America-Israel Patent Law

Another Example of How Not To Advertise One's Services

Over the past several weeks I have received multiple copies of an unsolicited ad from what I assume is an India-based outfit called "Novel Patent Services". I often get these kinds ads, from different companies, usually offering drawing services, or paralegal services, or search services, and in some cases help with US patent drafting and prosecution.  This ad stated,

"I understand that navigating the patent application process can be a complex endeavor, especially with challenges such as high costs and missed deadlines. Many firms in the industry prioritize profit over client satisfaction, leading to exorbitant fees and delays that can jeopardize your patent get abandoned. At Novel Patent Services, our team of experienced patent attorneys is well-versed in managing such challenges and have a proven track record of successfully handling over 2,000 patent applications, we guide you through the intricacies of the patent process.

"We offer competitive pricing without compromising on quality, ensuring that your application receives the attention and expertise it deserves. Our team is committed to meeting tight deadlines, and we anticipate being able to prepare and submit the response to the USPTO within 10-15 working days for a fee of just $350.

"To demonstrate our capabilities, please find attached images of two recent patent grants secured by our firm in the recent past. These successes highlight our ability to effectively navigate the patent application process and achieve favorable outcomes for our clients.

"We would be delighted to discuss your specific needs and explore how we can assist you in overcoming the challenges. Do contact me at your earliest convenience to schedule a consultation for free."

Contra what is stated in the highlighted part, there was nothing attached. Not in any of the emails. You'd think they could get it right at least once. (I also wonder why the word "recent" appears twice in the highlighted part.) And the email wasn't signed by a person, it was signed "Novel Patent Services", so why did it say "I understand..." in the singular - especially when elsewhere it uses the plural "We offer" and "We would"?

But real the kicker was in the first line of the email, which reads:

"We are writing to follow up on your patent application #: 18XXXXXX for the title: WXYZ which recently received a Application Undergoing Preexam Processing from the USPTO with a due date to respond 08-15-24."

Um, there ain't no deadline in this case. There's nothing to respond to right now. We filed the application, got a notice of missing parts that had a due date of August 15, timely responded to the notice of missing parts and filed an IDS...and then the application published. Which is how these bozos were able to see the file in the first place. But as of August 15, 2024, there was nothing to respond to. Nor is there anything outstanding today. And the USPTO never, ever sends out anything titled "application undergoing preexam processing". That's just the status of the file.

I've set my spam filter to catch anything further from these guys.

Has Israel Captured Marvin the Martian?

Anyone my age will recall Marvin the Martian, the Loony Toons character who wanted to blow the earth into nothingness using his “Eludium PU-36 explosive space modulator”, but whose nefarious plans were foiled by Bugs Bunny.

Marvin, of course, is fictional, but apparently Israel has invented what the folks at Warner Brothers only dreamed of: a bomb that vaporizes Gazans into nothingness. At least, that’s the conclusion to draw if one believes what the Hamas-controlled Gaza Civil Defense department recently told Al-Jazeera.

“Israel is testing weapons on us that we do not recognize. They drop bombs with terrifying sounds, and when a person gets within 200-300 meters of them, they vaporize.

“The massacres happening in northern Gaza are unknown to us until later. Nobody calls to inform us. The Israeli army bombs entire residential blocks, wiping out all their inhabitants, and we only find out about them a day or two later.”

And we know that those Hamas mouthpieces never, ever lie. Heck, they don’t even exaggerate. So we’ll have to accept their word that 1760 people in Gaza were made to disappear by this new, powerful weapon.

I have not found a patent application for this new weapon, but then I would think that if someone filed such a thing, it would be subject to a secrecy order. And I suspect that if such an application were to be examined, it would get knocked out with prior art such as the Empire’s Death Star, or before that, the Martian death rays in H.G. Wells’ “The War of the Worlds”.

Are Toxic Bullet Cartridges Next For Hizbullah?

Here in Israel we’re amazed by the exploding pagers and exploding radios of the last two days, in terms of the technological and logistical abilities, not to mention the chutzpa, of carrying it off. And of course we’re laughing at all those terrorists whose attempts to avoid the possible pitfalls of the digital age have left them…digitless. Lots of memes going around, like the one below. (Watch this clip if you didn’t grow up watching American TV and don’t get the joke.)

