JURISDICTION REPORT: ISRAEL
OPPOSITIONS, OBVIOUSNESS AND OTHER STORIES
Dr. Michael Factor JMB Fa©tor & Co
Merck’s patent application entitled Method for Inhibiting Bone Resorption covers an increased unit dose of alendronate and other bisphosphonates to be taken once a week or once bi-weekly for the treatment of Paget’s disease and osteoporosis. Te product covered by the patent is marketed as Fosomax® and has annual worldwide sales of over $1 billion.
Te Patent Cooperation Treaty (PCT) application entered the national stage in Israel, and on allowance, the application was published for opposition purposes. Israel’s leading generic companies, Teva and Unipharm, opposed the application, alleging lack of novelty, lack of inventive step, lack of utility and non-patentable subject matter.
Following 12 days of hearings, Israel Commissioner of Patents, Dr. Noam, concluded:
• A specific formulation indicated for a specific dosage regime is not merely a method of treatment of a human and is patentable subject matter in Israel
• Although there were suggestions in the literature—specifically in the Lunar professional journal—to try administering higher dosages less frequently as a way of overcoming certain side effects, these were insufficient to rule out absolute novelty on their own
• The combination of the Lunar references and some of the previously reported filed tests rendered the claimed invention obvious. Although some of the papers indicated that a higher dosage would cause more gastrological irritation, there was sufficient evidence that the problem was caused by pills sticking in the throat, and so the frequency of dosage was more significant than the size of the dose. Tis, coupled with the well- established long half-life of the drug and the Lunar publications, rendered the idea of reducing the frequency and upping the dose obvious to try.
One interesting argument raised by Advocate Levit on behalf of Unipharm was that Haber’s Rule applied, i.e. that the “time of exposure makes the poison”. In other words, where the problem is local irritation, a higher dosage for a shorter exposure time is likely to be beneficial, and thus there was no inventive step. Merck tried to get this argument suppressed on technical grounds, claiming that it wasn’t in the original opposition as filed.
Notably, the same patent was rejected in Europe as lacking inventive step, and in Korea and the UK as being directed to non-patentable subject matter.
Obtaining trademark protection for slogans
Generally, slogans are considered marketing tools rather than indications of the origin of a good or service, so their registration as trademarks is not allowed. However, many companies invest considerable resources in
www.worldipreview.com
Dr. Michael Factor is a partner at JMB, Fa©tor & Co. He can be contacted at:
mfactor@israel-patents.co.il
World Intellectual Property Review November/December 2010 85
developing slogans and wish to prevent others from using them. A recent slew of decisions on the topic, when taken together, shed light on what types of slogans can be registered in Israel.
Philip Morris Products was unsuccessful in registering the cigarette marketing slogans ‘enjoyed in 70+ countries’ and ‘best enjoyed slowly’, although the latter was allowed with a small graphic element and a disclaimer for the phrase. Te slogans were considered merely laudatory of the goods sold, but not indicative of their origin. Orange Brand Telecommunication Services fared little better with ‘together we can do more’.
Eveready was unsuccessful in registering ‘Free your Skin’ for shaving products, which was ruled to lack distinctive character. Johnson & Johnson was equally unsuccessful in registering ‘See what could be’ for eye treatments.
However, ‘Party like a RockStar’, was successfully registered by Russell Weiner for its RockStar energy drink since the slogan included the product name, RockStar, albeit as a general noun. Nevertheless, the slogan was considered not totally devoid of distinguishing character, and since the mark had been previously registered in the US, it was allowed.
Despite being inherently laudatory, ‘I’m lovin’ it’ was successfully registered by McDonald’s since the verb to love is generally ‘I love’ in the present tense and the construction ‘I’m loving’ was held to be sufficiently ungrammatical as to have a least a modicum of distinctiveness. Furthermore, the mark was considered very well known and widely identified by consumers with the McDonald’s franchise.
“ DESPITE BEING INHERENTLY LAUDATORY, ‘I’M LOVIN’ IT’ WAS SUCCESSFULLY REGISTERED BY MCDONALD’S SINCE THE VERB TO LOVE IS GENERALLY ‘I LOVE’ IN THE PRESENT TENSE AND THE CONSTRUCTION ‘I’M LOVING’ WAS HELD TO BE SUFFICIENTLY UNGRAMMATICAL AS TO HAVE A LEAST A MODICUM OF DISTINCTIVENESS.”
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