America-Israel Patent Law

Israel Ben & Jerry’s Licensee Beats the BDS BS

I wrote last year about the decision by Ben & Jerry’s not to renew its license agreement with Avi Zinger’s company, American Quality Products, when that license expires at the end of 2022. AQP manufactures Ben & Jerry’s ice cream in Israel, and sells it all over the country.  B&J tried to impose as a condition of license renewal an agreement from AQP to no longer sell the ice cream in Judea, Samaria and the eastern part of Jerusalem. Such a condition is illegal under Israel law, and Zinger refused to agree.

B&J’s demand was part of the so-called “boycott, divestment and sanctions” movement, which ostensibly seeks to get Israel to “leave” what it illogically terms “occupied Palestinian territories” (the illogic being that there never was a state of Palestine and thus the land in question can’t be “occupied” by a foreign power), but which actually wants to see Israel wiped off the map. 

The announcement about the non-renewal of the license came about because, although Ben & Jerry’s was bought by Unilever over 20 years ago, part of the deal was that B&J could still have its own governing board that determined its “social mission”, and that board seems to be composed of people who think as clearly as Bernie Sanders, Alexandra Occasional Cortex, and other luminaries of the American political scene.

Earlier this year, Zinger and AQP, represented by Alyza Lewin of the Brandeis Center and Marc Zell of Jerusalem (among others), filed suit against both Unilever and Ben & Jerry’s in Federal District Court in New Jersey, alleging that the conditioning of the license renewal on capitulation to BDS terms violated both US and Israel law, the Israel government’s consent decree for the Unilever-B&J merger, and the license agreement with AQP. 

Yesterday, it was announced that Unilever, which retained responsibility for financial and operational decisions regarding Ben & Jerry’s, had decided to exercise its prerogative and act like the adult in the room – or at least look after its own financial interests, which had been hurt by reaction to the boycott announcement.  The press releases state that Unilever settled the NJ litigation by agreeing to sell its interest in Ben & Jerry’s in Israel to Zinger, thus allowing AQP to continue to sell Ben & Jerry’s ice cream all over Israel – including Judea and Samaria – with Hebrew and Arabic labeling, in perpetuity.  (Unilever press release; Brandeis Center press release).

As an IP practitioner, it was this last statement that intrigued me, because it seems to implicate trademark law, and it implies that the agreement precludes AQP from selling Ben & Jerry’s in Israel with English labeling.  So I wondered how this aspect of the deal might be structured.

There are presently ten active registered Ben & Jerry’s trademarks in Israel (i.e. that contain the words "Ben & Jerry's"), in Hebrew and English, that cover Ben & Jerry’s products, ice cream sales services, and clothing bearing the Ben & Jerry’s logo.  Ownership of all of these marks was transferred to Unilever in early 2021 – several months before B&J announced its refusal to renew AQP’s license agreement.

At their heart, trademark rights, like all IP rights, are negative rights – they don’t give the owner of the mark the ability to prevent others from using the mark, but rather give the mark owner the power to prevent others from using the mark without permission.  But also central to trademark rights is the use of the mark: failure to use a registered mark over a prolonged period can be the basis for a cancellation action to get the mark off the register.  (This is in contrast to patents, where, in most jurisdictions, the patentee need not make, use or sell the patented invention as a condition for keeping the patent in force.) 

There are different ways that Zinger could have obtained the right to sell B&J in Israel in perpetuity, with Hebrew and Arabic labelling. One way is for Unilever to transfer ownership of all the marks in Israel to Zinger, with a stipulation in the settlement agreement that the agreement is contingent upon Zinger not selling B&J ice cream with English labeling.  Or Unilever could transfer the ownership of the Hebrew marks only to Zinger, retaining ownership of the English marks.  These two arrangements are consistent with the statement that Unilever is selling its Ben & Jerry’s business in Israel to Zinger.  Another possibility is that Unilever could retain ownership of the marks, and license only the Hebrew marks to Zinger.  In view of Ben & Jerry’s own statement on Twitter that “Unilever's arrangement means Ben and Jerry's in Israel will be owned and operated by AQP. Our company will no longer profit from Ben & Jerry's in Israel”, such a license would presumably be a royalty-free license.

