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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
Due a major computer glitch, from August 15 through the 23rd inclusive, users of the USPTO’s PAIR system for monitoring patent applications, as well as its electronic filing system (EFS), were unable to access data on applications or to electronically file documents, including new applications. There’s much that could be... Continue reading
Posted Aug 31, 2018 at America-Israel Patent Law
On Friday a panel of the Federal Circuit (Judges Dyk, Moore and Reyna) ruled that sovereign immunity does not shield Indian Tribes from patent challenges via the inter partes review mechanism. In a nutshell, the panel noted that (a) Congress must explicitly waive tribal sovereign immunity, but (b) that’s only... Continue reading
Posted Jul 22, 2018 at America-Israel Patent Law
Gru: "We stole the Statue of Liberty! ... The small one from Las Vegas." USPS: uses an artist's version of the Statue of Liberty - the small one from Las Vegas - on a postage stamp without the artist's permission. In the movie, I don't think Gru had to pay... Continue reading
Posted Jul 6, 2018 at America-Israel Patent Law
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It's 11 PM. I try to log into the ILPTO's EFS, and I get this message: But I know I've got the correct URL, so I click on "continue to this website". Whereupon I get this screen: "This page under construction". There's no notice of a planned system outage anywhere... Continue reading
Posted Jun 28, 2018 at America-Israel Patent Law
Six years ago I wrote about Judge Rader of the CAFC and praised his reversing his position on a particular issue; judges don't always admit to mistakes in their jurisprudence, let alone seek to correct those mistakes given the opportunity. Yesterday in South Dakota v Wayfair, Inc. et al., a... Continue reading
Posted Jun 21, 2018 at America-Israel Patent Law
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Today the USPTO issued patent no. 10,000,000. My brother may speculate why they chose this particular one to be the ten millionth patent. But I'm wondering something else. Here's a graph of US patent grants since 1790: And here's a graph of global temperatures since 1850: Notice the similarities of... Continue reading
Posted Jun 19, 2018 at America-Israel Patent Law
This is a story about how a good idea that originated in the Israel PTO tripped over its own shoelaces (in a manner of speaking) when it was eventually enacted into law. The story begins in the late 1980’s, when the Israel PTO had a significant backlog in the examination... Continue reading
Posted Jun 15, 2018 at America-Israel Patent Law
Israel does not require patent applicants to file first in Israel (unless their inventions concern certain defense or nuclear technologies). And as a result, more often than not the first application gets filed outside of Israel. In our office, that first filing is almost always made either at the USPTO... Continue reading
Posted May 31, 2018 at America-Israel Patent Law
I also got through on Sunday. And spoke with an examiner today.
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Just tried calling an examiner at the ILPTO from a cell phone, and the call was terminated without any rings. So I tried again. Same thing. So I tried another number there. Same thing. So I tried calling from a land line. Got a busy signal. So I tried another... Continue reading
Posted Apr 12, 2018 at America-Israel Patent Law
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It's erev Pesah, when Jews increase their carbon footprint by symbolically burning their leavened products (aka hametz), which they're neither allowed to own nor possess (let alone benefit from) during the 7-day Passover holiday (8 days and loss of down if they're also penalized for living outside land of Israel).... Continue reading
Posted Mar 30, 2018 at America-Israel Patent Law
Zvi, regarding your second point, see http://www.iliplaw.com/americaisrael_patent_law/2016/06/memo-to-israel-pto-please-read-the-statute-before-you-take-your-electronic-filing-system-online.html
There’s a deadline approaching in a case I filed in Israel for a US colleague. Over the years I’ve handled a number of Israel filings for this person, and although we’ve taken extensions for this practitioner’s cases several times in the past, in view of the impending deadline he asked... Continue reading
Posted Mar 7, 2018 at America-Israel Patent Law
In a highly anticipated – and stunning – decision, the US Supreme Court today ruled not only that the Patent Trial and Appeal Board (PTAB) was constitutionally prohibited from entertaining Inter Partes Review proceedings, but that because of this lack of constitutionality, the entire “America Invents Act” (AIA), passed by... Continue reading
Posted Feb 28, 2018 at America-Israel Patent Law
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This is about a minor point in how the USPTO processes new applications that has bothered me on occasion. Since the adoption of the AIA, US patent applicants are required to file an “Application Data Sheet” in non-provisional applications. Basically this is a way for the USPTO to be provided... Continue reading
Posted Jan 31, 2018 at America-Israel Patent Law
The hottest story in Israeli biotech in 2017 was the August acquisition of Kite Pharma by Gilead Sciences for 11.9 billion dollars, and the announcement in October of FDA approval of the leading drug candidate that Gilead obtained in the purchase, Axicabtagene Ciloleucel, which is being marketed under the name... Continue reading
Posted Dec 31, 2017 at America-Israel Patent Law
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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