If you’re looking for comments on the much-anticipated U.S. Supreme Court decision in In re Bilski, which is expected to be released this morning, you’ve come to the wrong place. If you want a non-Bilski post, keep reading.
As in US law, the Israel patent statute imposes a duty of candor on applicants for patents. The law also empowers the Commissioner to ask applicants to provide certain information, in order to assist the examining corps in examining applications. Hitherto, in accordance with the relevant statutory and regulatory provisions, the practice has been for the ILPTO to send a letter to applicants a few months before examination commences, asking them provide lists of prior art cited against corresponding applications elsewhere. In the case of X- and Y-level references from PCT search reports, applicants have also been asked to provide copies of such references on a CD-ROM.
Several months ago, the Israel Commissioner of Patents published a notice which stated that, beginning July 1, 2010, applicants would be required not only to submit lists of prior art cited elsewhere, but also (a) copies of office actions from other countries, and (b) copies of the applicants’ responses to those OAs. Failure to comply, the notice stated, would be deemed a failure to respond to the pre-examination letter (an omission that will eventually result in the application going abandoned).
The imposition of this requirement was ostensibly to help the ILPTO do its job and to reduce redundant work efforts. Nevertheless, the requirement caused consternation among local patent practitioners, in that, as worded, it would have significantly raised the costs of patent prosecution in Israel, at least for those applicants with large numbers of corresponding applications (such as multinational companies). Moreover, as I’ve mentioned in an earlier post or two, the Commissioner isn’t empowered to make such a requirement. But more on that below.
Yesterday, for reasons unstated but apparently in response to comments from different quarters, the Commissioner backtracked a bit. He announced that the new requirement would not come into force on July 1. Instead, he published a revised version of the notice, which he called a draft, and asked that comments on the draft notice be sent by July 11 to MitmahePatents@justice.gov.il. It is hoped that the ILPTO will publish the comments it receives. Translated into English, the revised draft notice reads as follows:
1. Section 18 of the Patents Act allows an examiner to use for assistance the search and examination reports of foreign patent authorities that examined patent applications for the same invention.
2. Rule 36(2) of the Patents Regulations states that the applicant “may append to its answer the documents submitted by it or by its predecessor in ownership rights, to the same authority in reply to the objections raised against the application filed there”.
3. The goal of these legislative instructions is, inter alia, to save office resources, to improve the efficiency of examination and to reduce pendency.
4. In many cases, this goal is not fully realized, as the Israel examiner is compelled to raise anew objections that were raised by foreign patent examiners and replied to by the applicant, by way of amendment of the claims or by dealing with the objection in another manner.
5. In order to increase the efficiency of examination to benefit the general public, beginning with the coming into force of this notice the applicant shall append to his answer to the demand per Section 18 of the Act his comments on references cited against the novelty or inventive step in the corresponding application or the PCT application, as follows:
A. The applicant shall transmit to the office his answer to the international search report, if he submitted such an answer to the international search and preliminary examination authority.
B. The applicant shall submit one answer only to each citation, in English or Hebrew, as he chooses.
C. Per section 18A of the Act, during examination the applicant must update the office regarding any additional citation made in a foreign patent office. To the extent the prior art was cited against the novelty or inventive step, the applicant must provide a copy of his answer to the citation, as submitted to the foreign patent office, if the answer is in English.
6. Non-submission of comments as recited in the preceding paragraph 5 is as if no reply to a Section 18 demand was filed.
7. The wording of the section 18 demand will be revised in accordance with this notice.
8. This notice shall come into force on __ (three months the final version of the notice is published on the office’s web site).
There are a number of difficulties with this proposal, from both a legal and a policy perspective. Today I’m going to discuss the legal perspective; observations on the policy issues will follow in a subsequent post.
