sugarcane processing method maintains a juice product temperature within a temperature range precluding evaporation of policosanols from said extracted policosanol-rich sugarcane juice product throughout said process.”

That’s a method claim with a lot of steps, and the independent claims in the other US patent and pending applications are similar.  Under US law, in order to infringe, the infringer would need to practice every single one of those steps - leave out a step and there’s no infringement.  Or if some of the steps are practiced by one entity, and the other steps are practiced by another entity, and those entities aren’t acting in concert, there’s no infringement.  In this particular case, there also seems to be an easy and inexpensive out: since the starting material is unwashed sugarcane, rinsing the sugarcane with water before beginning the process would apparently result in non-infringement.  (Presumably the law is similar in this regard in the other countries where patent applications were filed.)

And of course, a US patent has no force outside the USA against actors who are acting entirely outside the USA. Patents are territorial.

Those are all facts the “reporter” could easily have ascertained, had she troubled herself to talk to a patent attorney…or, in the case of the requirements for infringement of a method claim, even to an L1 taking a patent law course. 

Similarly, she could easily have learned that in the USA, a claim on a method does not prevent others from making, using or selling the product resulting from practice of that method, unless they actually practice the claimed method to produce the product.    

And if the “reporter” had a friend who’s a more experienced patent attorney – or if she had just spoken with a patent attorney looking for some free publicity – she would have learned that 35 USC §271(g) ostensibly makes it an act of infringement to import into the USA the product of a process that is protected by a US patent, but that the case law has taken most of the teeth out of §271(g), so that if the product can be produced commercially by a non-infringing process, the imported product won’t infringe under §271(g), even if produced by the infringing process.

Why is all that relevant? Because at one point, she notes that (a) Colombia exported about 9000 tons of panela to the USA and Europe in 2019, (b) in Colombia, producers of refined sugar are precluded by law from producing panela, but (c) those same producers are not precluded from producing panela outside Colombia, so (d) if a Colombian sugar producer could control the production (and importation) of panela in (and into) the USA, such a producer could foreclose the market to the (much smaller) Colombian panela producers.  Had she done her homework as outlined above, she would have found that that’s an unlikely outcome, since, as noted, panela can produced by non-infringing methods, so §271(g) can’t be used to enjoin the importation of panela, even if produced by the patented method. 

Moreover, if indeed the process for producing panela is in the public domain (see below), then there’s nothing NOW to stop someone from producing panela in the USA and competing with the Colombian producers. Well, nothing but economics, which would seem to require a good local supply of sugarcane, and expertise in production, which the article states is difficult to find, even in Colombia.

All that, of course, is before we get to the most glaring issue, which is that if any of the claimed processes were known or were obvious before the patent applications were filed, then the claims on those processes are invalid.  This is evident from the prosecution of the European case, in which the Examining Division in its search opinion both took note of third party observations that were filed by the Federacion Nacional de Productores de Panela – FEDEPANELA (an organization mentioned in the article as trying to stymie the grant of the patents), requiring the applicant to respond to the issues raised therein, and raised its own bases for prior art rejection of the claims (in addition to raising other grounds of rejection).  To the extent the applicant admits that its own processes differ from prior art processes, that will provide others with a blueprint for how to avoid infringement.

The “reporter” has a point in that, if indeed the process claimed in the issued US patent was anticipated or obvious in view of what was known, then that’s a defect in the examination process.  What she neglects to mention in that regard is that there are now several mechanisms in place to put a check on poorly-examined US patents. 

If what she’s really lamenting is the fact that someone might seek to obtain a competitive advantage by securing the issuance of a patent, then all I can say is, Welcome to the world, honey. But it goes beyond that, because the unstated implication of her piece is that because the USPTO makes mistakes, there shouldn’t be patents.  

Hmm.  I wonder if the author has been vaccinated against the Wuhan virus. Because if she has, then among the many things and people she can thank are the patent system and President Trump, for providing the incentives to get those vaccines developed and into people’s arms in record time.  Now THAT’S a story worth covering.

