Today, September 1, 2010, will long be remembered as one of the most momentous days in Israel’s Intellectual Property history.

After depositing its instrument of accession to the Madrid Protocol for the International Registration of Marks at WIPO on June 1, 2010, Israel today commenced operation of the Protocol, making it the 85th member of the WIPO-administered International Trademark system, and the 82nd Member of the Protocol.

In addition to facilitating International protection of Trade and Service marks under the Madrid Protocol, the Israel Trademarks Office (ITO) also today moved from a single-class to a multi-class filing and registration system, enabling new applications to be filed in multiple classes, with a reduced official filing fee being applied to each class after the first.

As part of a number of related changes accompanying implementation of the new multi-class Trademark system on a national level:

(a) the ITO will allow for unification of several single-class applications, or several single-class registrations, provided that the marks therein are identical and carry the same filing date;

(b) the renewal period in Israel will be  reduced from 14 years to 10 years bringing it in line with the first term of registration of a mark which was changed from 7 years to 10 years in August 2003;

(c) a reduced official renewal fee will be applied to each class after the first when renewing a multi-class registration in Israel;

(d) the examination period of an Israeli application will be limited to a maximum of 2 years, after which time the application will be deemed to be cancelled unless the Applicant requests to present arguments against cancellation before the Registrar;

(e) the ITO will no longer allow changes to be made to registered national marks, and a similar approach will be applied to marks under application albeit that changes to pending marks may be allowed by the Registrar in very exceptional circumstances.

With the recent upgrade of its computer databases and online filing facilities, the Israel Trademarks Office has been promising a more efficient, effective and cheaper filing system – both on a national level, and now also on an international level. The extent, however, to which Israeli individuals and businesses will avail themselves of the opportunity to expand geographical coverage of their Trademarks under the Madrid Protocol remains to be seen, and it will likely take some time until the new international system becomes common play for Israeli Trademark owners.

Israel has an IDS requirement at the time of the application reaching examination and at any given time afterwards before it is granted.

Starting September 1st, an applicant will have to translate any reference cited against his patent which is not in English.

This is the Israeli Patent Office’s way of “raising examination quality” – by introducing a new requirement that does not exist in any other office in the world.

Or is it the Israeli PTO’s way of saying “stop filing here” ?!

The Israeli Patent Office considers entering into a Patent Prosecution Highway (PPH) agreement with the USPTO.

PPH is a convention that allows accelerated examination of an application which claims priority from an application that was previously allowed in another patent office.

In order for an application to be eligible to a PPH, all claims should be similar to the claims of the allowed application.

The Israeli Patent Commissioner requested the public to comment on the implementation of the program, noting, in his notice, that such a program may create a lot of pressure on the patent office if applied.

As much as I try, I cannot understand why the commissioner of patents and trademarks thinks that the PPH may create any kind of burden on the patent office. PPH accelerates the examination ahead of line. However, in view of clause 17(c) of the patent act and the relevant commissioner circulars, an application that was allowed in another patent office will not be examined anyway, but rather, will be automatically granted, as a matter of law. Where is, then, the pressure?

Following years of pedantically requiring Trademark Applicants to enter Notices of Disclaimers waiving rights to exclusive use of words, letters and other symbols deemed to be non-distinctive or commonly used in a particular field of trade, the Israeli Registrar of Patents, Trademarks & Designs is having second thoughts about continuing to employ this oft-used (and sometimes draconian) condition of allowance during Trademark examination in Israel. 

In a draft Memorandum sent to IP and Legal Attorneys for input late last week, the Registrar noted that Section 21(a) of the Israel Trademarks Ordinance [New version] 1972, which empowers the Registrar and his Examiners to impose disclaimer requirements as conditions of acceptance of a mark, has been applied over the years in non-uniform fashion, thereby leading to uncertainty on two levels. Firstly, the Registrar notes that the lack of uniform application of Section 21(a) has led to uncertainty regarding the Israel Patent & Trademark Office’s (IPTO’s) own policy on disclaimers. Secondly, it has led to confusion vis-à-vis the significance attributable to the many cases for which disclaimers have not been required by the IPTO.

After noting that Trademark laws are designed to ensure that no person is afforded exclusive rights to use a non-distinctive mark or one which is in essence a common term in trade – and that Trademarks are examined in their entirety and registered in their entirety, such that even without a disclaimer being entered the owner of a Trademark registration will not be afforded exclusive rights to each and every element of the mark separately – the Registrar has proposed to generally cease conditioning the registration of marks containing non-distinctive elements upon the entry of related disclaimer notices.  The Registrar has stated that although he will still retain a discretionary right to apply Section 21 in appropriate cases – and while an Applicant would still be entitled to enter a voluntary disclaimer notice as he sees fit – the proposed new policy is intended to correlate with the “… widespread trend in European countries to no longer require disclaimer notices of this sort”.

In conclusion of his draft Memorandum, the Registrar expresses his hope that the proposed new practice of refraining from issuing disclaimer directions, will lead to a more efficient and timely examination process, and one with greater uniformity in its results.

