Much hay was made in Israel last fall when WIPO decided to allow the Israel PTO to try to become a PCT search and examination authority. At the time, the Commissioner of Patents sent out a letter in Hebrew to the ILPTO email list (click here for translation by yours truly) explaining the goings-on that occurred in Geneva leading up to the decision. The local press picked up the story as well, in most cases inaccurately reporting that this meant that Israelis could now file PCT applications. (Actually, the Israel PTO has been a PCT receiving office since 1996.) One firm whose partners are known to be publicity hounds even finagled an interview on one of the television news programs to explain the importance of WIPO’s decision.
Other than that instance of shameless self-promotion, I suspect that much of the hullabaloo was less self-aggrandizement and more of the Sally Field “You like me, you really like me” variety: given the hypocrisy and immorality to which Israel is constantly subjected to at the UN and other international fora, it was nice to receive some positive recognition for a change, from a UN body no less.
Even then, with the decision there was a reminder that politics always plays a role in these sorts of decisions. As explained in the Commissioner’s letter to the Israel patent community, part of the quid quo pro for extending the invitation to Israel was that Egypt would also be given the opportunity to become an ISA.
Egypt?
What a joke. Comparing the Egyptian Patent Office to the ILPTO is like comparing a 1971 Dodge Dart to a 2010 Cadillac. As statistics available on the Egypt PO and the ILPTO websites attest, the Israel PTO has far more examination experience, fielding roughly 3.5 times more applications annually than the Egyptian PO. The just-published PCT Yearly Review also has some interesting statistics in this regard as well. But the Egyptian PO is, evidently, the best the Arab world has to offer, and the Arab world wasn’t going to acquiesce to Israel’s entry into the ranks of PCT search authorities without one of its own being afforded the same opportunity.
Setting the politics of the decision aside, the WIPO decision represents several opportunities for the ILPTO. First, it’s an opportunity for the ILPTO to move into ranks of the world’s first-rate patent offices, instead of continuing to operate, as one local practitioner puts it, as a 19th century patent office in a country with 21st century technology. Israel’s greatest natural resource is it brainpower, and in that regard the examining corps at the ILPTO has the potential to be one of the best in the world. It’s much harder to gain university admission in Israel than it is in, say, the USA, and as a consequence Israeli university graduates tend to be better educated, on average, than their American counterparts. Because many Israelis were themselves born abroad, or are the children of immigrants, particularly from the former Soviet Union, many Israeli examiners have facility in English and Russian or other European languages, which can enhance their search abilities.
But in addition, if the ILPTO becomes and ISA/IPEA, it could simultaneously contribute to the reduction in the backlog at the USPTO and elsewhere, reduce costs for applicants, and increase its own revenues. How so?
First, the ILPTO allows the filing of applications in English, which opens up the possibility of becoming a search authority for PCT applications filed in other jurisdictions, most notably the USA and the EPO. Couple that with the fact that ILPTO examiners cost less to employ than their counterparts at the USPTO or the EPO, and the ILPTO could potentially be an attractive search option for applicants from other countries, just as US applicants have in recent years begun using the Korean Patent Office to conduct PCT searches, partly because of the lower cost vis-à-vis the USPTO, and partly because of the timeliness with which KPO searches are delivered (as opposed PCT searches conducted in the USA, which are generally of low quality and not infrequently delivered after the 30-month national phase deadline has passed).
There are two steps the ILPTO needs to take to make this happen. First, it needs to improve the quality of its examination and reporting. Some ILPTO examiners are already world-class. They find the most relevant art, and they clearly explain how it applies to the claims. But there are still a significant number who continue to practice, or worse, are being trained, to do a poor job: they don’t find the best prior art, or they mis-apply the art that they find, or rather than explain how the art they’ve found applies to each claim, they produce a one-liner along the lines of, “The claims are obvious in view of publication X”. This has to be remedied, so that all of the examiners consistently produce first-rate work. Fortunately, it’s an attainable goal.
The second step involves getting other patent offices to recognize the searches done at the ILPTO. This is where politics re-enters the picture. Because no one, not even an Israeli applicant, is going to want to use the ILPTO to search if that search doesn’t have some cachet outside of Israel. Israel needs to get on board with the US patent prosecution highway, and with other countries that have similar arrangements. While the PPH leaves much to be desired, these days anything that can help an applicant for a US patent decrease application pendency and increase the likelihood of allowance is going to warrant a close look from US-based applicants, particularly if it can help the applicant reduce its costs.
I believe that the current Commissioner appreciates, at least in some respects, the need to make nice with the decision-makers in other patent offices and to come to agreements with them regarding searches and examinations done in Israel. He said as much in his letter referred to above. In the six months or so he has left in office, this would be a good thing for him to concentrate on, and his successor would also do well to make it a priority.