One final note: the patent specification explains that panela contains alcohols collectively called policosanols, and asserts that these reduce cholesterol levels.  The method alleged maximizes the concentration of policosanols in the final product.  If indeed the product of the claimed process is novel and non-obvious, then the applicant could have tried to claim it.  For example, it could have written a claim such as, “A solid food product comprising between n-m% glucose, o-p% fructose, q-r% sucrose, and s-t% policosanols.”  Such a claim, if granted, would be much more effective than a claim on a process (at least in the USA), as it would be easy to ascertain whether or not a product infringes.  And if there’s no written analysis of old samples of panela, it would be hard to invalidate such a claim.  Whether the failure to include such a claim was deliberate or merely the result of poor lawyering, the lack of such a claim would have been worth mentioning.

Israel PTO EFS To Be Offline For Part Of August 5; No Notice Posted on Website

The Israel PTO announced this morning by email that its computer systems will be offline beginning Thursday August 5 and continuing through 7 AM the following morning.  This will include filing systems for patents, trademarks and designs.

The notice doesn't appear on the landing page of the ILPTO's web site.  Nor does it appear in the "news" section.  In fact, the notice doesn't seem to appear anywhere on the ILPTO site, even if one searches for it.  

It's also strange that the system will be taken offline while it's still a workday.  Since the ILPTO is officially closed on Fridays, why not start the maintenance a minute after midnight on Friday, August 6, and finish by noon the same day, instead of foreshortening applicants' and owners' workday on Thursday by 7 hours (or forcing them to file by fax, which nobody including (or especially) the ILPTO likes, or forcing them hire a driver to hand deliver the documents to the ILPTO, another thing which nobody including the ILPTO likes)?

 

Nice Bells And Whistles, But What About The Critical Functions?

I reported earlier this year on the Israel PTO’s updating of its public patent database, and concomitant loss of some documents in the migration.  This week, the ILPTO sent not one but two emails regarding the database.   It’s possible these emails were also posted on its website, but since the website was re-done in May, it’s a lot harder to find information.  Using the site’s search engine, I found the second of these notices here. That notice reminds people that certain prior art documents filed by applicants as part of their duty of disclosure are not available on the public database (viz. those documents subject to copyright), but provides contact information for individuals who wish to obtain copies.

The first notice, which I couldn’t find on the ILPTO web site but may be hiding somewhere in there, trumpets many new features now available in the database: searching according to various events in the file by data or name of event (acceptance of application; filing of opposition; office action response; request to amend; opposition to amendment; request for patent cancellation by third party; request for cancellation by patentee; patent term extension (PTE) requests; intent to grant PTE per §64E(c); intent to grant PTE per §64E(e)(1); supplemental intent to grant PTE per §64E(e)(3); opposition to PTE; grant of PTE; reinstatement request; addition or removal of inventor; assignment of patent; change in representative or representative address; removal of representative; recordation or removal of license, lien, or pledge; merger; change of name or address of patentee); addition of information about expected first office action or subsequent office action in response to an applicant’s answer; searching PTE info by name of active ingredient listed in the PTE.  According to the notice, search results can also be downloaded in Excel format.    

I have not tested to see if any of these new features are actually available.  If they are, they’re nice to have, and in some ways far better than what, say, the USPTO offers (e.g. for searching IPRs).  But I have something more basic that interests me.

I filed a patent application at the end of the Paris Convention year, claiming priority from an application that’s available via DAS.  At the time I filed, I made the priority claim, but didn’t have a copy of the priority application itself and didn’t have the DAS access code.  Subsequently the client supplied me with the DAS access code, and asked the ILPTO to download a copy of the priority document.  I made an entry in my docket to follow-up to be sure the copy of the priority document had been downloaded.

Not having heard from the ILPTO that document was retrieved, but also not having heard that it couldn’t be retrieved, this week, per my docket, I checked the ILPTO patent database. My instruction letter was there, but the priority document was not.  After a few phone calls I reached someone at the ILPTO who’s familiar with the DAS process, who assured me that the priority document was there, and visible in the ILPTO’s own internal database.

What’s the point of a public database that doesn’t show copies of priority documents, or more generally that does not indicate to practitioners that their instructions have been acted upon by the ILPTO? 

And those documents that went missing back in March when they migrated to the new database still aren’t visible.

Contrasted with the ILPTO touting all these great improvements in the database, the failure to indicate that the priority document was retrieved, and the continued absence of certain other documents, is like the people behind this database saying, “Let them eat cake”.

