Like the USPTO, the Israel PTO is blessed with some good patent examiners. Like the USPTO, it also has more than its fair share of less-than-stellar examiners. And like the USPTO, the ILPTO has a backlog of cases to examine. Unlike the USPTO, however, the ILPTO long ago decided to admit it had a problem, and to do something constructive about it. Thus, in the 1980’s, the ILPTO began allowing applicants to piggyback their Israel applications on the allowance of a corresponding application in certain other jurisdictions, most notably the USA and the EPO. In 1995 this practice was enacted into legislation the form of §17(c) of the Patents Act.
As one might imagine, examination under §17(c) has been a popular choice with applicants who also file outside Israel and who seek to reduce their patent prosecution costs: coupled with the fact that applications can be filed in Israel in English, §17(c) practice enables applicants to leverage allowance in jurisdictions in which they will prosecute anyway to obtain an Israel patent inexpensively.[1]
§17(c) practice has also caught the attention of proponents of patent office worksharing. If two patent offices can conduct equally good examination, the argument goes, and their substantive criteria for patentability are similar, why should both offices devote resources to examining what is substantively the same application? It would be more efficient to let one office do the examination and for the other to rely on the examination conducted by the first. In this regard, Israel’s §17(c) practice is remarkably progressive, as it sets aside national pride or arrogance, in principle acknowledges that other patent offices can do as good or better a job of examination as the Israel PTO, and takes advantage of that fact to reduce examiner workload.
Nor does §17(c) practice divest the Israel PTO of control over the examination: under §17(d), the Commissioner may refuse a request under §17(c) if the conditions of §17(c) have not been fulfilled, or if “there exists another a special reason not to accept the application”. (More on the latter statement below.)
The statute vests the authority to determine which patent-granting authorities may be relied under §17(c) in the Commissioner of Patents. The statute provides no guidance as to how the Commissioner is to determine whether or not a particular jurisdiction should be included in the list, and the ILPTO itself has never published the criteria it uses in making such determinations. Nevertheless, presumably, the Commissioner must be satisfied that a given patent office has high-quality control; of the offices currently on the list, none is a registration-only jurisdiction.[2] In fact, in December 2008, the Commissioner issued Circular No. 65, in which he removed Australia from the list of countries:
“Because of the experience that the Patent Office has accumulated in implementing §17(c) of the Patents Act, it has been decided to remove Australia from the list of countries in which acceptance of a patent application enables an applicant file a request under §17(c). This is in view of the fact that in most of the instances in which applicants request examination per §17(c) on the basis of an Australian patent, §17(d) is invoked [i.e. the Commissioner found there were grounds to refuse the request].”
Put less diplomatically, the ILPTO found that examination by IP Australia wasn’t very good. Prima facie, then, notwithstanding the absence of clear guidelines for inclusion on the list, the Commissioner tries to limit the list of acceptable countries to those which have a proven track record of good searching and analysis of the prior art.
Which is why the Commissioner’s issuance earlier this week of Circular No. 75 raised eyebrows:
“Circular No. 65 is hereby canceled. For the avoidance of doubt, it is clarified that Australia is again included in the list of countries in which acceptance of a patent application enables an applicant file a request under §17(c).”
No reasons given, just a reinstatement. If this were Doug Henning or David Copperfield, it would be great stuff - Poof! Now you don’t see Australia, it now you do! But in the context of the ILPTO, it’s not so magical.
The lack of a reason for the reinstatement is particularly glaring against the backdrop of the earlier reason for dropping Australia from the list – given the ILPTO’s experience with IP Australia over the course of many years that led to dissatisfaction with Australian examination, what changed in the course of a mere nine months? And what prompted the Commissioner to re-evaluate the situation so soon? Is the Israel PTO trying to curry favor with IP Australia as Israel attempts to become certified as a PCT Search Authority? Did someone at the ILPTO recently get a trip to Australia? Both of these possibilities are suggested by the Commissioner’s Rosh Hashana greetings, sent out two days after Circular No. 75, in which he acknowledged that Israel is attempting to be certified as a PCT search authority, and that the ILPTO has established “an important connection” with IP Australia.
Coupled with the lack of transparency, let alone clear-cut guidelines, in how the Commissioner determines which countries to include on the §17(c) list, the Commissioner’s about-face on the inclusion of Australia in the list of §17(c) countries only serves to undermine confidence in the §17(c) process within the context of Israel patent practice, and to highlight the possibility of manipulation or usurpation of worksharing programs generally by political considerations (a possibility acknowledged by proponents of worksharing). That’s a shame, because worksharing, done properly, can result in better patents across the board, in a larger number of jurisdictions.
Incidentally, the lack of transparency in §17(c) practice by the ILPTO isn’t confined to the inclusion of countries on the list. It also applies with respect to the invocation of §17(d) by the ILPTO. As noted above, under §17(d) the Commissioner may refuse a §17(c) request either because the application doesn’t meet the requirements of §17(c) or if “there exists another a special reason not to accept the application”. But in the 14 years since §17(c) was enacted, the ILPTO has never clarified what constitutes such a “special reason”. Thus, unless the ILPTO cites some killer prior art that was missed by the foreign patent office, the applicant is left to wonder why his §17(c) request is being refused.
[1] The head of one local in-house patent department even told that if it weren’t for §17(c), his company wouldn’t bother filing in Israel.
[2] As of September 6, 2009, the list consists of austria, Australia, the USA, Germany, Denmark, the UK, the Russian Federation, Japan, the EPO, Norway, Canada and Sweden.
