Recent Israel Patent Decisions: Timing Isn’t Always Everythi

Cancelled Israel Opposition Cancelled Again

Sazka is a Czech company that offers online gaming services. When their patent application number 163671 was opposed by Partner, Cellcom, and Pelephone (Israel’s three mobile phone carriers) and by Mifal HaPayis (the Israel National Lottery), the attorneys for Sazka successfully persuaded the Israel Patent Office to relieve them of their representation and fiduciary duty, since the applicant was unresponsive and contact was lost. A byproduct of lack of local representation is that there is no local address of record and so the Opposition case was closed.

However, Sazka came out of the woodwork and requested that the case be reopened, and that they be allowed to respond to the opposition. Since Israeli judicial practice prefers issues to be resolved on their merits rather than on procedure, the Deputy Commissioner of Patents allowed the case to be reopened on condition that the applicant post NIS 150,000 (about $41,000) bond for each of the four opposers, to guarantee awarded legal costs if any. This step was taken because there had been a problem finding the applicant, and the opposers, if successful, deserved to receive costs. A more modest NIS 5,000 (more than $1,300) costs was awarded to each opposer for the reinstatement.

Comment

In the past, the Israel Patent Office has generally refrained from awarding legal costs of this magnitude. It is not clear if bond is posted and the case continues, whether costs of this magnitude can be expected by the victor.

Late Submission of Evidence Allowed in Opposition Proceeding Concerning an Israel Patent to Merck
In opposition proceedings concerning Merck’s patent application number IL 172563 for “Phosphoric Acid Salt of a Dipeptidal Petidase-IV Inhibitor” Teva Pharmaceuticals requested permission to submit an opinion by a medical expert concerning experimental evidence conducted under his supervision. The opinion was relevant, but the correct time to submit it was before the deadline for submitting evidence which had passed.

Regulations for patent opposition proceedings in Israel and the general civil law procedure require all evidence to be produced at the proper time. However, substantive issues generally take precedence over these formalistic requirements. Teva did not have the material at the proper time since the experiments had not yet been performed. As such there was no issue of bad faith in the late submission, which was not a delaying tactic since the evidence simply was not yet available. However, this late-filed experimental evidence was crucial in determining whether Merck deserved a patent, and if so, its scope. Consequently, the Deputy Commissioner of Patents ruled that late submission of the evidence was allowable, but awarded costs of NIS 5,000 to Merck as a form of punishment to Teva for deviating from the correct procedure.

The main ruling is awaited.

The case: Opposition re IL 172563 to Merck.