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Daniel Feigelson
I'm an Israel-based patent practitioner who practices before both the Israel and U.S. Patent Offices
Recent Activity
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1. I wrote last month about a glitch in the ILPTO’s online payment system that forces patentees’ agents to login and pay renewal fees in two stages, rather than do it at one go. A similar situation has now arisen, with an additional twist: the renewal fees for years 11-14... Continue reading
Posted Nov 16, 2017 at America-Israel Patent Law
We have a patent for which renewal fees are due. The application was filed January 12, 2012. The patent was granted on September 30, 2017, so renewal fees for years 0-6 are due by December 30, 2017. Renewal fees for years 7-10 are due by January 12, 2018, and by... Continue reading
Posted Oct 15, 2017 at America-Israel Patent Law
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I wrote last year about the legal wrangling between Delaware North (DNC), which held the concessions at Yosemite National Park until the end of February 2016, and the National Parks Service. DNC had held the concession for over 25 years when it lost a tender for continued service to Aramark.... Continue reading
Posted Sep 14, 2017 at America-Israel Patent Law
Agreed; that's what I alluded to about the transfer possibly being deemed a sham. Although at first blush, it seems to me that's a harder case to make than with the corporate veil situation, where the court basically says to the shareholders (usually just a handful of them in a privately held corporation), You can't hide behind the corporation, you're responsible for what the corporation did/owes. Here, the statute says that patents shall have the attributes of personal property (35 USC 261). That includes alienation of the property. So it may come down to showing that de facto Allergan didn't really give up ownership of the patents, as you've suggested. Thing is, I don't see a meaningful difference between the present situation and the situation of university that owns a pharmaceutical patent and licenses it to a company that can actually market the thing (think Princeton/Lilly and Alimta, or Weizmann/Teva and Copaxone). There's a difference in how the situations arose, but ultimately here as with the universities it's the licensee that's calling the commercial shots, with the patent owner merely collecting royalties. And that arrangement is a common one in the patent world, so I can see most judges being reluctant to tamper with the tenets of so long-standing a practice. It will be interesting to see how this one plays out over time.
Interesting news item from last week: according to Allergan’s web site, on September 8 Allergan and the Saint Regis Mohawk Tribe announced that Allergan had assigned several patents to the Tribe. The patents are listed in the Orange Book for Allergan’s Restasis product, a formulation of cyclosporine for ophthalmic delivery.... Continue reading
Posted Sep 11, 2017 at America-Israel Patent Law
We’ve blogged before about modified examination in Israel under section 17(c) of the statute. Per §17(c), if a corresponding patent is granted in certain other jurisdictions, one can gain a quick allowance in Israel by amending the claims so that they’re identical to the ones granted elsewhere, and requesting allowance... Continue reading
Posted Aug 3, 2017 at America-Israel Patent Law
I think every US practitioner who uses EFS/PAIR has encountered the situation where they upload a document via EFS and classify is as one thing, which is initially how the document is labeled in the image file wrapper (IFW), but then someone at the PTO later re-classifies the document as... Continue reading
Posted Jul 10, 2017 at America-Israel Patent Law
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There’s a thread today on Carl Oppedahl’s EFS listserv about the processing of new US patent applications being delayed while a national security review takes place. Many people may not realize it, but every US patent application is reviewed to see if its publication, and dissemination outside the US, should... Continue reading
Posted Jun 13, 2017 at America-Israel Patent Law
Before you answer that question, first read this story that appeared on the Fox News website under the headline “UN agency helps North Korea with patent application for banned nerve gas chemical”. Then after you’ve read it, write me offline to explain the differences between Fox and the Enquirer. Because... Continue reading
Posted May 31, 2017 at America-Israel Patent Law
Last month the ILPTO published final versions of two circular notices; the drafts of these notices were discussed at length here, here, here, here and here. The final versions aren’t terribly different from the draft versions, with the most noticeable change coming in the parts that relate the claiming of... Continue reading
Posted Apr 30, 2017 at America-Israel Patent Law
I don’t think any readers of this blog have been living in a cave for the last 25+ years, but if you have, one of the most popular comic strips in the USA is Dilbert, written by Scott Adams. The strip usually depicts life (if it can be called that)... Continue reading
Posted Mar 23, 2017 at America-Israel Patent Law
