Beck Greener helps large University Tech Transfer Company with complex patent prosecution

Avi Freeman | October 2015

Background

Our client, Ramot at Tel Aviv University (Ramot), is Tel Aviv University's (TAU) technology transfer company and its liaison to industry, bringing promising scientific discoveries made at the university to industry's attention. The company provides the legal and commercial frameworks for inventions made by TAU faculty, students and researchers, protecting discoveries with patents and working jointly with industry to bring scientific innovations to market.

Through other European counsel, Ramot was working on the European patent applications relating to a new device, in an area of significant current commercial interest.

The challenge

Due to international commercial dimensions, refusal of one particular European patent application in the portfolio was not an option from the client’s perspective.  However, refusal of the application was threatened after several rounds of correspondence with the examiner. 

Publications had been cited by the Examining Division of the European Patent Office (EPO) in the course of regular examination.  The approach to prosecution being followed was apparently at the end of the road.  Oral Proceedings before the full Examining Division had been appointed, and preliminary indications from the Division pointed unequivocally towards refusal.

Avi Freeman, Beck Greener’s head of Physics and Engineering, recommended by different outside counsel in Israel, was contacted directly by Ramot to represent it at the Examining Division Oral Proceedings.

Action taken

After a brief review of the papers and the prosecution history in a fiercely complex technical area, Avi immediately took on the case despite that fact that it was barely two weeks until the date for final written submissions prior to the Oral Proceedings.

Working closely with the in-house VP of IP at Ramot, Dr Shulamit Hirsch, and the academic inventors, a number of new requests (including claim amendments) were made and filed. 

Due to the importance of the case and the number of issues raised, Ramot decided to have, as well as Avi Freeman, Dr Hirsch and one of the inventors Dr Ofer Amrani at the hearing.

Result

Despite the time pressure, our preparations and attention to detail paid off.  One of the newly submitted requests, after extensive and lengthy oral argument at the hearing, was finally accepted by the Examining Division as being novel and inventive.  From a position of almost certain refusal an allowance was obtained providing a commercially and strategically useful patent. 

Dr Hirsch said:

“Given how the prosecution had gone, I was concerned that the acceptance of this patent application would be considerably delayed.  I was directed to Beck Greener through a local attorney in Israel who had previously worked with Avi and recommended him highly.  Despite all the pressures of the situation, Avi and his team quickly came to terms with the subject matter and understood our commercial goals and strategy.  He formulated requests which he felt would give us a chance and then executed the hearing efficiently and effectively to ensure the desired result.  We moved from a situation looking almost certainly like a refusal to ending up with a useful granted patent in Europe to support our worldwide commercial strategy.  I was delighted to have been introduced to Avi and the Beck Greener team; due to the combination of their careful preparation, attention to detail, commercial nous and legal and technical expertise we got the result we needed.”

Dr Shulamit Hirsch | VP of IP at Ramot Tel Aviv University