Earlier this week the ILPTO published a decision of the Deputy Commissioner (DC) regarding a request to recognize a late-filed national phase application (IL 187147) as having timely entered the national phase. There have been a number of such requests over the years, and a few years ago the ILPTO adopted the view that applicants in such cases are subject to a “due care” standard. That’s not quite on the level of “unavoidable abandonment” as used in USPTO parlance, but it’s a higher standard than the USPTO’s “unintentional abandonment”. In this particular case, the applicant’s attorney timely notified him of the impending 30- and 31-month deadlines for national phase entry, and asked the applicant to indicate which 30- and 31-month countries he wanted to enter. Unfortunately, the attorney didn’t inform the applicant which countries fall into which category, and the applicant mistakenly thought that Israel was a 31-month country. As soon as the error was the discovered, the applicant took steps to get the application on file. The DC said that while the mistake may have been made in good faith, it didn’t evidence due care. To paraphrase, ignorance of Israel law is no excuse – the applicant could have readily ascertained that Israel is a 30-month country. Failure to do so does not constitute due care.[1] The DC’s decision in and of itself is unremarkable. What caught my eye was a statement the DC made along the way (my translation): “It is important to emphasize that the question of an extension [to file the national phase application] and the reinstatement of rights is not a procedural one, which would give way in the face the applicant’s substantive rights, but rather is a question of balancing the substantive rights of the applicant and the public. It is not lightly that the Commissioner takes a right that has passed to the public, and upon which the public can rely as such, and instead grants it to a patent applicant.” He then cited to an earlier ILPTO decision regarding a similar situation: “…the deadline for national phase entry is a matter of substantive law, at which time the invention passes from the PCT applicant…to the public, which is now permitted to use the invention as it wishes…in this case, the applicant stands the entire public, parts of which may have relied on the passing of the deadline [without the filing of a national phase application] to exercise its rights and use the invention”. In theory, the DC is right – failure to timely enter the national phase constitutes dedication to the Israeli public from the moment of the failure. But in practice the DC is absolutely wrong, because of Israel’s inefficient patent publication system. After an application is filed, notice of the filing is published in the Patents Journal.[2], [3] The Patents Journal is published, on average, once a month. If the Patents Journal included a listing of every new patent application filed since the previous publication, then the non-filing of a national phase application could indeed be taken as providing notice that the invention disclosed in the PCT application was now dedicated to the Israeli public.[4] But in reality, there is invariably a lag of several months to several years between the time an application is filed and the time the fact of its filing is published. For example, in the Patents Journal published on August 3, 2009, the most recently filed national phase application entered the national phase on November 23, 2008, a delay of over eight months; the earliest filed national phase application entered the national phase in November 2007, a delay of over 20 months. This in and of itself wouldn’t be so bad, if the ILPTO’s online public database was updated in real time to reflect national phase filings. But it’s not. Whereas the ILPTO’s own private database is updated in real time, the particulars of the national phase filing only become available on the public database as of the date on which the Patents Journal is published. Until then, the public has no idea whether or not a national phase application has been filed. And because of the long delay that can occur between national phase entry and publication, the lack of non-publication of the fact of national phase, even years after the fact, cannot be dispositive of the non-entry into national phase. So the DC’s conceit that, immediately upon failure to enter the national phase, the disclosed invention has been dedicated to the public, and that the public relies of the non-entry, is a canard. The only way “the public” can be apprised of the non-filing of a national phase application is to wait, and wait, and wait, until the 20 years from PCT filing have passed.[5] (Alternatively, if someone wants to know if a particular PCT application entered the national phase in Israel, they can try to get the information out of the ILPTO, but unless they have friends in the ILPTO itself, it may take some time for such information to be forthcoming, if at all.) Moreover, even after the fact of national phase entry has been published, the public has no idea of how prosecution of the application is proceeding, because the contents of all Israel patent applications are maintained in secrecy until the application has been allowed. That’s hardly a good way to apprise the public of potential limitations on its activities. Israel should get on board with the rest of world and let people in real time that national phase applications have been filed. The EPO’s public database is updated daily, enabling people to follow the progress of PCT applications in real time, even before the European regional application has been filed. Even at the USPTO, which only makes the contents of patent applications public (including national phase applications) after the USPTO itself has published the application, one can generally find the application number of a national phase application within a few weeks of its filing. The ILPTO could do likewise, without a change in the law. Better still would be for the ILPTO to open its pending applications to the public as soon as they are filed; but that would take an act of the Knesset, a body that moves even more slowly than Congress. It’s more likely that Israel will be nuked by Iran first. [1] In contrast, said the DC, most of the cases in which a late-filed national phase applications have been accorded timely filing status have fallen into one of two categories: the applicant confused the two letter code for Israel, IL, with that of Iceland, IS, which is a 31-month country; or the applicant assumed that in Israel, like most of the western world, Sunday isn’t a work day, and thus mistakenly thought that the filing deadline was Monday, not Sunday. The former situation, said the DC, is one in which the applicant took reasonable steps but because of a mistake received wrong information. The latter situation, said the DC, is due to unfamiliarity with Israeli society and that fact that it is Saturday, not Sunday, which is the national day of rest; it is not reasonable to expect foreigners to think that ILPTO is open on Sundays. In short, in these two situations, the late filing occurred despite the applicant’s efforts to clarify the law in Israel; in the present case, the late filing occurred because of the applicant’s efforts, or lack thereof, to clarify the law in Israel. [2] This notice contains bare-bones information: the application number and filing date, the title, broad international classification, the name of the applicant, the number and date of any priority applications, and, if a national phase application, the international application and publication number. At this point in time, the application file is closed to the public – even if the application is a national phase application, in which case the PCT documents themselves are publicly available, the public has no way of knowing what claims were actually filed in Israel. [3] A second publication takes place after the application has been allowed by the ILPTO. This publication includes more information, such as the address for service, and coincides with the opening of the file to the public for inspection. Interested parties wishing to oppose the grant of the patent have three months from this second publication date to file an opposition. [4] But only to an extent: it of course is possible that an application was filed in Israel via the traditional Paris Convention route rather than the PCT. If that were the case, though, one could verify this fact through a priority number search on the ILPTO’s public database. [5] Reference to the rights of “the public” are made far more often in Israel patent jurisprudence than in US patent jurisprudence; I may discuss this at greater length in a future post.
