America-Israel Patent Law

Israel PTO Fixes Glitch in Issue Notification (Follow-Up to Noah At the ILPTO)

Yesterday I wrote about an issue notification from the Israel PTO that didn't state when notice that the patent application had been accepted would be published in the Patents Journal. 

Subsequently, I contacted the head examiner at the Israel PTO to point out the problem, and made two additional suggestions: that they include a sentence reminding the applicant that a divisional application cannot be filed after acceptance of the application, a reminder not so important for licensed practitioners but possibly important for pro se applicants (h/t to Dan Swirsky); and that they list a contact person.  And voila!  Within a few hours I received a new letter, giving the publication date, as well as a new sentence regarding the deadline for filing a divisional application, and the name, telephone number and email of the contact person. 

So as they say in Hebrew, כל הכבוד to the ILPTO for addressing this in an expeditious manner.

Bill Cosby's Noah At the Israel PTO

Those of us old enough to remember Bill Cosby before he fell from grace will recall his famous bit about Noah. It actually appeared on an LP as three separate sketches, the second of which was "Noah and the Neighbor". Noah's neighbor complains to Noah about the ark-under-construction blocking the neighbor's driveway, and eventually the neighbor asks, "Why do you need to build this ark anyway?"  To which Noah replies, "I can't tell you, haaaa haaaa haaaa haaaa haaaa haaaa".

Last week I paid the "acceptance fee" (the equivalent of the USPTO issue fee) for an allowed Israel patent application. This morning I received the equivalent of a US "issue notification", namely a letter telling me when the application will be published in the Patents Journal for opposition purposes, which is what constitutes "acceptance" of the application.  A picture of the letter appears at the right.

For those who don't read Hebrew, I'll translate the relevant part:

"The date of acceptance of the application is

"The notice of acceptance of the application per section 26 of the statute will be published in the Patents Journal which will be available on the Patent Office web site on ."

Thank you Noah!

My working assumption is that when they switched from publication of the Patents on the last working day of the month to the first working day of the month, someone was supposed to reprogram the software that generates these letters, but screwed up.

While this seems funny, there's actually a serious side to the story: if an applicant wants to file a divisional application, he must do so BEFORE publication of the parent case in the Patents Journal.  So knowing the date of future publication can be important.  Especially since there's no case law in Israel akin to Immersion Corp. v HTC like there is in the USA: if you wake up one morning and find your application published in the Israel Patents Journal, the Israel PTO's e-filing system won't let you file a new divisional, and you'll need to go to court and hope that the court rules that a divisional can be filed on the same day that the parent case published under section 26.

I also like the fact that the letter is signed by "The Patent Office" (or more accurately, "The Patents Authority"), without any particularly individual's name on the bottom to contact about the fact that the letter is wholly uninformative.

 

Why Can't I File a Section 17(c) Request In This Application?

In my previous post I mentioned the lack of sufficient technical support for the Israel PTO's electronic filing system.  Case in point, a new one for me: the system won't let me file a request under section 17(c) of the statute, the section that says an application can be allowed on the basis of a corresponding patent in certain jurisdictions if each claim of the Israel patent is identical to one of the claims of the foreign patent.  But there's no apparent reason why this should be so in this case.

In greater detail: early this morning, before ILPTO opening hours, I responded to an office action, by relating to the prior art rejections raised by the examiner. In the response I also asked that the application be accepted under section 17(c) of the statute, since the claims are identical to those of a corresponding granted European patent. But the EFS is poorly designed in this regard.  When filing by Israel EFS, first one has to choose from a finite list the type of filing he wishes to submit (in this case, response to a form 26 office action), then one enters the relevant application number, then the system checks to make sure one is allowed to file such a response at this stage of the prosecution, and if the system says that such a response is permissible, then one is given a finite list of choices of types of documents to upload: response to OA, clean claims, marked claims, clean spec, marked spec, prior art documents, etc.  When making a 17(c) request, the applicant is supposed to provide the ILPTO with a copy of the foreign patent on which the request is based, but "corresponding foreign patent document" is not among the finite choices available when submitting a response to a form 26 office action.  Instead, what one has to do is upload the all the documents for the response, click on "create basket of documents to be file", and then start the whole operation again, this time choosing "17(c) request during substantive examination" (as opposed to "17(c) request during formal examination"), then entering the application number, then uploading the 17(c) request itself and the corresponding foreign patent, as well as the claims if the claims have not already been amended to correspond to the foreign patent claims.  Then one clicks "create basket", and then one submits the whole kit and kaboodle, two "baskets" at once for the same application. 

Except in my case, when I choose "17(c) request during substantive examination" and then enter the application number, the system says, "nyeah nyeah nyeah the system status doesn't allow you to file that now!"

So instead of uploading the foreign patent in the 17(c) request template, I went back to my original "basket", viz. the OA response, and uploaded it as a "citation".  I've no idea if the examiner will notice it, so I'll leave the examiner a voice message explaining the situation. 

Of course, why we should be required to upload the foreign patent at all is a bit of a mystery, seeing as how examiners routinely find and download foreign patents as prior art.

I'll also contact the new tech support person to explain the problem and find out why the system is screwy in this way.

When Is The Israel PTO Going to Provide Reliable Technical Assistance for Its Patent Electronic Filing System?

The Israel PTO’s patent electronic filing system went online in December 2015, and its use became mandatory for corporate applicants and legal representatives in June 2016.  It was a sub-optimal system at launch, and most of the shortcomings from 2015 remain in place today.