I feel like every time I use the ILPTO's electronic filing system, I discover another bug...and another potential work-around. The latest? Read on. We've got a national phase application that's been sitting at the ILPTO for several years. They still haven't published it under 16A (18-month publication or soon-thereafter-for-national-phase-filings). Needless... Continue reading
Posted Mar 2, 2017 at America-Israel Patent Law
Over the course of the past 10 years or so, the ILPTO has been moving in the direction of speeding up examination of patent applications. Most noticeably, the ILPTO has significantly increased the number of examiners, but it has also put procedural mechanisms into place to ensure that the queue... Continue reading
Posted Feb 13, 2017 at America-Israel Patent Law
This is the fifth installment of our discussion of the first of two recent draft circulars, “Draft Circular 34/2016”. Part G is directed to the suspension of examination of a later application due to an earlier application. “30. Section 19 [of the statute] establishes that an examiner may suspend examination... Continue reading
Posted Feb 2, 2017 at America-Israel Patent Law
This is the fourth installment in our discussion of the first of two recent draft circulars, “Draft Circular 34/2016”. Part E concerns “Claims that refer to drawings and examples to define properties or technical aspects of the invention”, i.e. omnibus claims. Until sometime during the tenure of the Commissioner who... Continue reading
Posted Jan 24, 2017 at America-Israel Patent Law
Continuing with discussion of the first of two recent draft circulars, “Draft Circular 34/2016”, Part C pertains the order of examination of “Green” patent applications, viz. “those patent applications that the invention described therein assists in improving the environment, inter alia by preventing causes of global warming, reduce pollution of... Continue reading
Posted Jan 18, 2017 at America-Israel Patent Law
Yesterday I noted that the ILPTO had published draft "circular notices" and requested comments on them. Today we continue with discussion of the first of these draft circulars, “Draft Circular 34/2016”. Part B of this draft circular is directed to "use" claims. “9. Section 3 of the statute establishes that... Continue reading
Posted Jan 10, 2017 at America-Israel Patent Law
The Israel PTO recently published two draft “Commissioner’s circular notices” (hozrei rasham in Hebrew available here and here), requesting comment by January 19, 2017 (to be sent to MitmahePatents@justice.gov.il). No explanations of the proposed circulars were provided by the ILPTO, although each one concludes with a list of earlier circulars... Continue reading
Posted Jan 9, 2017 at America-Israel Patent Law
On December 29,the ILPTO launched its electronic filing system for design applications. We haven't yet tested it ourselves...and based on the EFS for patents, we don't know if anyone practicing in the field actually tested it before launch. As with the electronic filing system for patents launched last year, use... Continue reading
Posted Dec 31, 2016 at America-Israel Patent Law
There’s a piece today in the Washington Post about how, when viewed microscopically, a cat’s tongue is seen as a perfectly-designed untangling hairbrush, which makes sense given how much time a cat spends licking its fur. The piece ends by stating, “[this research] could bring a cat-tongue-style brush to a... Continue reading
Posted Nov 30, 2016 at America-Israel Patent Law
One of the many defective aspects of the ILPTO's electronic filing system for patents is its failure to generate a downloadable receipt of submissions upon making those submissions. You upload the the documents for filing, press submit, and then it all disappears into the ether. Sometime later, you get an... Continue reading
Posted Nov 19, 2016 at America-Israel Patent Law
Carl Oppedahl is a patent attorney in Colorado, and besides having great views out his office window, he's a technophile who years ago set up a slew of listservs pertaining to different aspects of US IP practice. There are some sharp and knowledgeable people who frequent those fora, and over... Continue reading
Posted Oct 25, 2016 at America-Israel Patent Law
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Glad you're so sure. I'm not. The phrase in question could as easily be read as saying, "wherein the batches contain a base that ensures that when the batches are reconstituted in an aqueous solution for injection, the batches have have a pH of about 5-6". That's not a process step. Moreover, the mere inclusion of a process step doesn't necessary turn a composition claim into a product-by-process claim. It may just result in a claim that's invalid for reciting two different statutory categories of claims, like in IXPL Holdings v Amazon. Clarification from the court regarding its thinking would have been helpful.
I don't think the AIA changed this. In it situation you described, it sounds like the benefit claim to the US provisional would be lost for the USA, although many other countries might honor the priority claim to that provisional. What *is* different under the AIA is that there's no 102(e), so that provisional and non-US cases are afforded the same status for priority/benefit claims.