“Time is money” is a well-known quote attributed to Benjamin Franklin. Apart from being one of the Founding Fathers of the USA, he would have been quite at home in today’s startup scene, being, among other things, a famous inventor.
Another, less well known quote, attributed to the American author Ray Cummings, is “Time is what keeps everything from happening at once.” And while many of us in the IP profession would argue that it is Examiners (whether patent or trademark) who keep everything from happening at once, it is, regardless, useful to know when to expect the commencement of examination, terms for response, availability of extensions, and, ultimately, the expected time until allowance and registration of patents, designs and trademarks.
And this is especially so in a jurisdiction such as Israel, in which only a relatively small number of applications are filed and thus what happens on the way to registration is less well known than many other more popular jurisdictions such as the US, Europe, China and Japan.
There are various reasons why Israel is less sought after as an IP destination than other countries. Even though Israel has one of the strongest and most dynamic R&D bases in the world, and attracts significantly more venture capital investment per capita than other countries, these statistics generally inform the technology export-related indicators. You will therefore see a relatively large number of US patents registered to Israelis, and a very large number of Israeli technology companies trading on the NASDAQ (4th after the US, Canada and China).
In terms of the number of domestic and incoming IP registrations however, this is governed primarily by the size of the country (about 8.5 million) and the consequent size of the market; and this is why the infrequent patent or trademark filer in Israel remains unfamiliar with how these applications are prosecuted. And this is why we feel that our timeline pages for patents, designs and trademarks will be of value.
There is clearly much more to know about IP prosecution in Israel, and I invite you to peruse our website and write to me directly if you should have any questions about prosecution in Israel, or indeed, about any of the services we provide.
3 Things You Should Know About Public Disclosure
Note: This is the second in a series on IP for Startups. To view previous articles please click here.
What is it? Divulging knowledge to a third party who is not obliged to maintain the secrecy of the knowledge. This can be done by posting information on Facebook®, Twitter®, LinkedIn® or via other social media; by launching a crowdfunding campaign such as Kickstarter®, by posting information on any website, in any form whatsoever. This also occurs when sending information to potential service providers to obtain cost estimates or the like.
Why is it important? Knowledge is power. Providing knowledge to someone who could potentially use this knowledge for his or her own benefit is giving your power away. It can also make it impossible for you to obtain patent protection for an invention which has been disclosed, unless a fully drafted patent application has been filed before public disclosure of the invention. An exception to this rule is in the United States, which provides a limited grace period of one year following the date of public disclosure during which a patent application can still be filed without harm from the disclosure.
When can we publicly disclose information relating to our invention? In order not to risk your ability to patent your invention, any disclosure should be made only after a first fully drafted patent application has been filed so as to establish priority rights under the Paris Convention. Even then, bearing in mind that knowledge is power and having a patent application does not give the right to take legal action against an infringer (this can be done only after the patent has been registered), you should be careful how you disclose the information.
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.
Do you have questions about the above information? Are there subjects that you would like to hear about? Let me know!
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?
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.