🖈11 Kiryat Hamada Street, Jerusalem, Israel
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Fall Back – Look Forward
As the leaves turn and days become cooler and shorter, at least in the northern hemisphere, here in Israel, and in Jewish communities around the world, we are just about to enter a three week holiday period. This starts with Rosh Hashana (New year) which kicks off a ten day period of serious introspection, ending with Yom Kippur. Less than a week after that we have “Sukkot” which is a weeklong holiday which is normally a time when we celebrate with family and friends. This year, everything will be colored by the tragic events of last October 7; we pray for the safe return of the hostages and for the restoration of genuine peace and security for all, not just in our region, but the world over.
In this month’s newsletter, we have some potentially good news on the horizon, in the form of Mike Hammer’s summary of the proposed Patent Eligibility Restoration Act. It appears to be one of the few issues on which politicians in the US are not divided, and will bring much-needed relief to patentees, if and when it is passed.
On the Israel practice front, my colleague Eviatar Aron grapples with acceleration of design examination in the face of infringement by a third party, and how it is possible to provide detailed information of the alleged infringement to the Designs Office so as to justify the request for acceleration, while preventing this knowledge from falling into the hands of the infringer before you have had a chance to put them on notice. In his article, Eviatar explains how to avoid this potential banana skin.
I then discuss the ‘gift’ of computer glitches in extending the pendency of patent applications. While the Israel Patent Office has become a superbly oiled machine, whose well-trained professionals conduct high-quality examinations with great efficiency, as with any system that relies on advanced digital systems, the odd glitch is bound to happen. And with the type of glitch that I relate to in my article, that glitch can become a no-strings-attached gift for the applicant.
Finally, in our monthly podcast, Avraham Hermon meets with Iddo Peleg, CEO and co-founder of Yonalink, an Israeli startup company that provides a full-featured data collection and management platform for clinical trial sponsors and hospitals. If you haven’t yet tried our podcast, maybe this is the time to do it, as it is highly ranked as one of the top Israeli Tech Podcasts!
All that is now required is to wish everyone, clients, associates and other friends the world over, a happy New Year, in which the only news is good(!)
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You may have missed it, but it’s election season in the United States. Yet even with the seemingly unbridgeable gulf between the two major political parties, there is at least one thing that unites many in the political world: patentable subject matter eligibility.
I know it sounds like a joke, but if you look at the trio of US Supreme Court decisions that defined current US patent eligibility law (Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012); Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013); and Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014)), all were unanimous decisions by a Court that is more often than not split along political lines.
Now, more than ten years after Mayo, a similarly bipartisan effort is underway, but this time in the US congress and in the form of a proposed law that if passed, will remedy much of the harm to IP stakeholders that resulted from the Supreme Court’s decisions.
The proposed-law, the “Patent Eligibility Restoration Act,” or PERA, was originally introduced in the Senate in June 2023 by Republican Senator Tom Tillis and Democratic Senator Chis Coons. An identical version of the proposed law was introduced on September 6, 2024 into the House of Representatives by Republican Representative Kevin Kiley and Democratic Representative Scott Peters.
When might PERA become law?
What will be its effect?
Will it be good for patentees or make a bad situation worse?
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Pendency of Design Applications
The duration of a design application examination by the Israel Patents Office is usually 6 months to 1 year, representing the time between filing the application and the applicant’s ability to enforce registered design rights. This delay is acceptable in most cases, as it takes time for a product to enter the marketplace and then additional time for unauthorized copies to appear, such that an ability to enforce approximately one year after application is sufficient.
Accelerated Examination
However, in some situations, even this time period is too long and may result in harm to the rights of the design owner, and accelerating the examination process is necessary to protect those rights. One such situation is when a party who is not the applicant has begun exploiting or making use of the design. In such a situation, the Applicant can file with the Israel Patent Office a request for accelerated examination of the design application. This will advance the design application to the front of the examination queue and result in a first office action or registration within a few weeks from approval of the accelerated examination request. To take advantage of this option, the Applicant must file the request for accelerated examination along with an affidavit that details the circumstances of an alleged infringement, as per Section 28(a) of the Design Law 5777. Such details must include information identifying the alleged infringer and the infringing products.
Preventing Undesired Disclosure
There is, however, a problem with this, due to the almost instant publication of all of the application documents online. As the goal of the acceleration is to take action against an infringer, it may not be desirable to put the infringer on notice that enforcement steps are about to be taken, by naming them in the affidavit. When considering this problem, however, the IPO has provided a solution.
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If you have ever accompanied the prosecution of a patent application in Israel, you may be somewhat familiar with what happens when you miss a deadline for responding to an office action (OA). If this has never happened to you, here’s a short recap:
- Issuance of a Notice Prior to Refusal (NPR) for Non-Response to an OA
- The 30 day limit for responding to an NPR
- Issuance of a Notice of Refusal
- Delays – an unreliable gift
Curious?
Is this relevant to you or your practice?
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Iddo Peleg is the CEO and Co-founder of Yonalink, an Israeli biotech startup that created a data collection and management platform for clinical trials.
Avraham sat down with Iddo in the Yonalink offices to discuss how Iddo came up with the idea, how he got funded, how he found a problem that needed a solution, tips for startup founders and much more.
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The JMB Davis Ben-David patent services team helps companies and individuals secure and leverage their patent rights for products in the US, Israel, and globally.
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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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