Jen & Barry’s: The Answer to Ben & Jerry’s?

It’s safe to assume that by now most readers of this blog have heard that ice cream manufacturer Ben & Jerry’s will cease selling in Judea and Samaria in 2022.    

To quickly review the background: B&J, which is owned by Unilever, licensed a local company in Israel (reported in the press as “Ben & Jerry’s Israel”, but according to the Companies Register there is no such company), to make and sell ice cream under the Ben & Jerry’s name.  Presumably, as part of the arrangement, the local company also receives know-how and other proprietary information from B&J (e.g. recipes and methods of preparation), and perhaps is required to use special equipment as well.  B&J’s board has for years pressured the local company to not sell in Judea and Samaria, but the owner of that company, Avi Zinger, has resisted those calls. Hence the continued availability of locally-produced Ben & Jerry’s in Efrat, Maaleh Adumim, Ariel, et al.  Last week, the Ben & Jerry’s board informed Mr. Zinger that it would not renew its licensing/franchise agreement with him in 2022, and will be seeking a different licensee/franchisee. According to a subsequent press announcement from B&J, its board actually decided to terminate all activity in Israel, but Unilever overruled that board and said that activity in what it deems to constitute Israel will continue with a new to-be-named partner.

Aside from being annoyed with yet another instance of b.s. brought to us by imbeciles and Jew-haters (BDS pressure on Soda Stream led to the relocation of its plant from Mishor Adumim to the Negev, resulting in the loss of hundreds of jobs for people in the PA, showing that BDS has nothing to do with helping so-called Palestinians), my instinctive reaction as an IP attorney was, “Well, this presents some opportunities for some fun!”  As in, there are ways to stick it to Ben & Jerry’s.  Let’s look at what those might be.

One thing might be for the local company to continue to produce B&J’s ice cream, but to sell it under a different name, say “Jen & Barry’s” (more on the name in a moment).  That will probably prove difficult because, as noted, those recipes and specific production methods are likely considered propriety B&J information, and therefore continued use of the recipes after expiration of the agreement will probably be precluded under trade secret law (and specifically the Israel Commercial Torts statute).

But ice cream is not exactly high tech, and there are few if any impediments to making ice cream using other recipes and/or methods.  Indeed, patents, at least Unilever patents, probably don’t figure into this story at all.  Unilever presently has only four patents in force in Israel, and Ben & Jerry’s has none.  The most relevant of the Unilever patents is IL 223735, which claims an “aerated frozen confectionary product” and a method for making the product; this does not appear to apply to hard-pack ice cream. IL 164736 claims a “frozen aerated product in a container” in which the container has two compartments; that’s not your typical ice cream, and I haven’t seen any B&J products in Israel that would infringe this. Additionally, the patent will expire in May 2023.  IL 156438, “Method for the production of a heterologous protein by a fungus”, and IL 207765, “Stackable cosmetic jar”, are irrelevant.

So the local company could switch to making ice cream similar to B&J’s, but without using proprietary information it obtained from B&J.  And to really make things fun, it could sell its products under a name similar to but nevertheless different from “Ben & Jerry’s”.  Like “Jen & Barry’s”, which has the ring of a nice Jewish couple from LA, or maybe a sister and brother from the Rockaways.

In this regard, there are two different issues, and from a story today in the New York Post, it’s clear that some people get these issues mixed up.  The first issue is, Can B&J’s stop someone from selling ice cream under the name “Jen & Barry’s”?  The second issue, related to but independent of the first, is, Can someone selling ice cream under the name “Jen & Barry’s” register that name as a trademark?

Regarding the first issue, I’ve no doubt that B&J’s would seek to prevent the sale in Israel (or anywhere else) of ice cream under the name “Jen & Barry’s”.  And not being a trademark specialist, I won’t try to predict the outcome of such a suit.  But what I can say is the obtaining of an injunction is not a slam-dunk.  The basic question in trademark law is likelihood of confusion: is a consumer likely to (erroneously) think that the competing product was produced by or with the imprimatur of the mark holder?  (A subsidiary claim might be that J&B is trying to free-ride on B&J’s mark, viz. to unjustly enrich itself at B&J’s expense.) Here, it would be abundantly clear to every Israeli with working brain cells that the product is NOT Ben & Jerry’s, but rather a response to B&J’s anti-Israel stance, and that the selling point is precisely that it is NOT B&J’s, but is being made by the company that B&J’s screwed.  And while the judiciary in no-jury-trial-Israel has a reputation of being left-leaning, there are no doubt judges who would latch onto this fact to find no infringement any of B&J’s registered marks in Israel (they have several) and no unjust enrichment, and to thus refuse to issue an injunction.

