JUrISdIctIOn repOrt: ISrAeL
pAtent OppOSItIOnS In ISrAeL
dr michael Factor
JMB, Fa©tor & Co.
Under Israel law, there is no automatic publication of patent as well. Case IL133307 relates to transformer circuits for fluorescent
applications 18 months from priority. Publication only occurs once a lighting. The opposer showed that the main claim was effectively
patent application is allowed, a publication fee has been paid, and an anticipated by a diagram in a classic Russian textbook, published in
abstract and representative figure have been published in the Patent Hebrew in 1965.
Office Journal for opposition purposes. Opposition proceedings may
be filed within three months of publication. Grounds include lack of
The arbitrator essentially ruled that where an applicant is overly
novelty, obviousness or that the person opposing the patent, and not the
enthusiastic in claiming more than he is entitled to and the main claim
applicant, is the true inventor.
is invalid, the dependent claims may be summarily invalidated without
providing substantive grounds.
Until recently, the Israel Patent Office prepared an abstract based on
the main allowed claim(s). In a recent circular, the Israel Commissioner
This ruling is strange since no issue of bad faith in disclosing prior
of Patents announced that for applications filed via the PCT (Patent
art was reported. The applicant was presumably unaware of both the
Cooperation Treaty) system, the Patent Office will now publish the
Russian textbook and the two obscure German patents that came to
PCT abstract, and for other cases, the applicant will have to provide an
light during the opposition. Attempting to claim a generalised circuit
abstract in rich text format (RTF) in accordance with the examiner’s
widely in the main claim and to establish fallback positions in dependent
directions. This should make the publication process more efficient.
claims is legitimate patent practice. Notably, no evidence of inequitable
behaviour or bad faith was reported.
In recent opposition proceedings, Unipharm, an Israeli generic drug
manufacturer, voided three out of four SmithKline Beecham patent
Whether in prosecution, during opposition proceedings or in
applications for thiazolidinedione hydrogenation.
contentious litigation to enforce a patent, if an independent claim is
invalidated by prior art, a restricted monopoly defined by a dependent
The applications relate to the addition of hydrogen about the C=C double claim should be acceptable if novelty and inventiveness requirements
bond of thiazolidinedione TZD in the production of Rosiglitazone, an are met.
anti-diabetic drug.
The adjudicator also criticised the opposer for referencing additional
IL131392 and its divisionals (IL166189 and IL166550) relate to the use prior art (the German patents) late in the proceedings and claimed
of the relatively gentle borohydride reducing agent on thiazolidinedione. not to accept them as evidence but merely as indicative of the state of
IL135898 relates to synthesising the same product by reacting the art. However, there is no reason to believe that these publications
thiazolidinedione with hydrogen in the presence of a palladium-on- were deliberately withheld. It is more likely that the opposer was simply
carbon catalyst under pressure. unaware of the additional material until this advanced stage.
The Commissioner determined that, in these cases, the issue was If a patent opposition proceeding was a regular civil matter between two
inventive step and ruled that the correct standard to apply is ‘obvious parties, the adjudicator’s position would have more validity. However,
to try’, rather than ‘obvious to succeed’. After considering the prior art, in the case of opposition proceedings, the opposer acts in the public
IL131392, IL166189 and IL166550 were voided as lacking inventive step. interest and the Patent Office should consider all issues raised, as long
as the proceeding is still taking place and there is no reason to assume
However, IL135898 was allowed on the basis that successfully reacting
intentional obfuscation. In such cases, if the adjudicator wants to
TZD with hydrogen in the presence of a surface catalyst to provide
punish the opposer or compensate the applicant for late submission of
Rosiglitazone is surprisingly aided by increasing pressure. This ruling
evidence, this can be done when awarding costs.
is unusual since according to Le Chatelier’s principle, thermodynamics,
chemical kinetics and the general behaviour of surface catalysts all point
to increasing pressure as favouring the reaction.
In another opposition proceeding, the Deputy Commissioner of Patents
surprisingly ruled that successfully opposing the independent claims in Dr Michael Factor is a partner at JMB, Fa©tor & Co. He can be contacted at:
an opposition proceeding is sufficient to invalidate the dependent claims mfactor@israel-patents.co.il
62 World Intellectual property review September/October 2009 www.worldipreview.com
Page 1  |  Page 2  |  Page 3  |  Page 4  |  Page 5  |  Page 6  |  Page 7  |  Page 8  |  Page 9  |  Page 10  |  Page 11  |  Page 12  |  Page 13  |  Page 14  |  Page 15  |  Page 16  |  Page 17  |  Page 18  |  Page 19  |  Page 20  |  Page 21  |  Page 22  |  Page 23  |  Page 24  |  Page 25  |  Page 26  |  Page 27  |  Page 28  |  Page 29  |  Page 30  |  Page 31  |  Page 32  |  Page 33  |  Page 34  |  Page 35  |  Page 36  |  Page 37  |  Page 38  |  Page 39  |  Page 40  |  Page 41  |  Page 42  |  Page 43  |  Page 44  |  Page 45  |  Page 46  |  Page 47  |  Page 48  |  Page 49  |  Page 50  |  Page 51  |  Page 52  |  Page 53  |  Page 54  |  Page 55  |  Page 56  |  Page 57  |  Page 58  |  Page 59  |  Page 60  |  Page 61  |  Page 62  |  Page 63  |  Page 64  |  Page 65  |  Page 66  |  Page 67  |  Page 68  |  Page 69  |  Page 70  |  Page 71  |  Page 72  |  Page 73  |  Page 74  |  Page 75  |  Page 76  |  Page 77  |  Page 78  |  Page 79  |  Page 80  |  Page 81  |  Page 82  |  Page 83  |  Page 84