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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
ILPTO Proposes to Stop Rejecting Divisional Applications for “Overlap” with Parent Cases
We have from time to time blogged about the Israel PTO’s obsession with “overlap” between patent claims, an obsession which in our view is unfounded, being based on a far too-expansive reading of section 2 of the Patent statute (see here, here, here, and here). The problem with the ILPTO’s... Continue reading
Posted Jan 6, 2020 at America-Israel Patent Law
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Google Translate Strikes Again
Posted Dec 31, 2019 at America-Israel Patent Law
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An Additional Implication of the High Court of Justice's Ruling Regarding Service Inventions
In the previous blog post I discussed the recent decision of the Israel High Court of Justice, which clarified that employee-inventors are not necessarily due compensation for their inventions, that their right to such compensation is conditionable, and that a properly drafted employment agreement will preclude such employees claiming compensation... Continue reading
Posted Dec 29, 2019 at America-Israel Patent Law
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High Court of Justice: Employees May Be, But Aren’t Necessarily, Due Compensation for Service Inventions
The Israel Patent Statute includes a few sections (131-136) dealing with inventions invented by employees. Section 132 establishes a default setting whereby an invention made by an employee during the period of his employment and as a result of his employment (aka a service invention) belongs to the employer. The... Continue reading
Posted Dec 26, 2019 at America-Israel Patent Law
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How NOT to Protect Your Company's Trade Secrets
Maybe in the future I'll post something about the basics of protecting trade secrets. Yesterday's Dilbert cartoon gives a good example of how NOT to protect a company's trade secrets or other IP. Continue reading
Posted Nov 21, 2019 at America-Israel Patent Law
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Patents and Butter; or, We Don’t Care. We Don’t Have To. We’re the USPTO (redux)
Posted Nov 19, 2019 at America-Israel Patent Law
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You Can’t Make This Stuff Up, Part 253: Expedited Examination, Indian Style
One of the difficulties with patent examination is that it can take a long time. If, as an applicant, you’re not in rush, that’s fine. But sometimes you don’t want to wait. For example, you may be poised to bring a product to market soon, and want patent protection as... Continue reading
Posted Oct 15, 2019 at America-Israel Patent Law
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Israel Joins the Hague System for Designs
Last week, Israel deposited the instrument of accession to the Geneva Act (1999) of the Hague Agreement. The Hague Agreement is to designs what the Madrid system is to trademarks: an international filing system that enables an applicant to obtain design protection in several countries at once. This accession to... Continue reading
Posted Oct 10, 2019 at America-Israel Patent Law
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Express Abandonment of an Israel Patent Application – A(nother) Disconnect Between the Statute and the Electronic Filing System
This post arises from a question that was put to me by a colleague. He wanted to expressly abandon an Israel Patent Application, but when he went into the electronic filing system to do so and chose “cancellation of patent” as his action, the system told him, “Nyeah nyeah nyeah,... Continue reading
Posted Oct 7, 2019 at America-Israel Patent Law
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Life’s A Cabaret (Or Maybe Not) – Gilead/Kite Renege on Royalty Payments to Cabaret Biotech
In late 2017 we wrote about how a deal involving technology developed at the Weizmann Institute resulted in litigation between two former friends and scientific collaborators, and how the case illustrates the difference between conceiving an idea and commercializing that idea. Now it turns out that the underlying deal, between... Continue reading
Posted Sep 16, 2019 at America-Israel Patent Law
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End of the Yosemite Trademarks Saga, And A New One From That Know-Nothing Party School
Posted Aug 18, 2019 at America-Israel Patent Law
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Keep Your Eye On The Ball - joint program of AIPLA/IDC, September 23 - registration is open
Subject matter eligibility under 35 USC §101, and the requirements for compliance with the written description and enablement requirements of 35 USC §112, have been areas of rapid legal development for several years. Unfortunately, these areas remain in flux: in the past year, the USPTO has issued new §101 and... Continue reading
Posted Aug 15, 2019 at America-Israel Patent Law
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Inventing Merit Badge
Posted Aug 8, 2019 at America-Israel Patent Law
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AIPLA-IDC Program on US Patent Practice, September 23 in Herzlia
Posted Jul 21, 2019 at America-Israel Patent Law
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They're Back: Yosemite Names Revert to National Parks Service
Posted Jul 15, 2019 at America-Israel Patent Law
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Interesting theory, Paul. We'll see if an allowance is forthcoming after we respond.