The problem with any of these scenarios is that it would mean the English marks aren’t being used, and could eventually be subject to cancellation, regardless of who owns them. A way around this would be for AQP to occasionally produce batches with English labeling, or for AQP or a third party (if Zinger/AQP is not the owner of the English language marks) to import and sell Ben & Jerry’s ice cream produced outside Israel with English labelling.  However, as noted above, such sales could not legally be subject to limitations on the place of sale, viz. the seller ice cream labelled in English could not deliberately sell only in pre-1967 Israel or agree to such a limitation on the geography of sales.

Another interesting observation is that although the press releases state that the labeling will be in Hebrew and Arabic, none of the marks presently registered in Israel are in Arabic. Presumably such marks will be registered in the near future.

But it’s not just Arabic language marks that aren’t registered in Israel.  While some of the names of ice cream flavors are registered, like Chunky Monkey and Cherry Garcia, others, like Chubby Hubby, are not.  And Phish Food is registered, in class 30 for ice cream, frozen yogurt and sorbet, but the registrant is Phish, Inc., not Unilever or Ben & Jerry’s. 

There’s also the matter of the individual ice cream recipes themselves: without those, any agreement is worthless.  Presumably the agreement also gives Zinger rights in those recipes in Israel, as well as the names of the flavors, but what about new flavors developed in the future?

Regardless of the legal mechanics of the arrangement, by reaching an agreement with Unilever, Avi Zinger and his legal team, and the government of Israel, which was also involved in the negotiations, have given the BDS BS a big “KMA”.

Dilbert on Pharma Companies

Since May 30, the Dilbert comic strip has been running a thread about the Dilbert's employer transitioning to a big pharma company.  Patents have thus far been spared Scott Adams' cynical - and humorous - views of the drug approval and marketing process.

Initial Patent Renewal Fees at the Israel PTO: A Problem With An Easy Solution

Patent renewal (or maintenance) fees in Israel are due for five periods of time: for years 0-6, 7-10, 11-14, 15-18, and 19-20 of a patent’s lifetime.  Normally, the fee for the next period is due by the appropriate anniversary of the filing date, viz. at years 6, 10, 14 and 18 from filing, and is payable from three months before the deadline until as many as six months afterward (with the payment of the appropriate extension fee).  (There is also an option to pay all 20 years up front.)  However, the fee for years 0-6, and for any additional renewal fees that accrued during patent prosecution, is not due while the patent application is pending, but rather is due within three months of the grant of the patent, with this deadline also being extendible by up to six months.  Failure to pay the fee results in lapse of the patent; when that happens, the patentee can petition for reinstatement of the patent.

The patent statute itself has little to say about renewal fees: §56 says that in order for a patent to remain in force, payment of such fees must be made “as has been established [in the regulations]”, and §57 establishes the six-month grace period for late payment of renewal fees.  The heavy lifting with regard to renewal fees falls to the Regulations, specifically to regulations 85-88 and paragraph 12 of the second addendum to the regulations, which set forth inter alia the aforesaid five periods for payment of renewal fees and the amount for each renewal fee. 

Regulation 86 explicitly states that “The Registrar shall send a notice to the patentee regarding every period for which he must pay a renewal fee, not later than three months prior to said period.”  Although the ILPTO has for years maintained that this statement is merely exhortative rather than compulsory (an issue beyond the scope of the present blog post), it nevertheless is usually good about sending out such reminders, usually by email to the attorney of record.  Additionally, because the deadlines for payment of most of the renewal fees are predictable (as noted, on certain anniversaries of the patent filing date), it’s easy to program these into a docketing system.

There’s one situation, however, in which the Israel PTO consistently fails to adequately inform patentees of the renewal fee, and that’s for the first renewal fee (or renewal fees, if the patent is granted more than 6 years after filing), which is due 3 months after grant.  Rather than send the patentee (or attorney of record) a notice by email, the ILPTO sends the notice by snail mail.  As I’ve blogged about before, Israel Post is bad, and has been really bad for at least 15 years.  If anyone in the private sector wants to get a letter to someone in Israel, he sends it via private courier, or alternatively via registered mail with the Israel Post, so that when it isn’t delivered to its intended recipient, the sender at least has a record of such.  No one in Israel who wants to be sure a document gets into the hands of the person who’s supposed to get it, let alone that the person receives it in a timely fashion, sends such a document by regular post.