One such shortcoming was the lack of technical assistance.  Whereas the USPTO’s Electronic Business Center is open from 06:00-24:00 five days a week, and is staffed by multiple people, the Israel PTO has until now had exactly one person assigned to provide technical support. While she has been extremely helpful, if that person wasn’t available (e.g. if she was on vacation, or had just stepped out for coffee), you were out of luck.

And it goes without saying that that availability does not extend beyond normal working hours.  This of is of little help when one is facing a filing deadline after-hours as the clock approaches midnight. Which happens from time-to-time with non-Israeli applicants, most of whom are in time zones west of Israel.  

The Israel PTO announced today that the person who has been responsible for EFS technical support is moving back to full-time examiner duties, and that the responsibility for technical support is being transferred to the clerical staff.  This is potentially a slight improvement, in that theoretically there will be more people to field questions. But that assumes all of the clerical staff has been trained in the EFS. And even in such a best-case scenario, they don’t work late.

When, oh when, is the Israel PTO going to provide EFS technical support until midnight? Or alternatively, when will it drop the rule insisting on electronic filing?

Christmas Patents (Here's Looking at You, Hymie D)

In days of old when dinosaurs roamed the land and my brother still maintained his 12:01 Tuesday blog, he wrote once (I think) about the fact that for a long time, the USPTO has issued patents on Tuesdays, come rain, shine, or Christmas.  One such patent, 2775048, was issued in 1956 to our grandfather, Hymie D Berman.  This patent describes and claims a felt board and associated characters for display on the board.  If there are collectors of antiques out there, we have inherited some items similar to the one shown in the patent, although I'm not sure that the items are what was covered by this patent.

Hymie was granted several other US patents, including D166239, which covered his most recognizable creation, the Judy clock, which had a bright yellow face, red arms, a painted blue bezel and gears visible through a window so kids could see them turn as the hands were moved.  The Judy clock is still sold today (in a somewhat modified version).

Life Imitates...Life: USPTO Systems Down. Again.

[Note: this was originally posted at 11:40 local time. It's now 15:47 and it seems that some of the systems are back online. No explanation for the crash has been provided by the USPTO.]

On December 15, 1836, the US Patent Office was destroyed in a fire. (Hat tip Richard Schafer.)

On December 15, 2021, the US Patent Office's computer systems crashed. No e-filing of patents or trademarks, no checking databases, no access to electronic records. (But at least the page about McGruff the Crime Dog is still working!) The USPTO sent out an email warning people of the crash:

But if you click on the embedded link in the announcement to get more info, you'll find something extraordinary: during this outage, the USPTO is accepting patent and trademark correspondence, including new patent and trademark applications by email to PatentApp15DEC21@uspto.gov (for patents) or TrademarkApp15DEC21@uspto.gov (for trademarks).

This is extraordinary because presently, the USPTO is not authorized to accept such filing by email. This must be one serious mess for the USPTO to take this step.

This is not to say that everyone can avail himself of email filing. Before saying that one can file by email, the announcement includes a non-functional link to a web page that describes various filing options during a computer outage, and says that you only get to file by email if you can't use one of those alternatives. Those alternatives include fax, first class US mail with a certificate of mailing, and Priority Express Mail from the USPS. Is the USPTO going to demand proof that the filer couldn't avail himself of one of those methods of filing before he sent that email?  

[That webpage mentioning alternative filing methods also takes pains to point out that if you don't file electronically, you have to pay the $400 surcharge for non-electronic filing ($200 if you're a small entity).  I guess the USPTO isn't subject to legal doctrines like frustration of contract. Or as we might say in these parts, הרצחת וגם ירשת?. (Look up Elijah's reproof of Ahab for the context.) The last time there was a major outage of this sort, then-Director Andre Iancu had the decency to waive that fee post-facto, as discussed here. Let's hope that the current USPTO powers-that-be will be similarly reasonable this time around.]

Amazingly, just two days earlier, Carl Oppedahl blogged about this very problem, as the USPTO has just published a Federal Register notice in anticipation of an planned move of its back-up servers away from the same place where its regular servers are housed. Carl noted that there have been four serious outages of the USPTO's systems since 2014; the current outage constitutes the fifth such failure.

For those of us who regularly file things at the USPTO, this comes against the backdrop of the USPTO's insistence on migrating to a new system, which it calls PatentCenter, which it insists will have all the functionalities of public and private PAIR as well as EFS.  As explained in a letter drafted by Carl, signed by seventy four practitioners (including yours truly), and sent by Carl earlier today to Drew Hirshfeld, who is nominally in charge of things at the USPTO right now, so far PatentCenter is a disaster, and the USPTO has refused to listen to users who explain what's wrong with it.

As a colleague once noted, technology is great...when it works.

 

Butterfingers? Not This Time (Not Really Patent-Related)

In the first half of 2020, particularly around Passover, there were shortages of butter in Israel. Given the centralized production of milk in Israel, what is surprising isn't that there were butter shortages, but that there haven't been more in the 31 years I've been living here.

In response, the state lifted the import tariffs of 140-160% on imported butter. But that was a temporary measure: the tariffs are scheduled to come back into force on January 1, 2022. Rather than letting this opportunity to do some good slip through its fingers, the government (now led by Bennett, rather than Netanyahu, on whose watch the tariffs were originally removed) has now announced its intention to make the lifting of tariffs on butter permanent.  Good thing this is being done by order of a minister rather than by a vote in the Knesset, otherwise Likud would vote against it b/c the coalition is for it.

Maybe the state will next stop controlling ownership of beehives and production of honey.

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"