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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
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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Another Example of How To Fleece Clients Without Them Knowing (Part 1)
This is the first of several posts about an interesting situation. X is a patent practitioner here in Israel. He’s a very smart guy, and he’s one of the straightest arrows I know. Y is also a patent practitioner here in Israel. Y holds a senior position in a Big... Continue reading
Posted Jan 15, 2019 at America-Israel Patent Law
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Timely Processing By The ILPTO Electronic Filing System
Posted Dec 30, 2018 at America-Israel Patent Law
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Good Idea, Bad Implementation? ILPTO Changes Procedure for Suspending Examination of Patent Applications
We’ve blogged before about the ILPTO’s policy for suspending examination of patent applications. In particular we noted how its collection of fees for such suspension is ultra vires, and how a better approach, within the ILPTO’s authority, would be allow applicants to delay their response to pre-examination letters by up... Continue reading
Posted Dec 18, 2018 at America-Israel Patent Law
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USPTO: Making It Up As They Go Along, And No One To Talk To
Not long ago we filed a continuation application at the USPTO, the most recent installment in a chain of applications. The applications all have the same specification and drawings. All were published in pre-grant format, several patents have already issued and published by the USPTO, and the immediate predecessor application... Continue reading
Posted Sep 27, 2018 at America-Israel Patent Law
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In the Wake of Computer System Outage, USPTO Does the Right Thing
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
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No Sovereign Immunity for YOU, St. Regis!
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
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