And yet, that’s exactly what the Israel PTO does with its notices about the first renewal fee. 

To make matters worse, that notice is usually printed on the back of the Patent Certificate, which the ILPTO also sends by regular Israel Post.  Inasmuch as the electronic file is now the official record, and the patent certificate appears in the file (usually a few days after the patent is granted), there’s no need to send the physical certificate. But the Israel PTO does, with the reminder about the first renewal fee printed on the back.  Which means that (a) many patentees never receive the notice (since the certificate that appears in the electronic file does not contain the renewal fee reminder on the back), and (b) many patentees who do receive the notice don’t pay attention to it, because it’s printed on the back of the patent certificate.

I suspect that most patent firms in Israel don’t wait for the patent certificate to show up, but instead (a) docket to see that no opposition to the grant of the patent was filed by the deadline to file oppositions, and if no opposition was filed (b) docket to pay the first renewal fee within three months of grant (which occurs automatically upon expiration of the opposition period).  But not everyone is represented by counsel, and sometime inventors try to save money by taking it upon themselves to handle administrative matters.

Given the foregoing, it should come as no surprise that of the petitions to revive patents that lapsed for failure to pay renewal fees, roughly half pertain to lapses that occurred for failure to pay the first renewal fee.  And seeing as how the Israel PTO allocates personnel and office resources to handle such petitions (including to render decisions on the petitions), and how the preparation of such petitions likewise consumes significantly more time and effort than does the paying of the initial renewal fee on time, it would benefit everyone if the Israel PTO would start sending out email notices, reminding the patentee of any renewal fees that are due within three months of grant of the patent.  

This shouldn’t be difficult to do: the Israel PTO already sends the attorney of record an email notice when the patent is granted, which currently reads, “You are informed that the [patent] application has matured into a patent and the Office’s records have been updated accordingly.  The patent certificate will be generated and uploaded to the Office’s web site in the next few days.”  It would take minimal effort to add a sentence to that letter that says, “In accordance with Regulation 86, you are reminded that the first renewal fee is due three months from the date of grant of the patent.”  Such a reminder would likely reduce the number of patents that lapse for non-payment of the first renewal fee(s).

While we’re on the subject of lapsed patents, it is interesting – and inexplicable – that the ILPTO sends the attorney of record a notice when a patent application lapses for failure to respond to a communication from the ILPTO, but that it does not do so when a patent lapses for failure to pay a renewal fee.  Notice of lapse of a patent is only published in the Patents Journal.  I do not make a practice to scour the list of lapsed patents – and the list is published only as numbers of the lapsed patents, without any other identifying information – to see if any of my clients’ patents have lapsed.  Because of this, it’s not uncommon for a patentee to discover the failure to pay a renewal fee when he goes to pay the next renewal fee (due to a notice in his or his attorney’s docketing system, not because of a notice from the ILPTO, since the ILPTO doesn’t send renewal fee reminders for lapsed patents).  It would be helpful for the ILPTO to program its systems to send out notices when patents lapse for non-payment of renewal fees, and not simply publish a list of numbers of lapsed patents.

On the (In)security of Digital Records: Israel PTO Changes Title of Patent Application Without Informing Applicant

In the mid-1990’s, as the internet was becoming ubiquitous, there was talk about moving to a paperless office. Nearly 30 years later, many businesses are paperless. The patent offices of both the USA and Israel, the two jurisdictions in which I represent clients, are not completely paperless, but they’re close.  In both cases, the official record of a patent application is maintained in digital form only. 

This places a particular obligation on these patent offices to maintain the electronic records in good order.  Which is why it’s exasperating to see those records handled as cavalierly as they are.

In the US, when submitting documents electronically, the filer must provide not only the document but a description of the document as well.  Yet it’s well-known among practitioners that the USPTO often changes the document description as provided by the filer.  In some cases that may to the benefit of the applicant/patentee, but in others it can have significant repercussions, for example if a document is misclassified by the USPTO and as a result either isn’t considered by an examiner, or, worse, causes the system to think that a particular response wasn’t filed on time, resulting in a notice of abandonment of the application.  If the filer has kept the electronic filing acknowledgement and all the electronic documents as they were filed, it should be possible to rectify the error, although often at a cost to the applicant/patentee.

