From the Desk of JMB: Hold the Mayo?: Sequenom at the US Supreme Court

Inventors are an intrinsically optimistic lot.  Most people when faced with a problem will either make do, or will come up with a temporary solution that allows us to get on with our day.  But inventors know that progress is not achieved by just making do, and that the world can be improved, even incrementally, through that nearly undefinable creature known as innovation, and through practical applications of scientific discovery.

I think that patent attorneys share some of this optimism.  Don’t laugh!  I really do believe that for us to zealously represent our clients before the seemingly arbitrary bureaucracies of the world, we have to be optimistic.  When faced with rejections by patent examiners, we persist because we have a deep-rooted belief that there is nearly always some way around the obstacles set before us.

This sense of possibility is why in the first year or so after the rather grim U.S. Supreme Court decision in Mayo v. Prometheus, I counseled my clients that although Mayo had changed the U.S. patenting landscape for medical diagnostic methods, and indeed made things more challenging, the sky had not fallen, and we could and would find a way forward.

It’s been four years now, and I’m going to be blunt:  Mayo did bring down the sky on certain diagnostic method claims.

But like I said, I’m an optimist.

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From the Desk of JMB: 1000 Reasons Why You Should Not Ignore China Invention Promotion Strategy in the Post-Digital Age

When I was at high school, one of our teachers used to tell us that there were 1,000 reasons for doing an assignment. “The first one”, he would say “is because I say so”, and as for the rest? those, he would say “don’t matter”. When seeking to promote new inventions internationally, even if you have no intention of being active in China, the first and most important reason why you can’t ignore China is because Chinese businesses and the Chinese marketplace won’t ignore you. (and it really may be that the other reasons don’t matter(!)

Inventors and designers of new products are likely to become irritated, frustrated and even insulted when their new products are copied by Chinese entrepreneurs. But how reasonable is this, and how much of it has to do with expectations which are unrealistic and essentially based on the fact that it can take a lot less time to copy products than it does to obtain IP rights through which such copying can be prevented?

A Typical Day in the Life of a Patent Attorney and an Inventor in the Post-Digital World

“Hi. I was told to come and speak to you about patenting my invention,” said inventor X as he steps through the door rather hesitantly, in a manner reminiscent of someone about to undergo a root canal. “Hello,” said I. “It’s nice to meet you. Tell me about your invention.”

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From the Desk of JMB: Why Synchronize IP Development with Product Development? A guest article from Dr. Sinai Yarus

This is the second in a series of articles dealing with Intellectual property health leading up to the IVC conference in Tel Aviv on 9-2-2016 on doing business in the US. In the first article Dr. Mike Hammer discussed general considerations for IP heath in 2016, and the benefits of an approach that encompasses multiple types of IP.  Here, Dr. Sinai Yarus describes how and when different types of IP can fit together in the development cycle of a product. 

Eighty percent or more of corporate assets are intangible. That means a business plan needs to include an IP strategy tailored to the business. Businesses based on developing new technology have a different IP strategy than businesses using existing technology, but everyone wants a slice of the IP pie.

Let’s talk first about businesses that make a product.

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From the Desk of JMB: 3 Keys for IP Fitness in 2016: A guest article from Dr. Mike Hammer

This is the first in a series of articles dealing with Intellectual property health, and the first leading up to the IVC conference in Tel Aviv on 9-2-2016 on doing business in the US.  

We live in a health-obsessed society, and particularly this week more than ever, as we turn the page on our calendars to 2016.  If there are any doubts, you need look no further than the briefest of internet searches.  A recent search of “health” AND “New Year’s Resolution” produced over seven million hits. And I’m not even going to bother looking at the results from substituting “fitness” in place of “health!”

With all those pixels (and even ink) being spilled about “how to be healthy in 2016,” one would think that there is a piece of critical, and before now unknown, information that must be cast to the four corners of our information ecosystem if we are to have a chance of making it to 2017.  But you and I know that while the rules haven’t changed, we are all human, and so need at least a yearly reminder of some common wisdom: eat moderately, don’t drink too much alcohol (though feel free to enjoy that coffee or tea!), get enough sleep, get some exercise, and stop to smell the roses with someone you care about more than every once in a while.

If only the IP world was as straightforward as our personal health!  In some ways, the guidelines for the IP health of a business in 2016 are simple and are well-known, even if a gentle reminder is worthwhile.  But in other respects, it could be a grave error to relate to intellectual property in 2016 as if nothing has changed in recent years.

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From the Desk of JMB: Counterfeiting Your Way Around Infringement

At the recent successful IPBCAsia meeting held in Tokyo, much was discussed about some of the same old issues. However as often happens when reviewing apparently familiar ground, new points of interest come to light.