The new brand could make this decision even easier for a judge if the brand were to add further distinguishing feature, e.g. use a different font, and/or a different color scheme, and/or instead of having a bucolic Vermont scene in the background including a cow, have a more typical Israel scene, e.g. one showing a sabra plant, viz. a prickly pear cactus. 

A particularly interesting legal question would arise if sales of the new brand were geographically limited to those areas where B&J’s has publicly announced it won’t sell.  If the new brand were to be launched only after the current agreement with B&J’s has expired – and thus after cessation of sales in those areas – then the new company could (a) argue that Unilever (the mark owner) has no case, because B&J’s announcement – which, as noted, was originally going to apply to all of Israel, and was made only after modification by Unilever – means that Unilever has forfeited its rights in those areas by publicly announcing its view that those areas are not part of Israel, and (b) seek cancellation of B&J’s marks, on grounds of non-use in Judea and Samaria.  I’m doubtful the latter argument will gain traction – B&J’s will presumably still be sold in other parts of Israel – but a decision in favor of the competitor on the first grounds is not out of the question, and would send a powerful message to the BDS people.

Turning to the question of registration of the “Jen & Barry’s” mark, this would initially lie within the province of the Israel PTO, where there is already precedent for co-registration of similar marks.  In 1972 two Israelis started a pizza chain that they called “Pizza Domino”, but didn’t bother to register their mark.  In the 1990’s, the American pizza giant Domino’s Pizza opened branches in Israel, and a fight ensued over TM registrations.  In the end, the Commissioner allowed simultaneous registration of the marks of both companies, on the grounds that their respective marks used different color schemes (green and yellow vs. red and blue), and that there were different numbers of dots in the dominoes of the two marks.  So while it’s possible a TM examiner might initially object to registration of “Jen & Barry’s”, and a certainty that if allowed, registration would be opposed by Unilever, given the political nature of the dispute over registration of the hypothetical ‘’Jen & Barry’s” mark, it wouldn’t be surprising if ultimately the ILPTO decided to allow the registration of “Jen & Barry’s”.  Ditto for the disposition of an appeal of that decision.

The NYPost story linked to above says that Shurat Hadin, a non-profit headed by Nitsana Darshan-Leitner, has filed with the ILPTO to register the mark “Judea and Samaria Ben & Jerry’s”.  I have tremendous respect for Ms. Darshan-Leitner and the work that her organization has done over the years. In this particular case, I’m not sure that their tactics make sense, if the goal is to ultimately prevail. Israel TM law does not have a mechanism for TM registration only in Judea and Samaria – you register in all of Israel, which includes Judea & Samaria. And using the name “Ben & Jerry’s”, even if it’s supplemented with other words, in the same font, and with the same color scheme and cow scene, is not a winning formula to register a competing mark.  Moreover, the proposed mark is not even in use yet, so there’s no way to show acquisition of secondary meaning. I’ll be surprised if this particular mark gets registered, and I think it would be prudent to withdraw the application and come up with a strategy that has a greater likelihood of success, rather than setting the stage for the ILPTO a court to render a decision that could come back to bite a party that really wants to sell ice cream in Judea & Samaria, under a name that mocks B&J.

Finally, there is one other possibility, and that is that the new licensee could officially not sell in Judea and Samaria, but could turn a blind eye to sales in those areas by others.  Since the product was made under license, trademark law would be of no avail to Unilever to prevent such sales – parallel importation is allowed under Israel TM law, and from Unilever’s perspective, that’s exactly would this would be.

MOJ and Israel PTO Ask for Suggestions for Amending the Regulations for Patent Oppositions

This morning the MOJ and Israel PTO posted a call for suggestions for changes to the regulations governing patent oppositions in Israel, and the ILPTO sent out an email notifying recipients of this fact.  The deadline for response is June 30, 2021.  A similar call for comments was published in 2016, and while many comments were elicited (posted here), no action resulted.  Apparently the powers-that-be now wish to move ahead with this.  

