Following a short visit to the UK with Dr. Mike Hammer, head of our US practice, I can safely say that Her Majesty’s IP economy is not merely alive and kicking, but full of opportunities. Some may say that this is due to the implications of Brexit, while others may say that this is despite them. But there they are, nonetheless, and I will try to relate to those that as a visitor, I have identified.
- Exchange rate fluctuations
- Patent Box advantages
- GB and DE and GPPH
- Design and Trademark – separation anxiety
- The rediscovery of the UK
Let’s start at the beginning.
3 Things You Should Know About IP
What is it? Intellectual Property (IP) is a term which includes patents, designs, trademarks and copyright. It is the main asset of many companies and certainly of most start-ups and relates to the rights surrounding technology or knowledge owned by them.
Why is it important? Virtually all the assets of a start-up or of a new project within a mature company emanate from the knowledge on which the start-up or project is based. Establishing ownership of these knowledge-based assets is crucial to the development of the company.
When should we start registering our IP rights?
For patents, the short answer is: “before your competitor “. For a technology or medical device company, this means that for each invention you should start the patenting process as soon as you are able explain to another person how your invention works. For a life sciences company, where tests are required to prove that the invention works, you should start consulting with a Patent Attorney as soon as you can explain the science, define the tests you plan on carrying out and the results you expect.
For design registration, you must register before advertising the product.
For trademark registration, there is no set time. However, experience teaches that if you have a trademark that you want to keep, apply to register it before you disclose it. (Note that this is a practical, not legal requirement) If your mark is attractive to you, it will be attractive to others too. And if you don’t register it, someone else will.
JMB’s extra Q&A:
Q: On occasion, I’ve been told by an entrepreneur that he doesn’t really believe in IP, but he’s ‘doing it’ because his investors want it. If I don’t believe in IP, then isn’t it a waste of money?
A: The objective need to obtain IP assets for your company is not a matter of belief. It’s very practical. It is important to investors, partners, potential customers and competitors. A technology company without IP rights may be technology rich, but will be fortunate indeed to become a commercial success.
Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!
From the China Desk of JMB: Celebrating The Year of the Rooster (Every Crowd Cloud has a Silver Lining)
The new Chinese year is the Year of the Rooster. As we move away from the western new year celebrations, I would like to congratulate the Chinese entrepreneur, wherever he or she may be. It’s easy to tell when the Chinese entrepreneur is doing something right – all you need to do is to look at the faces of their counterparts in the West; they’re green with envy. I have no other explanation than that of pure envy for the myriad entrepreneurs or would-be entrepreneurs in the West and their cries of ‘foul’ in response to the Chinese copying of products from public postings on the internet.
Happy New Year 5777!
On the occasion of the Jewish New Year 5777, JMB Davis Ben-David wishes its colleagues and clients health, happiness and prosperity.
OFFICE AND HOLIDAY SCHEDULE 2016-2017
Please note our office hours, as follows:
Sunday – Thursday
08.30-18.30 Israel Standard Time
08.30-15.00 Israel Standard Time
Main Office: +972-2-571-4777
US Hotline: +1-503-895-0105
The Israel Patent and Trademark Office (IPO) is open Sundays – Thursdays, and closed on Fridays and Saturdays. Should a due date fall on a Friday or a Saturday or any official holiday, the deadline for performing an action is postponed to the following Sunday.
The following is our holiday schedule for 2016-17, during which our office premises and the IPO will be closed:
|Rosh Hashanah (Jewish New Year)||October 3-4, 2016||Monday – Tuesday|
|Yom Kippur||October 12, 2016||Wednesday|
|Succot (Feast of Tabernacles)||October 17 – 24, 2016||Monday – Monday|
|Passover||April 10-17, 2017||Monday – Monday|
|Israel Independence Day||May 2, 2017||Tuesday|
|Shavuot||May 31, 2017||Wednesday|
Have you ever had questions about registering a patent in Israel?
We’re pleased to announce that the JMB Davis Ben-David website includes the section From Filing to Maintenance. All the information that you need for patenting in Israel is available at your fingertips!
Here are some tips to start:
1. You patent application can be filed in English, Hebrew or Arabic, although initially, a temporary specification may be filed in any language.
2. The total number of claims is unlimited (although subject to official fees payable prior to the commencement of examination for the 51st claim and on).
3. Excluded types of claims are (i) those directed to therapeutic treatment of humans, (ii) new uses of existing substances, (iii) new varieties of plants or animals, (iv) software and business method.
4. Swiss-type claims are patentable.
5. Requesting acceleration of examination of a patent based on a parallel patent that has been registered elsewhere can be requested via the Patent Prosecution Highway (PPH).
6. During examination, there is no limit on the number of Office Actions.
7. There is an ongoing duty of disclosure of all prior art cited during the examination of corresponding applications in other countries. This starts from the time of filing a response to the Notice Prior to examination until allowance.
8. Opposition Period: After payment of the issue fee, the application is published for opposition. If, after three months, no opposition has been filed, a patent will be granted.
I have suggested, on more than one occasion, that anti-IP lobbyists are the equivalent of modern day Luddites. However, many of us, at some stage in our life, have experienced a temptation to buy an article which they know flouts the rigid possessiveness of intellectual property rights. Merely being IP attorneys doesn’t exempt us from that temptation, per se, but it has led me to consider how IP law affects the lives of non-IP practitioners; the distinction between IP practitioners and everyone else (the other 99.99999% of people that inhabit this planet) being important merely in terms of awareness of IP law.
So how does IP affect our everyday lives? IP rights are everywhere, and underlie much of our everyday activities, every time we go shopping, pick up a phone or go for a drive. The list is endless. But what is its purpose? And once we have established its purpose, are there any unintended benefits that it provides? Are there any direct, tangible benefits that those who do not actually own IP receive due to the existence of IP laws?
I have an admission to make. If I had to name a single individual who has captured my imagination over the past few decades, it would be Sir Richard Branson. I don’t know him personally. However, from the chutzpa he employed in 1967 when, aged 17, he sold advertising for his school magazine to the two local banks, through establishing the rather cheekily (or should that be “saucily”?) named Virgin Records and his subsequent successes in air travel and now space travel, spanning a period of close to 5 decades; he is everything that we in the IP profession can appreciate as a serial entrepreneur and visionary. In short, in the immortal words of Star Trek’s William Shatner, he has gone “where no man has gone before” (well, pretty much, anyway).
His achievements are all the more impressive as, throughout the early stages of his entrepreneurial career, as told in his autobiography “Losing My Virginity”, he operated on a shoestring budget, and generally was denied the backing of institutional banks that you would think might be available when, for example, setting up an airline. This, more than anything else, underscores his achievements, and his pioneering attitude of “Screw It, Let’s Do It” (this, coincidentally, being the name of another of his books.
So why do I choose to bring this up now?
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.
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.”
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.