One of the hot topics was the so-called ‘death by IPR firing squad’ – a reference to the fact that use of this tool (Inter Partes Review), which was introduced as part of the reforms of the America Invents Act as a way of challenging the validity of patents, has become so effective as to result in the invalidation of as many as 80% of the patents reviewed. Notwithstanding the fact there are those that think that from the outset only 20% of patents allowed by the USPTO are actually valid in the first place, it was suggested that one of the reasons for this incredible statistic is an apparent inequity between the standards of patentability as practiced and enforced by the USPTO during examination, as opposed to those applied during IPR proceedings.

As befits a congress concentrating on IP business, of all the questions discussed regarding patent monetization, one of those that I found to be of greatest interest was “what constitutes a high quality patent?” (more…)

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From the Desk of JMB: The Unlikely Tale of a US IP Practice in the Middle East

Question: What do the following have in common? Israeli Bio, Pharma & Medical device companies, Swiss universities, Israeli Diamond manufacturers, Chinese hi-tech companies, US Pharma companies, German bio and pharma companies, and an Israeli wave surfing company?

Answer: All of these companies have obtained patents in the United States by using JMB Davis Ben-David as their US patent attorneys.

In fact, since setting up our US practice in our office in Jerusalem less than three years ago, we have filed or taken over representation of more than 200 US patent applications. Of these cases, 49% are on behalf of our direct clients; 33% are from European associates, and 16% are from associates in the Far East.

Overall, among the cases filed, there is a fairly even distribution between various fields of the life sciences (taken here to include biotechnology, pharma and medical devices) and various fields of engineering (including computer-related inventions, telecom, general engineering and miscellaneous products), the former accounting for about 56% of the applications filed, with the latter constituting 44%. More specifically, the two largest areas are biopharma with 46% of the applications and computer-related, telecom and engineering with 41%.

Click here to see the granted patents for which our firm is responsible.

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Good News for Design Searching in Israel

In a significant development in the oft forgotten area of registered designs, the Israel Patent Authority has announced the launch of a sophisticated on-line database. The database, which was launched on June 9, 2015, has a sophisticated bi-lingual English/Hebrew interface which allows for searching by number, date, class, owner, licensee, and generally all of the information that a searcher may require.

The database may be accessed by clicking here.

This may be an opportune time to revisit some of the unique aspects of the Registered Design System in Israel 

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From the Desk of JMB: Women of Algiers – Long Felt Need & Notoriety – Shall the Twain Ever Meet?

Bah Humbug! (said Scrooge) was my reaction when I heard that Picasso’s ‘Women of Algiers’  had sold for the incredible price of  $179,365,000. This is amazing on so many counts. Not just because it is a record price for a painting, and not just because it was paid for a piece of art made in the 1950’s. It merely seems to be exactly the place that long felt need (by whom?) and notoriety (of?) do actually meet (with appropriate apologies to Patent and Trademark professionals as well as to Rudyard Kipling). I’m not saying that it isn’t a brilliant painting, merely wondering whether such funds could be better spent.

But enough of that.

Sort of.

You see, while “long felt need” comes from the world of patents,  whereas “notoriety” comes from the world of trademarks, and we as practitioners know exactly why these two worlds are so different and separate, that is only when sitting on our side of the table, where we are so comfortable, opposite our clients. In the clients’ world, however, the place where these worlds meet – indeed, goes hand in hand – is in the clients’ pockets. I have written previously on this subject (From the Desk of JMB: Soft IP or Hard Currency?) and will not belabor the point here.

However, when contemplating the sale of the ‘Women of Algiers’, it immediately brought to mind the absolute disconnect between the world of art and the world of industry in which IP transactions have become such a central feature.

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From the Desk of JMB: San Diego in May

San Diego in May
La Jolla Beach, Trademarks and so much more

“I’m going to San Diego next week” I said.

“Really? I heard it’s great in the spring” said my friend.

Me: “It’s not a vacation”

Friend: “Are you kidding? The best climate in the world, USS Midway, San Diego Zoo, La Jolla Beach…”

Me: “No, really. I’m only going for a few days. I arrive on Sunday and leave on Wednesday”.

Friend: “Are you crazy? San Diego is great, but after travelling half way around the world, and with the 10 hour time difference between there and Israel, how much are you going to be able to see?”

Me: “Actually, I’m going to INTA. It’s the biggest annual event for the IP world, and I’ll be there.”

Friend: “Yeah. I’ve heard about that. Spending quality time with 10,000 of your closest friends!”

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From the Desk of JMB: Trademarks: Going All the Way

So there it is. The identity of the importer of the apparently counterfeit articles apprehended by the Customs Authorities just dropped into my inbox.  Well, that’s to say it was enclosed in an email from said authorities. You’d think that the importers of the counterfeit products would have learnt by now that their products will be examined, seized and probably destroyed.

It’s funny. I make this sound like it happens every day. I mean, it does, but not in exactly the way that it might sound from what I said above. Let’s start again from the beginning of the story.

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