America-Israel Patent Law

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.

 

It's A Game Console. It's a Chicken Warmer. It's Both! (Or Maybe Someone's Pulling Our Leg)

According to Forbes, KFC (the company that us old guys still refer to as "Kentucky Fried Chicken", just like we still talk about the Sears Tower) posted this video yesterday on Twitter to announce its new combined gaming console and chicken warmer. 

The idea is certainly plausible: instead of just letting the heat generated by the gaming console go to waste, the heat gets recycled to keep a bucket of your favorite Finger Lickin' Good (several US trademarks registered for that phrase) chicken warm while you play. 

Supposedly KFC is partnering with a company named Cooler Master, and the USPTO lists over 400 patents/applications registered to companies (all from Taiwan) with the expression "Cooler Master" in the title. Most of which patents deal with heat transfer. And KFC also has 30 US utility patents and designs registered in its name, many for containers and the like, as well as for a self-cleaning oven. So this announcement could be for real. On the other hand, as of this writing the news section of KFC's website doesn't say anything about this unusual combination machine.

I haven't looked through all of the patents and applications to see if any might cover this particular product...or claim it in a way that might make it patentable. I can testify from personal experience that heat transfer from, e.g., a car's engine block to warm or even cook food is well-known in the art. Not sure the same can be said for using a computer for the same purpose. And recall that a few years ago, The Onion put out a gag gift box that says it contains a toaster powered by a USB plug.

Dedication of IP Rights to the Public (Tom Lehrer Fans, Rejoice!)

 

We refer to patents, trademarks and copyrights as "intellectual property" in part because they have attributes of what we normally think of as tangible property.  Just as ownership of tangible property – a piece of land or a bicycle – allows us to say who can and can’t use our property, but doesn’t necessarily allow us to use our own property in all situations (e.g. in most places you need a license to drive a car, even if you own it), so too IP rights provide us with a say over who can use our IP, even if IP ownership doesn’t guarantee us the right to use our own IP (e.g. sometimes it’s necessary to cross-license with another IP owner). 

Additionally, we can dispose of IP rights like we do tangible property: we can transfer ownership to others, we can pass on IP rights to our inheritors, or we can forego our rights and dedicate our IP to the public (in the case of IP, prior to the date on which those rights would otherwise have expired). 

Dedication to the public is probably most commonly encountered in the context of US patent prosecution, which sometimes requires an applicant to disclaim the term of a to-be-granted patent beyond a certain date and to promise that that to-be-granted patent will be co-owned with an earlier-granted patent in order to be enforceable, in order to secure grant of the later patent.  (We’ve discussed this in previous blog posts, e.g. here and here.)  That is at its heart a form of dedication to the public, or can be viewed as such.

Less commonly, an author will dedicate his writings to the public.  Recently, Tom Lehrer announced that that’s what he’s doing with his corpus of songs and, to the extent he can, the music he wrote for those songs.  Actually, since US copyright law doesn’t have a dedication-to-the-public provision, technically what he did was to grant an irrevocable, royalty-free license to all comers to use his words and music, but the end result is the same.  We sometimes see this in the patent sphere; a covenant not to sue can also achieve the same end.

If you’re reading this blog and you don’t know who Tom Lehrer is, he was trained as a mathematician, but he gained fame in writing and performing satirical songs on topics of the day in the 1950’s and 1960’s.  His classic “I got it from Agnes”, for example, seems rather appropriate in this era of the Wuhan virus and “contact tracing”.  As an Eagle Scout and a chemist, two of my personal favorites are “Be Prepared” and “The Elements Song”, respectively. 

In any event, Mr. Lehrer is still alive and now in his 90’s, and has made his lyrics and much of his music available here.

Bill Murray Visits the Israel PTO

Not really. But the ILPTO's emailing today of a link to the recent announcement that Trinidad & Tobago has joined the Madrid Protocol reminded me of this classic Bill Murray scene. 

In more ways than one.