I was born and grew up in the USA, and although I’ve lived in Israel for most of my adult life, I’ll always be an American. Living abroad has, however, given me a different perspective on the USA, which, despite its great size and diversity of people and places, is sometimes astoundingly provincial in its outlook.
I was reminded of this recently when I heard a patent horror story from an Israeli patent agent I know, whom I’ll call “JB”. A priority deadline for one of JB’s clients fell during the middle of Succot. Succot is a week-long Jewish holiday, what I think is termed “Tabernacles” by King James’ translators. (You can read about some Succot-related patents, using a variant English spelling of the word, here.) Religiously observant Jews don’t work during Succot, and in deference to the sensibilities of the religiously-observant public – and a good a collective bargaining agreement obtained by the country’s only union – government offices are closed for the week.
Since the ILPTO was closed on the one-year anniversary of the priority filing, JB looked up PCT Rule 80.5, which says, quite sensibly, that if the PCT Receiving Office is closed when some document (like the PCT application itself) is due, that paper can be filed on the next day that that Receiving Office is open. So JB filed the PCT application at the Israel RO on the next day the ILPTO was open.
Fast-forward 18 months. It’s national phase filing time for 30-month countries, an exciting time in any patent attorney’s life. JB has his US associate file a national phase application at the USPTO. The USPTO took JB’s client’s money (no surprise there), gave the application a national phase entry date and an effective filing date of the date the PCT application was filed (no surprise there either), and then informed JB that the application wouldn’t be accorded the priority claim because the PCT application was filed more than one year after the priority application had been filed (near-heart-attack-inducing surprise for JB; although neither he nor the U.S. associate noticed the problem until the inventor herself inspected the filing receipt and wondered what had happened to the priority claim).
If only JB had looked at MPEP 1893.03(c) before he filed the PCT application. Had he done so, he would have seen where it’s written in black and white that notwithstanding PCT Rules, PCT applications that were filed more than 12 months after the priority application were filed will not be accorded the priority date, period. In other words, if you’re a foreigner and your local PCT Receiving Office was closed on the one-year anniversary, tough.
In fairness, I should mention that MPEP 1893.03(c) does provide one exception to this 12-month rule. If the priority application was a U.S. application (provisional or non-) and the PCT Receiving Office is the USPTO, then if your one-year date falls on a day when the USPTO is closed, you get an extension until the next business day. Nice to see some consideration extended toward U.S.-based applicants over foreign ones.
It’s not clear to me if the USPTO’s stance breaches the national treatment requirements of the various patent treaties. In one sense it doesn’t: a foreign national who wants to file at the US Receiving Office would receive the same treatment as US national filing at the USRO, and would be entitled the same extension under the same conditions. The fly in that ointment is that under the PCT, a foreign national can’t file at the USRO (unless he has dual citizenship, but that’s usually not the case).
That the good ol’ U.S. of A. should expect foreigners to conform their filing practices to U.S. policy upon entering national phase (e.g. having to pay extra for multiply dependent claims or for claims in excess of 20) isn’t surprising, and isn’t discriminatory. Here, though, the USPTO expects foreigners to comport with U.S. law even in respect of their PCT filings. But the point of the PCT and how it dovetails with the Paris convention is to ensure that, at least for purposes of getting PCT applications on file, applicants don’t need to worry about the details of the laws of other PCT member countries. Once the Receiving Office has accorded the application a filing date and recognized a priority claim, that should be the end of the matter. The USPTO’s stance completely undermines the rationale behind the PCT, and in essence forces PCT applicants to act as if they are filing national applications in 140+ countries at the end of the priority year, as if the PCT didn’t exist and the U.S.A. wasn’t a signatory to the PCT.
