America-Israel Patent Law

From The Mouths of Babes (or, Does It Take One to Know One?)

In 2004 my wife and I decided to do a crazy thing: take off six weeks from work and take a long vacation in the USA with our kids.  OK, it wasn’t all fun and games – I did a fair amount of work on the trip – but we had plenty of vacation time, and in total drove about 4000 miles traversing much of the country and seeing all 5 Great Lakes.  

One of the interesting things for me was just how many IP-related things we saw.  Like the 19th-century lifeboat that we saw at Whitefish Point on Lake Superior, which bore a U.S. patent number.  Or the exhibit on glass inventions at the Museum of Glass in Corning, New York, which included a display about the use various combinations of lenses to reduce what are known as chromatic aberrations.  That particular technology was prior art in an opposition I was working on at the time.   At the Smithsonian, we saw the Wright brothers' original airplane - a patentable invention if ever there was one - as well as examples of crystalline polymorphs, something that's occupied no small part of my professional life.

Then there was our visit to Niagra falls, where I delivered a letter to the U.S. and Canadian park authorities, telling them to cease and desist use of the term “Niagra” which was confusingly similar to my client’s mark for a well-known erectile dysfunction drug.  Ok, I didn’t really deliver the letter.  But the firm I worked for at the time did represent Pfizer in many seizures of counterfeit Viagra^®. 

Without a doubt, though, the best IP-related part of the trip was our visit to the Utz potato chip factory in Hanover, Pennsylvania.  There’s an enclosed walkway over the production floor that enables visitors to take a self-guided tour and observe the manufacturing process.  It’s pretty clear that considerable thought went into the machinery used to transport the chips during production and to package them, and no doubt over the years more than a few patents were issued for those devices.  And we got free samples at the end of the tour, with OU kosher certification.  Not bad.  I highly recommend it for anyone traveling through Lancaster County.  If you time it right, you can tour the Snyder’s of Hanover Pretzel factory on the same day for a clean sweep of the snack industry.  

Near the entrance/exit of the Utz visitors’ gallery, there’s a display of vintage Utz products (or at least old-style packaging).  So as we were leaving the premises, I took a picture of our kids next to the display.  At which point our then-8-year-old son protested, “Daddy, the sign says no picture taking!”  I explained that the sign meant you can’t take pictures of the production area, but there was nothing wrong with taking pictures by the display of old products.  “Why don’t they want you to take pictures inside the factory?”, he asked.  Well, I explained, they’re afraid that another potato chip company might send spies and find out how they make their chips.  It’s called industrial espionage, I explained.  

Without losing a beat, our son said, “Hey, I have an idea!  Maybe I’ll go and work for Utz for a few years, then open my own potato chip factory!”  

“You know,” I said to him, after I stopped laughing, “we help defend people like you.  Sometimes we go after people like you!”  

I mentioned that story because of this complaint filed yesterday in the Eastern District of Ohio.  Snack Alliance and Shearer’s Foods allege that another company is infringing US 7,189,424 and US 7,416,755, which claim fried, crisp rice snack chips and processes for making them.  Shearer’s markets rice snacks under the name “riceworks”, in several flavors; according to the plaintiffs, in making a competing product the defendant not only infringes the patents, but also uses the same names for several of the flavors and uses similarly colored packaging.   Hence in addition to patent infringement the plaintiffs also allege unjust enrichment, federal false designation and unfair competition, and state deceptive trade practices and unfair competition claims.  And who would that defendant be?  None other than…Utz. 

Below are pictures of Shearer’s products and Utz’s products, taken from the complaint.  Whaddaya think?

 
   

I also want to take this opportunity to say for the record my son did NOT advise Utz in any way and received no compensation from Utz for consulting with regard to product development or any other matters. :-)

A Purim Post

 

Belloq: Dr. Jones. Again we see there is nothing you can possess which I cannot take away.

--Raiders of the Lost Ark of the Covenant, 1982

 

“Of course we should keep the Panama Canal, we stole it fair and square.”

--attributed to U.S. Senate candidate S.E. Hayakawa, 1976 

 

Sunday will mark the holiday of Purim, in which Jews commemorate escape from annihilation – and obliteration of their enemies – in Persia long ago.  One of the themes of Purim is nahafoch hu, which can be idiomatically translated, roughly, as “the tables are turned”.  In that vein, and Purim being a festive and joyous holiday, I thought the news item at right from the February 21 edition of the Jerusalem Post was worth sharing.  (You can click on the image for a larger version; the html version of the article can be found here, but I don’t know how long it will continue to be available for free).  I’m not going to comment, but for those readers who aren’t familiar with the Israeli pharmaceutical scene and can’t figure out why the article brought the above quotes to mind, I’ll mention that the particular pharmaceutical company named in the article doesn’t have any patents.  As they say in Hebrew, hameivin yavin, or as they say in Yiddish, farshtey?

A New Israel Patents Commissioner?