Even more egregious is the changing of the electronic record, without evidence of when the change was made – or that a change was made at all. I have blogged previously about documents disappearing from or appearing in the electronic record of an Israel patent application.  This week I came across something else: a case in which the Israel PTO changed the Hebrew title of a patent application without giving notice of such.  But first a little background:

Patent applications in Israel, as in the USA, must have a title. In the USA, examiners rarely pay attention to the title (in 20+ years of practice, I have yet to see a US examiner say something the title of an application), but in Israel, examiners are instructed to make sure the title is appropriate for the claims.  Thus it sometimes happens that after the claims are found to be allowable, the examiner will ask for a new title, which the applicant then provides; sometimes the examiner will even suggest a new title. 

Less commonly, the English title is considered acceptable, but the Hebrew title is not.  (Although patent applications in Israel can be filed in English, applicants must provide a Hebrew title, and sometimes the translation from English isn’t as good as it could be.) And when that happens, the examiner asks the applicant to provide a better Hebrew title.

In the case I saw this week, the applicant had provided a Hebrew title that wasn’t sufficiently descriptive of the invention. That title appears on the application filing receipt. But the Hebrew title listed in the ILPTO database is different. And there’s nothing in the file history showing that the examiner asked for a new title, or that the applicant provided one, or even when the change in the title was made.  So it’s possible that the Israel PTO sua sponte changed the title.

In this particular instance, I doubt that the title provided by the ILPTO will make a difference in anything. But the facts that the electronic record doesn’t reflect when the title was changed, and that the Israel PTO may have made this change of its own volition, without consulting the applicant – that’s a big deal. Because it means that the PTO may be changing other records without informing applicants/patentees.

A Nice Way To Start The Day

It's always nice to open up PAIR and see this:

Would be nicer if the appeal hadn't been necessary in the first place. And if the examiner got dinged (or had to reimburse the applicant) for this - it's not the first time this applicant has had to appeal with this examiner.

Still, the good guys won, which is not a given, so we're thankful for that.

Filing PCT Applications at the Israel PTO: Bye-Bye, PCT-SAFE, Hello ePCT (But Then Why File at RO/IL?)

Today the Israel PTO posted a notice that as of June 1, WIPO will no longer support the PCT-SAFE software that people need to use to file at the Israel PTO acting as PCT receiving office (RO/IL), and that henceforth they will need to prepare their application as a zip file using WIPO's ePCT portal.  The notice mentions many of the advantages of using ePCT with which regular ePCT users are familiar, such as the many checks that ePCT does before one files. (Carl Oppedahl has blogged extensively about these advantages.)

But if one already needs to set up an ePCT account, and log into ePCT to prepare a zip file, why file at RO/IL?  Why not just file at RO/IB instead?  That way, one's filing is immediately visible in ePCT.  And for most of the year, one gets an extra hour to file (due to the time zone difference between Jerusalem and Geneva). Plus, you only need to log into one account, not two.

I can think of three reasons to bother preparing a zip file using ePCT, then switching to the Israel PTO site to file the PCT: (a) the technology is such that the PCT application must first be filed in Israel; (b) for ideological reasons, one prefers paying the Israel PTO rather than the IB to serve as receiving office; (c) for practical reasons, one would rather pay the Israel PTO in shekels than pay WIPO in a foreign currency. 

It will be interesting to see the use of RO/IL changes as a result of the discontinuation of PCT-SAFE.  As this change will no doubt affect other ROs as well, I'm guessing that the use of RO/IB will increase following the change.

Babylon Bee Channels Myriad Decision

The Babylon Bee is a Christian online publication that publishes satire on a wide variety of topics. In response to yesterday's confirmation of Ketanji Brown Jackson to SCOTUS, it ran a piece under the headline "In Historic Moment, Senate Confirms First-Ever Non-Biologist To Supreme Court", a reference to Jackson's statement during her confirmation hearings that, not being a biologist, she was unable to define what a woman is (despite one of her qualifications for nomination having been the fact that she's a dark-skinned woman).

