LEGAL UPDATES
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ILPTO Update: Patent Oppositions No Longer Automatically Stayed
According to a series of recent ILPTO decisions, the ILPTO will no longer stay opposition proceedings against the parent application pending the examination of its divisional applications, if the stay is likely to significantly delay the opposition to the parent. Israel is a pre-grant opposition country. The stay of opposition proceedings pending the examination of…
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ILPTO update: Intent to deceive is a prerequisite for finding of Fraud on the PTO
In a recent decision the ILPTO reiterated that subjective intent to deceive is a prerequisite for imposing sanctions on patentees who violated the strict disclosure obligations under the Patents Act. A mistake in good faith by the inventor or the agent prosecuting the application does not amount to Fraud on the PTO and will not…
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ILPTO Update: Second medical use SPCs are irrelevant in determining the term of IL PTEs
In a recent judgment, the IL Supreme Court clarified that supplementary protection certificates (SPCs) granted in the EU5 countries, which are not based on the first marketing authorization for an active ingredient, should not be considered in determining the term of IL PTE orders. Boehringer Ingelheim filed a petition for PTE in Israel with respect…
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IL TM Update: Parallel Imports Not Permitted in Cases of Split TM Ownership
In a recent precedential judgment (CA 7934/20 Jafora v. Ben Shlush), the Israel Supreme Court held that in cases of split ownership of the same trademark in Israel and another country, trademark rights are not exhausted and parallel imports are not permitted. Jafora, Israel’s second largest manufacturer of soft drinks, is the registered owner of…
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ILPTO Update: Impact of cancellation of first product registration on validity of the IL PTE
According to a recent controversial District Court judgment (Wyeth v. The Manufacturers’ Association of Israel), even when switching to a new generation product comprising the active ingredient, it is still necessary to maintain in force the original product registration on which the IL PTE was based (the first registration permitting the use of the active…
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ILPTO Update: Non-Extendable IL PTE Deadlines
The ILPTO recently reconfirmed that missing the 90-day deadline for reporting the grant of a US PTE, which fulfils the ‘Two-State Requirement’, results in loss of PTE eligibility. The IL PTE system is based on the ‘Two-State Requirement’ linking eligibility of IL PTE to the grant of PTE/SPC in the US and in at least…
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ILPTO Update: ILPTO Recognizes Strawman Oppositions
In a precedential decision, the ILPTO recently recognized for the first time the admissibility of strawman oppositions. Under Israeli law, any person can oppose a patent application prior to its grant. There are no limitations on the standing to oppose and the opponent does not need to establish any particular interest in the proceedings. Strawman…
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ILTMO Update: New Instructions on ‘Cannabis Trademarks’
In a recent decision, the ILTMO held that ‘cannabis trademarks’ and trademarks containing derivatives of the word cannabis must be limited to cannabis-related goods and that the use of cannabis trademarks in connection with non-cannabis products may render them deceptive and subject to revocation. Applicant filed a trademark application for the mark CANNASMETICS in classes…
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ILPTO Update: The Deadline for Filing Divisional Applications Cannot Be Extended
The ILPTO clarified in a recent decision that divisional applications can be filed only until the allowance of the parent and that this deadline cannot be extended nor circumvented by seeking cancellation of the allowance of the parent application. Under IL law, divisional applications can be filed only until the allowance of the parent application.…
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IL TM Update: Important Decision on Non-Use and Recordal of Trademark Licenses
In a recent important decision, the ILTMO held that revocation of a trademark registration on grounds of non-use is discretionary and that registrations of well-known trademarks will not be revoked even if the use requirements were not satisfied. The ILTMO also significantly mitigated the adverse non-use consequences in case of failure to record trademark licenses.…