I've blogged about patent oppositions in Israel before, but for those who aren't familiar with the opposition procedure, it goes roughly like this: the examiner says the application is allowable, the applicant pays an "acceptance" fee, and a notice that the application has been "accepted" is published in the Patents Journal.  Any party then has three months to file an opposition to the grant of the patent, and then another three months to file its statement of case. The applicant then has three months to file its statement of case. Then the opposer has 3 months to file written evidence, the applicant has three months to file its evidence, and then the opposer can file further written evidence to address points raised in the applicant’s evidence.  Then there’s an oral hearing at which the parties cross-examine witness, followed by written summations (oral summations are common in the USA but rarely used in any litigation in Israel).  Eventually the Israel PTO issues a written decision, which is appealable to the district court.  The whole process, without appeal, usually takes a minimum of two years, and in practice longer, since parties (or more accurately, their lawyers or patent agents) often agree to extensions. If the applicant wishes to amend its claims during the opposition, this can further prolong the proceedings.  The applicant has no enforceable rights until it has a patent in hand, viz. until the ILPTO issues a decision upholding the grant of the patent.

One important point to note: the pre-grant oppositions are authorized by the statute, and thus can only be done away with, or modified to post-grant oppositions, by statutory amendment, which requires approval of the full Knesset.  The particular rules governing the opposition procedure are set by regulation, which requires only approval of the relevant Knesset Committee and the Justice Minister, and therefore are a bit easier to adopt.

I reproduce below my own comments from November 2016, which explain many of the problems with the current system.  My views haven’t changed in the interim, so I've yet to decide if I will change anything from what I wrote four-and-a-half years ago.    

Shalom Ayelet.

I write in response to the “קול קורה” asking for comments on the opposition procedure in Israel.  It’s not clear from the request itself if a change from pre-grant to post-grant opposition is going to be considered at this time, but I understand from other sources that the MOJ is interested in comments on making the existing opposition proceedings move along more quickly.  So I’m not going to discuss pre- vs. post-grant oppositions, despite the fact that I think Israel should transition exclusively to a post-grant proceeding, and that it’s inefficient to not discuss such a transition at this time.

By way of background: I’m not being paid by anyone to write these comments.  I deal primarily with helping inventive entities developing strategies for protecting their intellectual property, and I prepare and prosecute patent applications.  I also have a fair amount of experience with oppositions from the side of patent applicants, in several fields, and I’ve worked on behalf of local generic pharmaceutical companies in assessing their positions, or potential positions, in view of pending applications.  In short, I’ve seen the process from both sides, and I have no ulterior motive here: I call it like I see it, based on my experience.

A. It’s too easy to oppose

The single biggest problem I see with the existing opposition regime is that the barrier to entry for opponents is too low.  This leads to the filing of unjustified oppositions and unnecessary prolongation of the patent grant process.  To explain:

Presently, anyone has three months from the date of publication under section 26 to file a notice of opposition.  They then have a period of an additional three months to file their pleadings (כתב טענות).  Typically this document is a pro forma statement that “the claimed invention lacks utility under section 3, lack novelty under section 4 and lacks inventive step under section 5, the description is insufficient under section 12 and the claims do not reasonably arise from the specification under section 13”.  The אגרה for filing a notice of opposition isn’t particularly high, and the attorney fees for preparing a one-page notice of opposition and a one-page כתב טענות are pretty low as well. 

Thereafter, the applicant will file pro forma pleadings of its own within 3 months, denying the opponent’s contentions.  This is supposed to be followed by written evidence from the opponent within 3 months.  Often, however, at this stage, or sometimes even at the stage of the כתב טענות (!), the opponent will request an extension, and usually, the applicant will agree, because the applicant knows that it may later find itself in a situation in which it needs an extension, and therefore wants the opponent to be accommodating in the event that happens.  This is even more true in situations in which the same two parties, represented by the same counsel, have multiple oppositions pending simultaneously, since acquiescence to an extension in one case can be traded for acquiescence to an extension for the other side in a different case. 

If the opponent chooses not to file evidence, it can usually get the applicant to agree to have the opposition dismissed without a request for costs.  More on that below. 

