News
THE 7 MUST-DO’S AT INTA (Clue: It’s all about the people – including you)
They say that it’s easier to give advice than to take it; especially your own advice! That may be true, but in this case it’s only because I won’t be able to be at INTA this year that I have been thinking about what I’ll be missing. What this is not: this piece is not about behavior at INTA, remembering business cards, where to stay, how to schedule and so on. We all receive tips on how to conduct business meetings, networking and so on. This is not about that. What this is: as INTA is about people – human beings – fellow citizens of the earth – (you get the idea) more than anything else (yes, including IP and […]
Read more >>Further Expansion of US and Israel Practice Teams
We are pleased to announce a further expansion of our US and Israel Practice teams with the addition of Mr. Avraham Hermon, as of January 1, 2018. Prior to joining JMB Davis Ben-David, Mr. Hermon had in-house experience in a number of Israeli pharmaceutical companies including Teva Pharmaceutical Industries Ltd. At Teva he led a team of patent attorneys in providing opinion on potential new developments for the company and prosecuting patent portfolios relating to the company’s innovative pipeline and marketed products. In addition, Mr. Hermon has extensive experience in private practice, assisting leading universities and companies in patent drafting, prosecution, litigation, contractual issues and opinion work. Mr. Hermon’s technology focus includes pharmaceuticals, biotechnology, medical devices, veterinary medicines and computer-related […]
Read more >>Welcome a new member of our firm
We are pleased to announce the expansion of our US and Israel Practice teams with the addition of Mr. Eviatar Aron. Mr. Aron’s key areas of expertise include Electrical Engineering, Software and Algorithms, and Hi-Tech. He also has substantial experience in the fields of medical devices, agriculture, and mechanical engineering. Mr. Aron’s skills will, in particular, provide a significant addition to our US practice, as well as a valuable resource for our clients whose areas of development include the digital and electronic arts. Licensed to practice before both the US and Israel patent offices, Mr. Aron received a B.Sc in Electrical Engineering from Boston University, and a JD from St. Thomas University. He is also a US Attorney licensed by […]
Read more >>OFFICE AND HOLIDAY SCHEDULE 2017-2018
Normal office hours are as follows: Sunday – Thursday for Israel and US filings 06.30-16.30 GMT 08.30-18.30 Israel Standard Time 15.30-01.30 Japan On Friday for US filings only 06.30-13.00 GMT 08.30-15.00 Israel Standard Time 15.30-22.00 Japan TELEPHONE NUMBERS 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 2017-18, during which our office premises and the IPO will be closed: HOLIDAY DATES DAYS Rosh Hashanah (Jewish New Year) September 21-22, 2017 Thursday-Friday […]
Read more >>From the Desk of JMB: A High Value Business Tool or the Illegitimate Child of IP?
A new Designs Law has just been enacted in Israel, and is due to take effect in about one year from now. The need for a new law has existed for a long time, due to the current system being based on the Patents and Designs Ordinance (‘the Act’) of 1924. To say that this change is well overdue would be a gross understatement. So what has taken so long? When pondering that question I recall a roundtable discussion that I attended on The Hague System of international design registration. I estimate that this was probably about 8 years ago, at one of the big international conferences, and all present agreed that designs were the “illegitimate child of IP.” If […]
Read more >>Newsflash: China to Prioritize Patent Examination in Certain Fields
According to an announcement on the English website of SIPO (the Chinese Patent Office) on August 3, 2017, the examination of patents in certain fields will be given priority, starting from August 8, 2017. These include inventions in the following fields: energy saving, environmental protection, new-generation information technology, high-end equipment manufacturing, new energy, intelligent manufacturing, Internet-related inventions, big data, cloud computing, sectors with fast evolution in product or technology. To learn about your patenting options in China, contact me at: Jeremy.Ben-David@jmbdavis.com
Read more >>1: 3 Things You Should Know About IP
Intellectual Property
What is it?
Why is it important?
When should we start registering our IP rights?
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.
Read more >>2: 3 Things You Should Know About Public Disclosure
Public Disclosure
What is it?
Why is it important?
When can we publicly disclose information relating to our invention?
JMB’s extra Q&A:
Q: Why do you keep mentioning a “fully drafted” patent application? I’ve heard that a Provisional application can be filed in the US Patent Office, and that it will give you a “priority right”, so why can’t I just go online and file a Provisional application that I have written?
A: You can write and file your own Provisional application, but that would be a bad idea. The reason that you need a fully drafted patent application is that your priority right is only as good as what you describe and show in the first application. If you make mistakes, miss out important features or try and describe them in a way which is unacceptable according to the relevant law and rules which govern what needs to be in a patent application, those mistakes cannot be corrected. So, if you file a first application which has not been drafted by a Patent Attorney (and will therefore almost certainly not be fully or properly drafted), and then publicly disclose your invention, you may also have given away your ability to patent your invention.
NB: Even if your application is fully drafted, you must not disclose an extension of your idea without first filing a new application for it as, by definition, it will not have been included in your original application.
Read more >>3: 3 Things You Should Know About Secrecy Agreement
Secrecy Agreement
What is it?
Why is it important?
When should I use a Secrecy Agreement?
JMB’s extra Q&A:
Q: Sometimes you feel like you have no choice. You can’t file a patent application, yet you can’t rely on an NDA. So what can you do?
A: ‘Not having a choice’ normally means one of a several situations: (i) there’s no money to pay for a patent application to be fully drafted, and you need to disclose the invention to a potential investor; (ii) you have the money, but don’t want to spend it until you have received feedback from others in the market that your idea is a good one; (iii) you don’t know how to build your invention, and you need the input of a professional so as to help you.
If the only thing you can do before you’re able or willing to file a patent application is to rely on an NDA, try to ensure that the person to whom you’re about to tell your secrets is someone that you would trust even if they just gave you their word (they should still sign though). If there’s no one like that that available, try to
get a recommendation from someone that you trust as to the reliability and trustworthiness of the potential inventor, engineer or design company that you plan to speak to.
4: 3 Things You Should Know About Your Inventions
What is a Patentable Invention?
What is a good invention for your business?
When do I need to evaluate my inventions and potential patents?
JMB’s extra Q&A:
Q: I’m still not sure when I should file an application. I don’t even know if I have a patentable invention. All I’ve done is combine several known devices and components; is that enough for a patent?
A: There is no requirement to invent any new components so as to qualify for a patent. In fact, many patents have no new components whatsoever. What is required, however, is to have a new result, a significantly improved device or system, or a method or process that works better than the closest method or process, even if all you have done is to leave out some steps or change their order. If you are satisfied that you have reached such an improvement and you can explain this in writing based on facts or realistic, science-based conclusions, you may have enough for a patent. What you then need is to find a Patent Attorney and see if he or she agrees with you.
Read more >>