The Hebrew-language Makor Rishon newpaper reported on Friday that the search committee tasked with finding a new ILPTO Commissioner has settled on Asa Kling, a partner in one of Israel’s larger IP litigation firms.  Unlike most lawyers in Israel, including most lawyers who specialize in IP litigation, Mr. Kling has a technical background: he holds a degree in aeronautical engineering from the Technion and worked for several years as an engineer prior to attending law school.  As of this writing, neither the ILPTO nor the Justice Ministry web sites have any information regarding Mr. Kling’s selection, presumably because the committee (the names of whose members have not been published, save for Guy Rotkopf, the Director General of the Justice Ministry, who chaired the committee) merely makes its recommendation to the Justice Minister, who has the final say in the appointment.  More likely than not, however, this is a mere formality, and an official announcement will be made soon.

A Few More Words on “Overlap”

During a discussion with a colleague following my last post on “overlap” rejections in the ILPTO, it became apparent that a few additional points regarding such “overlap” rejections – in contrast to US practice - bear mentioning.  The first of these, which pertains to divisional applications, will be discussed in this post.  The second, which pertains to the erroneous basis for the ILPTO’s view on “overlap”, will wait for a subsequent post. 

“Overlap” in Divisional Applications

In both the USA and Israel, the claims of a patent application must be directed to a single invention.  If the claims are directed to more than one invention, the examiner may instruct the applicant to restrict his claims to a single invention.  Although the details of the practices in the two countries differ – U.S. restriction practice remains a source of much confusion for both applicants and examiners alike – the basic contours of the law are the same in both jurisdictions: unless the applicant can convince the examiner that the claims are directed to a single invention, the applicant must choose which invention he wishes to have examined.  He may then file claims on the remaining invention(s) in one or more “divisional” applications, which have the same effective filing date as the earlier application.  I’ll call such applications “involuntary” divisional applications; applicants may also voluntarily divide their applications, even in the absence of a finding that the claims of the parent application are directed to more than one invention.  

Now suppose that an examiner has said that the claims are directed to two inventions, and as a result the applicant has divided his application.  The divisional is still pending, and the parent case has matured into a patent.  (Occasionally, the reverse occurs – the divisional issues first.)  Can the examiner now say that the claims of the still-pending application are obvious in view of the granted patent, i.e. can the examiner make an obviousness-type double-patenting rejection on the basis of the related parent (or child) patent?  In the U.S.A., 35 U.S.C. §121, the relevant part of which is reproduced here, protects applicants in such a case:

If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. * * * 

In other words, if you file a divisional as a result of a restriction requirement, the examiner can’t cite the parent patent against you; or vice versa, if the child application matures into a patent first.  That seems fair enough: if the USPTO was of the view that the claims were directed to two patentably distinct inventions, it shouldn’t be allowed to reverse course later and say that they’re not patentably distinct, and that one invention is obvious in view of the other.  Put differently, §121 statutorily creates an estoppel against forcing applicants to divide their applications, then using one of the two applications to impugn the other. 

Unfortunately, there is no similar statutory provision in Israel.  And although logically, for the reasons explained in the previous paragraph, the ILPTO should be estopped from citing a parent case against a divisional or vice versa when it was the ILPTO itself that ordered the division, there is (as yet) no case law saying that such an estoppel exists.  As a result, it’s not unusual for an Israel examiner to tell an applicant to divide its application, and then, after the applicant has filed a divisional along the lines delineated by the examiner, to assert that there is “overlap” between the claims of the two applications. 

Given that significant statutory changes are in the pipeline (which the subject of a post in the not-too-distant future), the Justice Ministry should consider proposing a statutory amendment that would correct this situation as well, and which would explicitly state that if an applicant divides his application in accordance with a finding of disunity issued by the ILPTO, the ILPTO cannot later reject one of the two applications over the over because of “overlap” or double-patenting.

The lack of either a statutory provision or explicit case law (at least as of today) against this sort of “double jeopardy” takes on added significance in view of the position announced by the ILPTO last year that it would no longer permit the filing of divisionals of divisonals once the earliest application in the chain has been published for opposition purposes.  As explained in an earlier post, the ILPTO’s position regarding divisionals of divisionals has no basis whatsoever in the statute.  Not that things like statutory wording ever stopped the now-ex-commissioner from doing whatever he felt like doing.  Which may be why the now-ex-commissioner, in a clarification issued after the moratorium on divisionals of divisionals was announced, stated that if an examiner tells an applicant to divide an application, the applicant does so, the parent case publishes, and then the examiner says the divisional contains two inventions, the applicant has to choose which of the inventions in his divisional he wants to keep and which to jettison, because he has lost the right to file his divisional.  While I’m certain that sooner or later, the ILPTO’s position on this will be litigated, and the ILPTO will lose, repeal of this ill-considered and ultra vires policy would be more efficient and less costly.  It should be one of the incoming Commissioner’s first acts in office.