The point here is that it is ridiculously easy for someone to oppose the grant of a patent application, and effectively delay the grant of the patent, at minimal cost to the opponent.  This has to end, and a few changes in the procedure would achieve this result.

1. Require submission of detailed pleadings, and only allow amendment of those pleadings by leave of the Rasham with good cause.

In the old days, when Israel patent applications were only opened to the public upon completion of ex parte examination, there was some sense in giving opponents 3 months to decide whether or not to oppose, 3 months to file pleadings, and additional time to file written evidence.  Not so anymore, with the examination file being open to the public 18 months after the priority date, or, more commonly, shortly after national phase entry.  (The vast majority of patent applications filed in Israel are PCT national phase entries, and I assume that most of the oppositions are filed against national phase applications; I’ve no doubt the ILPTO has statistics on that.) 

Today, interested parties can follow the examination for its duration.  This means they can be ready not only with detailed pleadings, but with written evidence, very soon after the application has published.  Under these circumstances, there is no reason to permit the submission of pro forma pleadings.  At a minimum, opponents should be required to present their detailed pleadings, including complete lists of prior publications upon which they will be relying, at the time the pleadings are due.  Frankly, I think they should be required to provide their evidence as well.  Perhaps, instead of a three-month window to oppose, a 6-month window could be put in place, concomitantly with the requirement that opponents file their detailed pleadings and evidence.  Note that this is similar to the existing rules governing cancellation actions (הליכי ביטול), in which the party seeking cancellation of a patent files pleadings at evidence at the same time.

Additionally, opponents should not be allowed to subsequently introduce or rely on publications or evidence that they could or should have known about at the time they filed their pleadings and evidence; when motioning to introduce new evidence, the opponent should need to show the rasham that the documents that the opponent seeks to introduce could not have been known to the opponent at the time it filed its pleadings and evidence.

The flip side of this, of course, is that the applicant would be required to file its response to the pleadings and evidence in a complete form within a similar, limited amount of time.

2. Require identification of the real party in interest, and introduce estoppel provisions

Currently, any party may oppose a patent application.  Moreover, if that party loses the opposition, and the patent is granted, there is nothing in the statute to prevent that party from raising the same arguments as invalidity contentions in litigation, should that party be sued for infringement by the patentee.  I don’t know if this has ever happened, and if it were to happen, there’s a chance the judge would agree with the patentee that the defendant is estopped from raising the same arguments after having lost at the PTO.  But the fact is that it’s not in the statute.  That’s unfortunate, because the risk of estoppel, when coupled with the requirement to submit complete pleadings and evidence at an early stage, would be one way to reduce the filing of frivolous oppositions. 

Moreover, estoppel normally doesn’t apply to ostensibly unrelated parties that were not part of the prior proceeding – in this case, that were not part of the opposition. 

What would be helpful, therefore, is to require identification of what in US law is called the real party in interest that is opposing the grant of the patent, and to statutorily introduce an estoppel against that party and any parties in privity with that party from raising in later court proceeding any arguments against the validity of the patent that could have been made (not just which were made, but could have been made) in the opposition proceeding.

3. Make it easier to reject oppositions out-of-hand (על הסף)

Opponents should be required to meet a minimum threshold, showing that the case they present goes beyond what was considered by the PTO during ex parte examination.  If an opponent merely cites publications that, taken together, teach no more than the publications considered by the examiner during ex parte examination, then there’s no reason to proceed with the opposition.  In such cases, the applicant should be able to have the opposition summarily dismissed.  The rasham has traditionally been reluctant to use סילוק על הסף as means of disposing of cases before him; perhaps the statute should be amended to make it clear that this is an acceptable remedy when the opponent’s contentions amount to the same contentions considered by the examiner.  This will also cause opponents to carefully consider the arguments to be made in an opposition.

4. Cap or eliminate cost awards

This is discussed in more detail below, but is mentioned here because this step would also reduce the likelihood of frivolous oppositions.

5. Increase the fee for filing oppositions

The usefulness of this step would seem to be self-evident, although if the changes outlined above are adopted, it might not be necessary.