Commented Jul 3, 2019 on Reminders From the Patent Office Before Your Case Goes Abandoned: Has The USPTO Changed Its Policy? at America-Israel Patent Law
Reminders From the Patent Office Before Your Case Goes Abandoned: Has The USPTO Changed Its Policy?
It’s not unusual for a patent applicant to lose interest in an application. I see this most often in the context of failed clinical trials for a new drug; without a product to protect, there’s usually no reason to continue to pursue patent protection for that product. But there can be other rea...
Wow. Maybe this is a trend, and/or a new memo was circulated among the examiners telling them to call in these situations. Thanks for sharing that.
Commented Jul 3, 2019 on Reminders From the Patent Office Before Your Case Goes Abandoned: Has The USPTO Changed Its Policy? at America-Israel Patent Law
Reminders From the Patent Office Before Your Case Goes Abandoned: Has The USPTO Changed Its Policy?
It’s not unusual for a patent applicant to lose interest in an application. I see this most often in the context of failed clinical trials for a new drug; without a product to protect, there’s usually no reason to continue to pursue patent protection for that product. But there can be other rea...
Reminders From the Patent Office Before Your Case Goes Abandoned: Has The USPTO Changed Its Policy?
It’s not unusual for a patent applicant to lose interest in an application. I see this most often in the context of failed clinical trials for a new drug; without a product to protect, there’s usually no reason to continue to pursue patent protection for that product. But there can... Continue reading
Posted Jul 2, 2019 at America-Israel Patent Law
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How Not To Encourage Tech Transfer From Universities
Posted Jun 30, 2019 at America-Israel Patent Law
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USPTO Announces a Minor Fix In Pre-Examination Processing, But Is Still Externalizing Most Costs
I’ve written a few times on this blog about problems encountered with the USPTO’s pre-examination processing team (see e.g. here ), and have engaged in extensive discussions about these problems on Carl Oppedahl’s listservs. The main issue is that there are numerous ways in which an application can be defective,... Continue reading
Posted May 31, 2019 at America-Israel Patent Law
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Israel Joins WIPO’s Digital Access Service (DAS)
The ILPTO announced today that as of May 1, 2019, it will be a part of WIPO’s Digital Access Service. (An announcement to this effect appeared on WIPO’s site more than a week ago, on March 11.) This means that patent applicants who file in Israel who claim priority from... Continue reading
Posted Mar 20, 2019 at America-Israel Patent Law
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You Can KEEP Your PKIs (Until You Can't)
Posted Feb 15, 2019 at America-Israel Patent Law
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Addedum to "Another Example of How To Fleece Clients Without Them Knowing (Part 3)"
In response to January 17's post, an alert reader who wishes to remain anonymous pointed out that part of 8(d) of the APAI's "code of ethics" would seem to preclude an Israeli patent practitioner from listing himself an a "applicant of convenience" on a PCT application. For the uninitiated, an... Continue reading
Posted Jan 19, 2019 at America-Israel Patent Law
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Another Example of How To Fleece Clients Without Them Knowing (Part 3)
This is the third installment discussing a situation in which patent practitioner X listed himself as an inventor on an application he drafted and filed on behalf of Z, assigned all his rights to Z, and was then asked by by Y, the practitioner to whom the case was subsequently... Continue reading
Posted Jan 17, 2019 at America-Israel Patent Law
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Another Example of How To Fleece Clients Without Them Knowing (Part 2)
Yesterday I wrote about an interesting situation: patent practitioner X listed himself as an inventor on an application he drafted and filed on behalf of Z, and assigned all his rights to Z. X was asked by Y, the practitioner to whom the case was subsequently transferred, to confirm in... Continue reading
Posted Jan 16, 2019 at America-Israel Patent Law
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