Clearly, the Bee's editors were unaware of Justice Scalia's concurrence in the abomination known as Association for Molecular Pathology v Myriad Genetics, in which he admitted he is not a biologist (and implicitly showed he knew nothing of organic chemistry or biochemistry either):

"I join the judgment of the Court, and all of its opinion except Part I–A and some portions of the rest of the opinion going into fine details of molecular biology. I am unable to affirm those details on my own knowledge or even my own belief. It suffices for me to affirm, having studied the opinions below and the expert briefs presented here, that the portion of DNA isolated from its natural state sought to be patented is identical to that portion of the DNA in its natural state; and that complementary DNA (cDNA) is a synthetic creation not normally present in nature." 

Regardless, we're looking forward to more brilliant, reality-defying decisions from SCOTUS in the area of patent law once Justice Breyer is out and Justice Jackson is in.

BTW, the best line in the Bee's story is actually the one about Kamala Harris, to which the Courts' decisions in Bilski and Alice are more germane than are Myriad and Mayo.

Two Jewish Inventors (And a Tale of How An Improvement Can be the Real Enabling Technology and a Money Maker)

There was a story this week in Tablet about Emile Berliner, who in 1870 emigrated to the USA at age 19 to avoid being drafted to fight in the Franco-Prussian war.  Over his first few years in the USA, he worked a number of different jobs, but his true interest was in sound reproduction. While Alexander Graham Bell received the initial patent on the telephone, Bell’s phone was not commercially practical.  As explained in the Tablet article, in the original Bell telephone,

“Speech was not all that discernible due to the weak electrical current that the magneto-electric induction force of Bell’s proto-microphone transmitted across conductive wires; over any significant distance, the metal diaphragm in the receiver which reproduced the sound would barely vibrate, turning what was once a joyous shout into a muted murmur.” 

Hence,

“Berliner worked tirelessly for months to come up with a feasible solution which would render the telephone viable. His breakthrough came inadvertently after a friend, who worked as a telegraph operator, explained that the signal of a message varied with the pressure applied to the contact switch. Using this principle of increased pressure, Berliner eventually created a working prototype for both the loose-contact transmitter (the first working microphone), as well as for a transformer (which prevented electrical signals from fading over long distances).” 

He applied for a patent in 1877, and by the end of the year the Bell Telephone Company bought his patent rights for $50,000, equivalent to about $1.3 million today.  Thus, from a technological standpoint, it was Berliner’s improvement that enabled the success of Bell Telephone. (This is one of Berliner's patents, though I think it's a follow-on to his earlier microphone patent: Download US0241912 berliner).

Berliner wasn’t done, though.  What he is best remembered for is the invention of the gramophone. Although he preceded by both Thomas Edison and by Bell in the invention of sound recordings (Edison with his phonograph using a vertical tinfoil cylinder, Bell with his “graphophone” that used a vertical wax cylinder), the quality of the sound was poor, the duration of the recordings was limited, and the recording on the cylinders could not be reproduced. Berliner recorded instead on a horizontal disk, which used gravity to advantage (rather than needing to resist it) as the stylus cut into the recording medium.  Instead of using a recording medium of pure wax, which could be difficult to cut, he found that mixing beeswax with alcohol resulted in a softer, easier-to-score material, which he applied on top of a zinc disk. And by pouring acid into the areas the stylus had cut, he was able to etch grooves into the zinc disk below. By creating positive inverse from this disk, the positive could serve as a template against which copies could be made (in his case, from rubber or shellac).  Hence was born not only the gramophone but the sound recording industry.  It is in honor of Berliner’s invention that the Grammy Awards are named.

Then there was the obituary in the New York Times of Martin Pope, a professor emeritus at NYU who died this week at age 103.  He was born Isidore Poppick to Jewish immigrants from Ukraine.  He earned a degree in chemistry from CCNY in 1939, and after serving in the Pacific in WWII, returned to New York where he got a job working at Balco Research Laboratory.  As reported in the NYT obituary,

“In 1938, as an undergraduate at the City College of New York studying physical chemistry, the 20-year-old Isidore Poppick published a research paper in the prestigious Journal of the American Chemical Society.

“After serving as a first lieutenant in the Army Air Forces in World War II, he sought employment. Aware of an undercurrent of antisemitism, Dr. Pope applied in 1946 for a position at the American Cyanamid Company using two names: Isidore Poppick, with the published paper listed on his résumé, and Martin Pope, with no such record.

