Israel Patent Application Number 190197 to Israel Aircraft Industries titled “A Method for Performing Exo-Atmospheric Missile’s Interception Trial” was allowed and published for Opposition purposes. Refael Advanced Weapons Systems LTD opposed the patent issuing.
After a hearing of the evidence on 20 January 2016 and before the parties submitted their summation statements, Israel Aircraft Industries requested submitting a copy of PCT/IL2009/000303, the international application claiming priority from IL190197.
Section 67 of the Patent Regulations 1968 states that the end of the evidence stage is the hearing, and further evidence may only be submitted at the discretion of the Commissioner of Patents:
Neither Applicant or Opposer may file further evidence unless with the permission of the Commissioner.
The consideration for allowing such late submissions are the relevance of the evidence. See IL 179840 Aminach Furniture Industries vs. Moshe Gabai et al. (20/11/2014) Section 12. The question of relevance means the likelihood of the relevance swaying the decision if allowed.
The courts have detailed additional considerations for allowing late evidence in Civil Appeal 579/90 Mordechai and Gila Rizin vs. Rsipporah bin Nun (5/7/1992) and includes the type of evidence, where a simple technical fact is more easily submitted than a complex and tenuous scientific or legal argument, the stage of the proceedings, and whether or not the side bringing the evidence could and should have known about it earlier. However, as the Supreme Court ruled in the Aminach Appeal, the Patent Office has a slightly different duty to that of the courts in that it does not merely arbitrate inter-partes proceedings, but is responsible for the integrity of the patent register, meaning that it has a public responsibility to prevent patents from issuing where they lack novelty or inventive step.
The issue here is that the original application used the term ‘decoy’, but in the international stage, the term ‘dummy target’ was substituted. The additional evidence was submitted after the opposer related to the change in terminology during the hearing, during cross-examination of the Applicant’s witness Dr Robinski. Following the witness’ response during the hearing, the Opposer alleged that the Examiner had been misled by the Applicant switching the figures and terminology from ‘decoy’ to ‘dummy target’, followed by claiming that the prior art related to decoys whereas the present invention related to dummy targets.
The Applicant responded that the International Application which he wished to submit as evidence, showed that there was no attempt at deceit. Furthermore, the International Application was before the Examiner when this application was examined. The Opposer does not deny this, and the whole International file-wrapper including the International Search Report were before the Examiner.In such circumstances, it is highly doubtful that if the International Publication had been cited during the hearing by either party, that the opposing party would have opposed this as submission of new evidence.
The parties disagree as to the relevance of the international application and to whether it sheds light on the patentability of the Israel Application and whether the Examiner was misled.
Without relating to the main issue of patentability and misleading the Examiner which belongs in the ruling and not in an interim-judgement, the Commissioner, Asa Kling, is willing to allow the International Application to be submitted as additional evidence at this late stage of the proceedings.
This is justified, since it is clear that the Applicant would not have needed to file this additional submission if it were not for the line of attack taken by the Opposer at the hearing. Consequently, it does not appear that the Applicant was holding back this evidence to spring it on the Opposer at this late stage. Citing 2212-11-12 Merck & Co. Inc. vs. Teva (6/12/2012): To the extent that allowing this evidence to be submitted now, disadvantages the Opposer, this can be dealt with in the costs ruling. Consequently, the International Application may be submitted as additional evidence.
The Applicant has 7 days to submit the International Search Report together with an Affidavit. The Opposer will then have a further 7 days to cross-examine the signor of the Affidavit about this additional evidence. Following this, a decision regarding the future of the proceeding will be given.
Costs for this stage will be addressed in the costs ruling after the final decision.
Opposition to IL 190197, Interim Decision by Assa Kling, 14 April 2016.
COMMENT
In duck shooting, a decoy is an artificial duck, often made of wood, that attracts other ducks to a body of water, so that they can be shot. I assume that taking out missiles is somewhat different, and if the wrong term was used, it was more likely due to imperfect English of the patent attorney, possibly mislead by the inventor who typically has even poorer English. It is unlikely that there is an attempt to mislead.