But you have to wonder, What’s next? Sure, maybe Nasrallah will come to his senses…or maybe not.

My candidate for the next thing to use, if necessary, is the device disclosed in US 9052175: looks like a bullet, but it’s loaded with a toxic agent, so the shooter pulls the trigger and poof! He’s poisoned!

Added bonus:  it’s suitable for use by both Hizbullah AND Hamas.  And since the patentee only filed in the USA, no fear of patent infringement for using this invention in Lebanon or Gaza! That’s what we patent people call a win-win.

Suggestion to the terrorists: don’t buy your ammunition from Benzi’s Bullet Bazaar.

From the Mouths of Babes, vol. 2 (or, Steph Curry Couldn’t Have Been Clearer)

I don’t do trademark prosecution, but the issue of possible trademark protection is something I often discuss with clients. One of the ways I illustrate how successful marks convey distinctiveness is that you don’t necessarily have to be able to read to know what a mark means.

Case in point: when our oldest daughter was about 3, we were walking by a travel agency (once upon a time, there were brick-and-mortar travel agencies that made travel arrangements for people) and she recognized Mickey Mouse in the window. She also recognized Tony the Tiger on a billboard.

Indeed, the ability of pre-reading children to distinguish objects is recognized in Jewish law: in certain cases, when there is a perceived defect in a letter in a Torah scroll, a child who has learned his letters but doesn’t yet know how to read may be consulted to determine whether the letter has the correct appearance or not. Since the child can’t read, he is not going to be influenced in his judgment by the letters surrounding the letter in question.

Which brings us to yesterday’s Olympics men’s basketball final, in which Steph Curry sank four 3-pointers in the last two minutes to put the game away for the USA. Here’s a clip of our now-adult daughter’s own 3-year-old calling the game (in Hebrew; our daughter inserted Hebrew subtitles to make things clearer):

 

If you don’t speak or read Hebrew, here’s the translation:

0-5 seconds, as Curry makes one 3-pointer: “Daddy – maybe the far away one will win!”

5-13 seconds, as Curry fakes out two defenders to sink another 3-pointer: “There – here it is! Daddy, this one wins!”

13-15 seconds, as Curry celebrates by putting his hands together under his tilted head to signify “Lights out!” or “Nighty-night!”: “He’s going to sleep!”.

The kid got it!

The Saga of Suspensions (or, You Can’t Make This Up, Installment No. 12? 15? I’ve Lost Track)

Once upon a time, the Israel PTO let patent applicants request suspension of examination at almost any point in time during the examination process, and it didn’t cost anything. You just wrote to the office and requested suspension. This isn’t something that’s explicitly set forth in the statute, but it’s no skin off the ILPTO’s back to put a note in its file, “Don’t examine this case yet”.

Then someone at the ILPTO got the idea that this worked too well, so that person decided to mess things up. Maybe someone thought that, in the age of 18-month publication, suspending examination was prejudicial to potential competitors. Maybe someone thought that, “Hey, we can make money off this by charging a fee!” Maybe someone felt that it’s important to keep the Office’s docketing straight and to not let prosecution lag too much. Maybe it was a combination of reasons.

Whatever the case, at some point the ILPTO changed its practice, and said that one could only request suspension after the applicant had answered the pre-examination letter (viz. filed a mandatory disclosure of publications relevant to patentability or cited by examiners elsewhere – think of an IDS in the USA – plus a list of corresponding cases elsewhere, or in brief, a Section 18 response) and before the issuance of the first substantive office action. And then, if the ILPTO said “ok” to the suspension request, applicants would be given one month in which to pay for the suspension.

I’ve written at length in the past about how that suspension fee is unauthorized by statute, but that’s not the focus of this post.

No, what I wanted to get at were further changes to the ILPTO’s suspension practice.

The first additional change happened a little over five years ago. The problem was that you had no way of knowing when the application might be examined, and since you could only request suspension before the first OA issued, it was common to request suspension shortly after responding to the pre-examination letter. And then within a few weeks you’d get the letter to pay the fee, and so you’d pay the fee within a month, and ostensibly the case would be suspended for year or whatever…and then after the suspension was over you’d sit around for another month or six or twelve or more waiting for the OA. Which meant that the fee was totally unnecessary, and that in reality, nothing had been achieved except wasting time (and client money) on some meaningless administrative tasks.