B. Adopt an EPO-like procedure with respect to amendments

I once heard the late Eli Hurwitz say that there’s no patent that can’t be gotten around.  It’s a well-taken point: no matter how worthy of patent protection an invention may be, it’s much more difficult to draft a good patent application than it is to invalidate a patent or oppose its grant.  Moreover, the statute does not impose upon patent applicants a duty to search the prior art themselves before drafting their patent applications; rather, it assigns to the ILPTO the duty to determine the allowability of each of the claims of the patent application.  It’s therefore not surprising that adverse parties will sometimes raise points that were not taken into consideration during ex parte examination. 

In view of this asymmetry, if the application discloses something patentable but the claims do not define that something patentable sufficiently well, the applicant should be given the opportunity to amend its claims to a form in which the claims do define the invention so as to meet the requirements of the statute. 

The present legal framework seeks to allow this, but is deficient in that it treats such amendments as separate proceedings in and of themselves.  Moreover, while it correctly allows applicants to make such amendments as of right, if applicants find themselves having made one set of amendments, then find those amendments opposed by the opponent in the substantive opposition to the grant of the patent, the applicant may need to do another round of amendments.  This obviously slows resolution of the opposition.

A more efficient route would be to adopt the type of approach taken by the EPO: after the parties have presented their arguments and evidence, when it comes time for the oral portion of the proceedings the applicant should be able to present a reasonable number of sets of claims, in its order of preference.  Each set can then be considered by the PTO, with the opponent able to raise its objections, so that if there’s a set of claims that’s acceptable to the applicant and meets the statutory requirements, that fact will be discovered quickly.

C. Treat oppositions as private litigation

An irritating aspect of oppositions is that although they are designed as adversarial proceedings, the ILPTO often views its role as that of an inquisitor, whose job is to protect some amorphous, unidentified “public” from an invalid claims in patents.  That view, which is biased against patent applicants, evinces a misunderstanding of the ILPTO’s role.  The ILPTO’s role is to examine patent applications, to refuse to allow claims that are not new or are obvious over prior publications, or are insufficiently supported by the specification – i.e. that don’t meet the requirements of sections 4, 5, 12 and 13 of the statute – and to allow claims that do meet those requirements.  That’s how innovation is encouraged. 

To the extent that pre-grant opposition is viewed as an extension of patent prosecution, the scales should not be tipped against applicants whose applications happen to have been opposed by third parties, as is presently the case, with the ILPTO assuming a quasi-inquisitorial stance.  Rather, the opposition should be treated as private litigation.  If the opponent has not raised an argument, then it’s not for the patent office to raise that argument for the opponent.  Similarly, if the parties submit a mutually-agreed upon request to an extension for one of the sides to file some paper, this should be granted by the rasham.

D. Eliminate failure to cite prior publications as a ground for oppositions

The statute rightly imposes on applicants a duty to assist the PTO by informing the PTO of publications cited against corresponding applications elsewhere or that are otherwise known to the applicant to be relevant.  However, failure to cite a reference should not per se be grounds for invalidating a patent; such failure should only matter when (a) but for (אלמלא) the omission, the examiner would not have allowed the claims in the form in which they were allowed, and (b) the omission was deliberate, with an intent to deceive the PTO.  While the PTO can readily determine (a), it is in a poor position to determine (b), a task more suited to the courts.  Consequently, failure to comply with section 18 should be removed as a grounds for opposition.  

E. Cap or eliminate cost awards

In the last several years the PTO has gone absolutely berserk in its awards of costs to the prevailing party in inter partes proceedings, granting awards that are far beyond what a party could obtain from a judge in a regular court proceeding.  Applicants for patents should not be punished for unsuccessfully seeking patent protection, and opponents should not enjoy a windfall for convincing the rasham to sustain an opposition; in most instances, if an opponent is successful, the opposition has paved the way to commercial success that will far exceed what it spent on the opposition. 

Since the PTO seems to be unable to restrain its predilection for cost awards out of proportion to cost awards in litigation before the courts, it’s time to statutorily reign in such costs.  Or to do away with them altogether, since for most opponents the cost of the opposition is merely part of the cost of doing business – many of the same parties that regularly file oppositions today were filing them regularly 20 years ago as well, before the PTO starting enriching those parties for having filed those oppositions, which means in the past they really did view it as part of the cost of doing business.  Granting windfalls in the form of cost awards distorts the system.

