America-Israel Patent Law

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.