So the ILPTO said, “OK, you still need to request suspension after your section 18 response and before we issue a substantive OA, but now we’ll wait until the application is actually due to be examined, and then we’ll send you a warning letter, and if you pay the fee within a month we’ll suspend and if not the case will go to the examiner.”  Makes sense, although I was apprehensive that the ILPTO might miss overlook the fact that a suspension had been approved and issue an OA before we’d even been asked to pay money.

It turned out that the ILPTO was actually pretty good about issuing the “pay for your suspension now” letters”, and until this week I’d only had one case out of many in which it prematurely issued an OA. And in that one case, it wasn’t a big deal to get that OA withdrawn and have the “pay your fee now” letter sent.

Then last year they surreptitiously changed their “pay your money now” letter slightly. They changed it to say, “If you want the suspension you must request suspension again and pay the fee”.  Now, I admit, I initially missed that new part, and just paid the fee as I always had. But some months later, I looked through my docket and saw a case in which I’d paid the fee but hadn’t gotten the confirmation that the suspension had been granted. So I called the person responsible at the ILPTO and asked what we going on. She explained to me that we need to again request suspension, and that I should look at the letter. So I looked at the letter, saw the added verbiage, and asked her, “Did you think I was going to pay a fee because I’m a civic-minded person who wants to donate to the state’s coffers? Of course the fee is for the suspension, that letter is the only thing outstanding in the case, what else would I be paying money for?”

After some discussion, it turned out that the ILPTO’s computer system or work procedures had been modified, so that if the applicant doesn’t file a renewed request for suspension, the system isn’t aware that the fee has been paid, and it isn’t updated to confirm that the case is now suspended. So in that specific case, the employee manually updated the system and issued the “case is now suspended letter”.

But then I had to pay another suspension fee in a different case. So I went into the system to again request suspension, and found that (a) there’s no separate option for re-requesting suspension, there’s just “request suspension”, and (b) there’s no option to pay the fee when requesting or re-requesting suspension. So I uploaded the re-request for suspension, and then before submitting it did what I’d always done in the past when paying the suspension fee, viz. I went to the “request extension” option, then added payment for an extension. I then submitted both things at the same time and paid the fee. End of story, right?

Wrong. I get a call a day later from someone at the PTO: “You requested suspension but didn’t pay the fee”.

My response was along the lines of “Say what? Of course I paid the fee. It’s right there. I have the payment receipt!”.

“Well, I don’t see it, you’ll need to resubmit the request for suspension with the payment receipt.”

As I sad in the title of this post, you can’t make this up.

So I took the original suspension request, and added a text box with big red writing on the side: “NIS 2712 for 12 months’ suspension paid, receipt no. XXX”, and filed that.

ILPTO left hand, meet ILPTO right hand.

But then this week we had the piece de resistance, the crème de la crème, the cherry on top of the whipped cream. In a case in which suspension was requested two years ago, we got a first OA, without having been asked to pay the suspension fee. Second time that’s happened. As it turns out, the OA was pretty positive – it appears that, with some minor amendments similar to those made in another jurisdiction, we can gain allowance. But maybe the applicant wants to delay, so I reported the OA, and explained the option to either respond substantively, or request withdrawal of the OA and demand issuance of the “re-request suspension and pay your suspension fee letter”.

Then two days later, the ILPTO issued the “re-request suspension and pay your suspension fee letter”. But there was nothing in the letter to indicate that the OA itself had been withdrawn. So I wondered, “Will the system let me re-request suspension now”?

And – you know what’s coming – it won’t.  When I tried to submit another request for suspension, the system barked at me, “You can’t, nyeah nyeah nyeah, there’s an outstanding OA!”.

Now, I could pay the suspension fee, since the system will of course let me pay for an extension of time. But we saw from our other recent experience, since that payment will be classified by the system as part of an extension request and not a suspension request, the ILPTO won’t suspend examination.

So depending on what the client says, it looks like a few phone calls may be necessary to get the OA withdrawn and pay the suspension fee. Or maybe we’ll just answer the OA and proceed to allowance.

Weizmann Institute, or Sesame Street?

