Prophetic Limitations – Can there be Enablement Without Data?

By Miriam Samis, Israel Patent Attorney and US Patent Agent, JMB Davis Ben-David

A basic requirement for patentability of a claim under US patent law is for an Applicant to describe in the specification how to make and use the claimed invention, without undue experimentation by one of skill in the art. This requirement is often met by including working examples in the specification. However, what if the Applicant is not able to include working examples? More particularly in the biotechnology field, what if the Applicant has no data to support the claimed invention? A recent decision by the Court of Appeals for the Federal Circuit (CAFC) addressed this question. 

This past May, the CAFC issued a decision in Pacific Biosciences v. Oxford Nanopore Technologies affirming a District Court’s decision that invalidated US Patents 9,546,400 and read more here.

Avraham Hermon sat down with Dr. Yehudah Livneh an experienced patent attorney and former Vice President of Intellectual Property at a major pharmaceuticals company, now working as an independent consultant, to discuss the topic of patent waivers in light of the COVID-19 Pandemic. They discussed the importance of patents, how they protect against competitors and how waiving this right is affecting pharmaceutical companies and treatments for Covid-19.

THE ISRAEL TRADEMARK SYSTEM
Maintenance and removal of Israel Trademark Registrations

A Question & Answer series dealing with legal questions about the Israel Trademark System, rights and obligations, and practicalities.

Series Editor: Aaron Lewin, Israel Attorney at Law, Head of Trademarks at JMB Davis Ben-David

Contributors: Ms. Miriam Samis, Ms. Godiva Grant, Mr. Eviatar Aron and Ms. Daphne Lazar

This month, we take a look at the maintenance of registered trademarks in Israel, and their removal, and answer the following questions:

1. What is the length of the initial term of registration and what is the length of renewal terms?
2. How do you renew a registration? 
3. What are the grounds for cancelling a trademark registration?
4. Can the Trademark Office cancel a registration on its own initiative?
5. Can a decision to cancel a registration be appealed and if so, how?

Do you have any questions? Feel free to email any of the above-listed contributors.

A Worthwhile Investment - Highlighting the Value of Chinese IP

By Avraham Hermon, Israel Patent Attorney, US Patent Agent, Partner JMB Davis Ben-David

One of the important questions business owners consider when filing patent applications is, in which jurisdictions they should pursue patent protection. Business owners frequently have limited budgets for patenting activities and cannot afford to file in every jurisdiction worldwide.

Recently I had the opportunity to assist a client in a proceeding in China which offers insight into the value of a patent in China. This client had obtained patent registration for their invention in many jurisdictions, including China, in relation to a product that they have been marketing for many years. Their patent was already close to expiration when I received notification from our Chinese associate that a Chinese party had filed a request for invalidation of the patent with the China Patent Office (CNIPA), and that we were requested to respond to their invalidity claims within a short period of time.