🖈11 Kiryat Hamada Street, Jerusalem, Israel
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The PCT provides many advantages to applicants, including providing a search and determination of patentability of the claims of the patent application, as the International Search Report (ISR) and Written Opinion of the International Searching Authority (WO-ISA).
Occasionally, the International Searching Authority will find that an application contains more than one invention, contrary to the “Unity of Invention” requirement that all of the claims contain a single novel unifying concept. In such a situation, the Authority will provide a search for an invention, typically the first invention listed in the claims, and issue an “Invitation to Pay Additional Fees,” a request that the applicant pay additional fees to search additional inventions.
Recently, I came across such an Invitation in an application that a colleague of mine was reviewing on behalf of a potential investor. In the Invitation, the International Searching Authority (ISA) had found that there were over ten thousand (!) inventions in the PCT application and had requested extra fees in an amount of over 19 million Euros!
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Like Alice who stepped into a fantastical world by climbing through a mirror into a world that she could see beyond, made famous by author Lewis Carroll in his eponymous novel, “Through the Looking-Glass, and What Alice Found There”, the sequel to “Alice's Adventures in Wonderland,“ so too were we in the real world able to peer into and catch a glimpse of a futuristic parallel world of imaginary landscapes, virtual reality and beyond, known as the “Metaverse”, following Facebook`s CEO Mark Zuckerberg `s announcement in October 2021. Zuckerberg had announced that his mega social networking corporation would be transforming from a pure social media platform to a “metaverse” to be rebranded as “Meta” with a new corporate logo, and that his rebranded company would play an influential role in developing this futuristic new alternative digital frontier.
What is the Metaverse and why might this affect your corporate trademark program?
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Guy Goldman is the Founder and CEO of Olive Diagnostics an Israeli startup that created a non-invasive real-time urinalyses sensor that mounts to any toilet to detect early diseases and improve healthcare.
Avraham sat down with Guy in the offices of Olive Diagnostics in Jerusalem to discuss how Guy came up with the idea, how he raised money, found his initial market, lessons he learned along the way and tips for startup founders.
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In a recent decision of the Chinese Patent Re-Examination Board, a Chinese patent for an invention made in China was invalidated due to the Chinese patent holder filing a corresponding patent application outside of China, without first having obtained a foreign filing license (hereon “FFL”). The decision was based clearly on current Chinese Law, and is apparently the first decision of its kind in China.
An instant, almost knee jerk reaction to this decision could be that it is yet one more example of the Big Brother State inserting itself into places where it’s not wanted. However, you would then have to say the same things about the US, or India (the largest democracy in the world), or various European countries, among others.
Without going into the specifics of the Chinese decision, it did remind me of a question that we were asked a number of years ago.
The question involved a hypothetical situation in which an invention was made jointly by Israeli and American engineers. Specifically, we were asked, “what would be required to obtain an Israeli FFL so that a patent application for the invention could be filed in the United States?”
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The JMB Davis Ben-David trademark services team works with leading international brands seeking to merchandize their products in the US, Israel and the rest of the world.
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For 25 years, the JMB Davis Ben-David team has successfully assisted clients in registering design patents that protect their original designs for products ranging from medical devices to diamonds.
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The JMB Davis
Ben-David
YouTube Channel
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You'll find our hour long webinars on Patents and using the Patent system to your advantage.
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We're here to help you with your patents, designs and trademarks.
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We started JMB Davis Ben-David with one goal in mind: to help our clients navigate the challenges of securing rights to their IP. This includes patents, designs and trademarks. Since 1995 we have been working with partners around the world so as to secure our clients’ IP rights. We’re here for you.
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Managing Partner
JMB Davis Ben-David
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