When I was a kid, almost every episode of Sesame Street included a bit with a song that went something like,

"One of these things is not like the others, one of these things just doesn't belong. Can you tell which thing is not like the others by the time I finish my song?".

And usually what would be shown was a grid containing three triangles and one circle, or three cats and one dog, or three tools and a shoe, or something like that, and then the person singing the song would explain which item was different from the others.

This morning, the Weizmann Institute held a party to which all Institute staff and students were invited - probably close to two thousand people. 

 

And what occasioned these festivities?

The unveiling of Weizmann's new logo.

Below are examples of the old and new logos. I'm not saying which is which. Five brownie points for anyone who can spot the differences in less than 5 seconds.

 


With that kind of money to spend on frivolities, it's no wonder the Israel Tax Authorities have been considering taxing the interest and investment income on Weizmann's endowment.  And with so little difference in the logos, one wonders if some of the people at the Institute need to watch more Sesame Street. Especially with Israel's universities dropping in world rankings.

Interestingly, Weizmann has 11 trademarks registered in Israel, including several on the logo, but as of this writing, the Israel PTO database doesn't show an application, let alone a registration, for the new logo.

Al Jaffee z"l - Cartoonist and Creator of Prior Art

We heard earlier this week about the passing of 102-year-old Al Jaffee, who for many years wrote for MAD Magazine, and who only retired from cartooning three years ago.  His most well-known (and most consistent) contribution to MAD was no doubt the “fold-in” on the inside back cover, which was the first thing any loyal MAD reader looked at (followed by Prohias’ Spy vs. Spy, the Don Martin cartoons, Dave Berg’s “The Lighter Side of…”, and the doodles in the margins by Sergio Aragones.  The last things a reader would get to were the movie and TV satires). 

But another feature that Jaffee did from time to time involved showing useful gadgets from the distant or not-so-distant future, like a piece on improvements in the collection and disposal of what my colleague David Klein might refer to in patentspeak as “canine exudates”.  At one point MAD collected these into a book called “Al Jaffee’s MAD Inventions”, which I’m sure my brothers and I owned at one point.

From time to time I’ve wondered if any of Al Jaffee’s invention were cited as prior art during the course of patent prosecution, either voluntarily by an applicant, or even better, by the examiner under 102 or 103, but neither my brother Aaron nor I bothered looking until now.  Searching for patents that list “Mad Magazine” or “Al Jaffee” as prior art yields several examples, but the only cited MAD reference I could find that was archived on the internet was from the June 1964 issue which included a piece written by Al Jaffee entitled “The Great Cigarette Filter Tip War”.  The second page of that piece is listed as prior art in US patents nos. 3439685 and 3528432. Although the file histories of these two patents are not available online, if at all, the fact that the patents issued to two different inventors but were examined by the same examiner would seem to suggest that, in at least one of the cases, it was the examiner who cited Jaffee's work.

This Is Why The Use of Trademarks To Identify Goods In Patents Can Be Problematic

For those who don't speak Hebrew, the bottom line says, "Cream Cheese 25% Fat - New Recipe".

Patent Practitioners Aren't The Same As Lawyers: Quod Erat Demonstrandum

This afternoon, the Israel PTO and Justice Ministry held a roundtable discussion about in-the-works draft ethics rules for patent practitioners.  I may or may not report more on the meeting in a later post, but while that meeting was going on, this story broke about the head of the Israel Bar Association resigning because he whacked off during a video chat with a female colleague who he'd recommended for a judgeship. The story implies that he admits to the act, but didn't believe he did anything wrong because it was consensual.

Every time the issue of ethics rules for patent practitioners in Israel has come up, I've said that patent practitioners don't have a reputation as sleazebags and don't have the kind of opportunities for abuse of client trust that lawyers do. And usually I've pointed to the existence of canonical lists of lawyer jokes on the internet, but the noticeable absence of the same for patent practitioners. But I think this story proves my point. Especially when one considers that this guy's predecessor as head of the bar association resigned amidst criminal charges of trying to get his mistress through passport control improperly. Or that another former head of the bar association sued a cop for half a million shekels - and lost - after the cop arrested the lawyer when the lawyer refused to pay his cab driver.

Not the same professions. QED.

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.

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.

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.