““Martin Pope received an application, and Isidore Poppick received a notice that no positions were available,” Dr. Pope said. “I decided to use Martin Pope as my new name.””

He eventually earned a PhD from Brooklyn Polytechnic Institute, and began his career at NYU in 1956. Pope also received several patents. Download US2727731 pope

Avi Zinger Strikes Back: More on the Ben & Jerry's Boycott Israel Saga

This post isn't really patent or even IP related.  Last year I wrote about how Ben & Jerry's announced it wouldn't renew its Israeli licensee's contract because the latter refused to stop selling ice cream in Judea and Samaria, and how from an IP practitioner's standpoint this presented several interesting possibilities, like selling ice cream under the name "Jen & Barry's", registering that mark, and eventually seeking cancellation of the Ben & Jerry's mark in Judea and Samaria for non-use (if cancellation of the mark only in those areas is possible under Israel law; I'm not sure it is).  

One point I missed at the time was that any contract that would require a licensee to refuse to sell in Judea and Samaria would be void and/or unenforceable, as such a contract violates Israeli law. Which means either the ice cream is sold throughout Israel, including Judea and Samaria, or it's not sold at all.  And if the latter, that's the basis for a trademark cancellation action.

Earlier this month, the Israeli licensee, Avi Zinger, struck back: he filed suit in Federal District Court in New Jersey seeking an injunction against the termination of the license, inter alia on the grounds that the basis for the termination violates both US and Israel law, and constitutes a breach of his existing contract.  You can read the complaint here.

Today Mr. Zinger published a piece on substack, explaining why he took the action he did.  He notes how much he has done for coexistence, and how the so-called boycott, divest and sanctions movement (BDS) is directed not against Israeli sovereignty in Judea and Samaria but the existence of Israel, period (as evinced by B&J's refusal to consider giving distribution rights in Judea and Samaria to local Arabs - B&J's doesn't want ANY of its product sold in those areas, not to Jews, not to Arabs).

I hope Mr. Zinger prevails, for many reasons, but among them is the selfish reason that B&J in Israel recently produced a run of mint cookie ice cream, which is a personal favorite of mine.  This the first time I can recall that in over 30 years of living here, there has been locally produced mint ice cream.

Suspension of Prosection: When A Patent Office Deliberately "Mails" A Letter With a Wrong Date

I'm prosecuting a case before the Israel PTO in which we requested suspension of examination.  Under current ILPTO practice, when an applicant requests suspension of examination¹, the ILPTO sends the applicant a letter shortly before the application is due to be examined, giving the applicant a period to time in which to pay a fee for suspension.²  After payment of the fee, the ILPTO normally sends a letter by email, telling the applicant that prosecution is suspended until date X.  When date X approaches, the applicant can request an additional suspension if warranted.

In the case in question, we paid the fee for suspension last year, but the ILPTO never sent that "the suspension is in effect until date X" letter - if it had, even if we hadn't received the letter by email or snail mail, a copy of the letter would appear in the online file history in the database, and no such copy of the letter appears in the file history.  The non-sending of the letter, and its absence from the online file history, didn't particularly bother me because in the ILPTO database the status of the case is listed as "examination suspended" (see photo below).

 

 

Nevertheless, today, in correspondence with someone at the ILPTO, I pointed out that no "your suspension expires on date X" letter was ever sent.  And presto, within a few hours I received such a letter by email. 

But there's a glitch: the letter bears the date last year on which we paid the fee for suspension, implying that the letter was actually sent last year, when of course it wasn't.  In fact, every letter generated by the ILPTO and sent to a practitioner by email includes a code in the name of the pdf file, indicating the date and time on which the system generated the letter.  This name of this particular file includes the date "03_03_2022" and the time "34129 PM". 

As mentioned above, as of this writing, the letter hasn't been posted to the database: the last entry in the database is my cover letter from last year informing the ILPTO that we were paying the fee for suspension. But the database is updated overnight.  I'll be checking in the morning to see if this antedated letter is posted to the database, and if so, what's listed as the date of posting - 2022, or 2021.  Stayed tuned.

¹The ILPTO currently only allows an applicant to request suspension in a particular window of time prior to the commencement of substantive examination.

²You can read here about why the requirement for payment is ultra vires.