I’d be happy to discuss these matters, and other points related to oppositions, with you or members of the MOJ staff.

Dan Feigelson

November 15, 2016

Incorrect Mailing Date on Correspondence from Israel PTO

I recently encountered a bug in the Israel PTO’s system for sending notices to applicants and practitioners. 

Once upon a time, the Israel PTO sent practitioners paper copies of correspondence. That’s mostly gone by the wayside (patent certificates are the notable exception that still sent by snail mail).  But the question is, what’s the date from which deadlines are calculated – the date on which the ILPTO puts the notice in the hopper, or the date on which it’s actually sent?

Normally there’s no difference – an office action, for example, is sent by email on the same date that the examiner puts it into the system to be sent.  So a copy goes to the practitioner on that date, and a copy is uploaded to the public database as well, showing the same date.  The copy of the OA received by the practitioner, which is attached to the email as a pdf file, is automatically given a file name that includes the application number and the date on which the file was sent to the applicant, as well as some other information that means something to the patent office but not to the rest of us.

But what happens when there’s a delay between when the examiner loads the office action into the system, and when the OA is actually sent? 

It turns out that if an examiner loads an OA into the system on, say, Wednesday evening, and the OA isn’t sent by email until Thursday morning, the pdf file sent to the practitioner shows the Thursday date, but the database records the OA as having been sent on Wednesday.  Obviously, this has implications for how the system calculates deadlines: if the official deadline falls on a Friday, when the ILPTO is closed, the deadline for response is automatically pushed off until Sunday, whereas if the deadline falls on a Thursday, then that’s the deadline.

Legally, of course, it’s the date that the notice was actually sent, not the date it was uploaded to sent, that’s controlling, but if you’re in a situation where the full response period, and not a one-day foreshortened period, is needed, then you’ve got two choices: file on the actual deadline date – the one that the ILPTO’s system says is on the first day of the extension period – pay for the extension, and then request a refund with an explanation why the response wasn’t late; or don’t pay the extension fee, hope the system records the response as being filed and puts it on the examiner’s docket, and if you eventually get a notice that an extension fee is due, call or write the ILPTO to fix the issue. 

I discovered this recently when preparing an OA response: based on the mailing date of the email and the date in the filename of the pdf file of the OA, I had informed the client that the deadline was on date X.  While preparing the response, I discovered that the database listed the deadline as X-1.  In my case it didn’t matter, as the client had provided instructions ahead of date X-1, but I nevertheless called this to the attention of the senior person at the ILPTO responsible for the system.  To that person’s credit, the person looked into the matter and I got response later that day.  The response itself, however, wasn’t wholly satisfying; here’s my translation from Hebrew:

“The matter was investigated. In accordance with the logic set [i.e. programmed - DJF] in the system, the system sends the letter [by email] within several minutes of its creation.  From the investigation that was carried out, the phenomenon of a delay of several hours between creation of the document and its being sent by email is exceedingly rare. We will take into account the extra day required because receipt of the notice with several hours’ delay.”

In other words, they’re not going to fix the system, so it’s on us practitioners to check the dates on these things.  It’s worth noting that files don’t appear in the database until after the nightly update, and sometimes not for several days after being sent, so now there’s another thing to docket to check for: make sure the date in the database matches the date on the pdf file.  Thanks, ILPTO.

Of course, as a colleague noted, getting an OA by email one day later than one should have received it is still an improvement over waiting for letters to arrive by snail mail.

A Good Explanation of the Problem with "Progressive" Views of Big Pharma

James Meigs has a piece in the newest edition of Commentary entitled "Thank God For Big Pharma".  It doesn't say anything that's not already familiar to people involved in the pharmaceutical development process, but it's still a good read.  My only criticism: he doesn't mention Bayh-Dole, but he does discuss what would happen if the private sector were taken out of the drug development process, which is what some politicians seem to be angling for (by depriving drug companies of profits).  As I've said more than once before, I'd rather someone make huge profits and there be new drugs (or in the past year, new coronavirus vaccines) than no one make huge profits and there be no new drugs; and I'm glad there's a generic drug industry to make sure that, in nearly all cases, those drugs eventually become generic, at which point their prices drop precipitously. Together those two things drive new drug development.