The USPTO’s stance also leads to some interesting hypotheticals. For example, Yom Kippur is the holiest day on the Jewish calendar, and falls in in September or October, sometimes on a Monday. The USPTO is closed on Columbus Day, which falls on a Monday in October. That means that from time to time, Yom Kippur and Columbus day coincide, in which case papers due at the USPTO and papers due at the ILPTO on that day get an automatic one-day extension to the next day. What would happen, then, if someone’s priority deadline fell on such a Monday, and they filed a PCT on the next day claiming priority to a US provisional application – but they filed the PCT at the Israel RO rather than the USRO? Would the USA now regard the PCT application as being entitled to the claimed priority?
I should mention that the USPTO claims that its view is based on the statute itself (see 35 U.S.C. §119(e)(1) and (3)) – sort of, “Don’t blame us, blame Congress.” I’m sure that applicants from outside the USA will be consoled by the fact that it’s the legislature and not the USPTO itself that’s hosing them. I can just picture the look relief on JB’s client’s face when JB told him, “Don’t worry, it’s not a mere civil servant who made life hard for you, it was Senator X himself!”
Some of you (assuming anyone’s reading this) may say, “But under 35 U.S.C. §102(b), the applicants don’t need to claim foreign priority – they get a one year grace period from prior art anyway.” That’s true…if the difference between the PCT filing date and the convention deadline is only a few days, and the applicant didn’t publish the invention during the first few days after filing the priority application. But even if that’s the case, if the priority application is a U.S. provisional application, then loss of the priority claim means loss of the §102(e) date afforded by that provisional. That’s bad news if the application is later involved in an interference. The applicant also loses a year off his §102(b) date.
This isn’t the first time US patent law has taken an unforgiving stance with respect to non-U.S.-based patent applicants. In a 2007 decision, Boston Scientific SciMed v Medtronic Vascular, the CAFC said a patentee was not entitled to a priority claim where the priority application had been filed at the EPO in the name of the employer, without first obtaining an assignment from all of the employee inventors. The CAFC reasoned that under U.S. law, the right to claim priority under §119 is a personal right, and therefore a U.S. application is only entitled to foreign priority if the foreign application was filed by the inventor “or on his behalf”. In many countries, however, Israel included, by law employee inventions are owned by the employer absent an agreement to the contrary. The CAFC’s SciMed decision did not address the question of whether the operation of such a legal rule would be sufficient to fulfill the “on his behalf” component of the statute.
Ironically, Israel has traditionally been accommodating toward U.S. provincialism in the realm of patent filing. Sunday is a work day in Israel, and the ILPTO is open for business. But several times a year, American lawyers assume that a deadline that falls on Sunday in Israel is pushed off to Monday, just like in the U.S.A., and inform their Israel associates of the filing deadline on Monday. Usually, if the lawyer presents a good enough story explaining that the error was made in good faith, the ILPTO will recognize the filing as having been timely made. Should the ILPTO rethink its position? Perhaps it should, as it seems there’s a time-bomb out there for many Israeli applicants: the ILPTO is closed on Fridays, and as result, over the years many applicants have undoubtedly filed PCT applications on Sunday with a priority date that fell one year and two days earlier, thinking they would be entitled to their priority date. (Such applicants would be advised to go back and check their USPTO filing receipts.) It’s hard not to feel that if the USPTO is going to treat Israeli patent applicants roughly in this way, the ILPTO should return the favor, only with respect to U.S.-based applicants.
Back in the seventies, before the breakup of Ma Bell, Lily Tomlin created a character named Ernestine, an annoying telephone company employee, who Ms. Tomlin used to great effect to parody AT&T. Ernestine’s most memorable line, perhaps, was “We don’t care. We don’t have to. We’re the phone company.” When it comes to patents, “We don’t care. We don’t have to. We’re the U.S.A.” continues to be the message the United States sends to the rest of the world. Which is a shame, at least with regard to priority dates for PCT applications. At least in that context, it wouldn’t hurt for the United States to admit that other countries sometimes work on different schedules, and to grant priority claims where the PCT Receiving Office was closed on the day the priority year was up.