The Registrar has invited comments on the draft Memorandum to be submitted by September 6, 2010, and it is therefore possible that the Memorandum will undergo some changes prior to being finalized as an Official Directive. If however the new practice is brought into effect in the substantially the same form as currently proposed, then it will certainly smoothen the Examination process in Israel, and contribute to shortening the pendency period which currently stands as a minimum of 12 to 15 months in the absence of accelerated examination.  We thus view this proposed reform to be a positive step in the right direction by the Registrar. What remains to be seen however, is whether the Registrar will now be encouraged to relax his long-held adversity to accepting word-mark slogans and three-dimensional Trademarks for registration in Israel.

A relatively new convention provides an excellent method of accelerating US patents.

The most important jurisdiction for patent filers is the United States of America. It is the largest market for many products, and a US patent, being a federal patent which covers all US states, is very cheap compared to the huge market it covers.

However, until a US patent reaches examination, you can wait a few years.

We believe that the most cost-effective and successful way to change this is by using a relatively unknown convention called the Patent Prosecution Highway (PPH). According to the PPH, one can request to advance in line a patent filed in the US, if such a patent is based on a UK granted patent’s priority date, and vice versa.

Since reaching examination in the UK can be very fast (usually within 4 months since the moment of filing the search request), this can be a very effective way to accelerate the US patent.

This option is not practical for US applicants, as a US applicant must file in the US first to obtain a foreign filing license, but for non-US applicants (such as UK applicants), filing in the UK and then in the US can be an excellent opportunity to enjoy a “skip the line” mechanism.

Same applies for the UK and Japan, as a PPH convention also exists between these two countries.

We are tracking statistics of our website and found out that we had more visitors ot our website from the cities noted at the heading to this post than any other city in the UK.

To make it clearer to inventors and startup executives in those cities how important they are to us, we decided to create city specific pages on the website. At the moment, they are all identical, but with time we hope that these pages will also include city-specific information.

So, here they are:
London
Manchester
Leeds
Birmingham
Bristol 

Fisher Weiler Jones recently hosted a highly successful workshop on legal strategies for defence and HLS companies.

One of the problems that such companies face is quite unique to this industry – at the HLS indusry, the country has a right to take your patent from you. It usually starts with a “security order” of the country, which prohibits the inventor from doing anything with his patent, and ends with the patent being taken from the inventor.

Some countries will compensate the applicant well for such an act. Some will not. 

There are various ways to try and avoid security orders. Some of those ways are semi ”policital”. In every country, there is a specific organization, usually part of the ministry of defense or the military, which is responsible for security orders. Good connections at those organizations will help.

However, this, naturally, is beyond the reach of patent attorneys. So, what can we do to help? 

What we do is try to draft our clients patents in a way that will make them look at civil as possible. We think of civil applications and stress them out. We avoid using military-related terminology, etc.

The patent offices normally look for keywords. Attorneys should be masters of terminology. Everything that can be said one way can be said totally differently. Many countries have a policy according to which if no security order was given within a specific period of time, it can no longer be given. So – we try to draft our application in such a way that the country will simply not want them.

Israeli Company “Yozmot 33 Ltd.” Sued HTC. for infringement of a mobile-related European (UK) patent.

HTC argued the patent is invalid due to lack of novelty, obviousness, insufficiency, added matter and unpatentable subject matter.

Well, exciting times in the world of software and business method patents and the area of inventions excluded from patentability. Yesterday, we had the long-awaited Bilski decision in the States. This follows not long after the also much-anticipated decision from The European Patent Office (EPO) Enlarged Board of Appeal.

The President of the EPO had referred to it several questions about the patentability of computer implemented inventions. The Board didn’t find any conflict in the case law and declared itself happy with the way things have developed. In a nutshell, the EPO takes a ”technical effect” approach; it looks at computer implemented inventions in terms of whether they constitute a novel and inventive technical solution to a technical problem. If so, all is well.

In the UK, the question of how to determine excluded subject matter has also enjoyed the limelight over the past few years. The approach here is different, the four point test is the way to go (1. properly construe the claim; 2. identify the actual contribution; 3. ask whether it falls solely within the excluded subject matter; and, 4. check whether the actual or alleged contribution is actually technical in nature), and although it appeared for a while that UK Intellectual Property Office and EPO attitudes were diverging – the UKIPO seemed to go very anti-software for a while - we have since been told that the two approaches are in fact wholly consistent and, although each Office may take a different route, they should both end at the same destination.

For more information about software patents in UK and Europe, contact Keith Jones keith@fwjip.com

Axel Horns presents in his blog http://www.ipjur.com/blog2/index.php?/archives/165-German-Bundestag-Meets-Innovation.html#extended two Bundestag incidents illustrating to him the parliament’s attitude towards innovation.One is a mini-scandal raised after a MP read his speech from an iPad, the other is of treating the Internet as a potential hazard. For him it goes to show that “the innovative digital world of the future is shaped elsewhere, mainly in the United States, and not in Europe, let alone in Germany” and yet I’m not sure that in innovative Israel the parliament is more enlightened on these themes…