For starters, the proposed notice relies on Rule 36(2) of the implementing regulations. Unlike the Patent Rules in the USA, which are promulgated by the USPTO itself (in accordance with the Administrative Procedures Act), the regulations in Israel are established by the Justice Minister, and thus, unlike the USPTO, the ILPTO is not afforded deference in its interpretation of the rules. Rule 36 reads as follows (again, translated from the original Hebrew):
Demand of References
36. The following rules will apply to a demand per §18(a)(2) of the statute:
(1) Approximately four months before examination of the application will commence, the Commissioner will send a notice to the applicant in which he will demand of the applicant the following particulars:
(a) The lands [should probably say “countries” per (b) following – DJF] in which protection for the invention which is the subject of the application was sought by the applicant or its predecessor in ownership rights;
(b) The references upon which the authority relied in the aforementioned country in which the application was examined;
(2) The applicant must answer the demand within four months from being asked to do so, and may append to its answer the documents submitted by it or by its predecessor in ownership rights, to the same authority in reply to the objections raised against the application filed there; if said documents are written in a language which is not an official language, the applicant will append to them a translation into an official language;
(3) If in the applicant’s answer per paragraph (2) there were mentioned references which are specifications of patents, designs, or utility models or other documents which have not been offered for sale to the public, the Commissioner may demand a copy of them if they are not in the possession of the office.
As explained in its first line, Rule 36 comes to set forth the implementation of Section 18(a) of the statute. There’s just one problem with that: there is no section 18(a) in the statute! Huh?!
Well, Rule 36(2) was enacted in 1968, following the adoption of the statute itself in 1967. As enacted, the statute indeed contained a section 18(a), which in translation read as follows:
18. (a) In applications of certain classes which will be prescribed, the Commissioner or an examiner may utilize for the examination the following additional means:
(1) To transmit the application to an international institution with which the state has contracted for the sake of searching for material that enables said examination;
(2) To demand that the applicant provide the list of references upon which a foreign patent office relied during examination of an application for the same invention which was filed in that country by the applicant or its predecessor in ownership right in the invention. * * *
But in 1995, §18 was amended, and §§18A, 18B and 18C were inserted. These are written in Hebrew and in translation read as follows:
18. Additional Means of Examination (Amendment: 1995)
The examiner will utilize at least one of the following additional means of examination:
(1) The list of references upon which any foreign patent authority relied in examining a patent application for the same invention which was filed in the foreign country by the applicant or the applicant’s predecessor in ownership rights in the invention;
(2) A list of publications which were published before the application date, known to the applicant and directly touching upon [alternative translation: pertaining to] the invention;
(3) Copies of publications and references that the applicant is required to list [for the ILPTO] in accordance with this section, if the examiner requests such copies;
(4) Copies of publications and references that are mentioned in publications and references that the applicant is required to list [for the ILPTO] in accordance with this section, if the examiner requests such copies;
(5) Transfer of a copy of the application, for purposes of searching for material that will enable the office to examine, to an institution in Israel or abroad, with which the office has contracted in accordance with any statute in a contract drafted by the Commissioner and that includes a section pertaining to the maintenance of secrecy of patent applications and non-disclosure of information, in accordance with §165 [of the patent statute];
and to this end he may do one or more of the following:
(1) demand that the applicant to produce any of the documents listed in paragraphs (1) to (4) above;
(2) transfer the application for the sake of searching as stated in paragraph (5).
18A. Obligation of the Application to Update the Office (Amendment: 1995)
Until the application is accepted [i.e. allowed and published for purposes of pre-grant opposition - DJF], the application is obligated to update the office regarding any change that occurs in the list of references or publications enumerated in Section 18, if the changes were brought to its attention or the attention of its attorney.
18B. Notice of the Institutions Assisting in Examination (Amendment: 1995)
The Commissioner shall publish in the official publications journal [the equivalent of the Federal Register – DJF] a notice of the institutions with which the office has contracted per §18(3) and the types of applications with regard to which he plans to use the [search] means enumerated in said section.
18C. Means of Enforcement With Regard to The Examination Process (Amendment: 1995)
If a misleading particular was transmitted in the applicant’s answer to a demand per §18, or if the applicant knowingly did not update the office regarding any substantive change in the list of documents or the publications that he is required to update per §18A, and a patent was granted on the application, or the application was accepted [i.e. allowed and published for purposes of pre-grant opposition - DJF] –
(1) The Court or the Commissioner, in a proceeding before them, may do one or more of the following:
(a) cancel the patent or not grant a patent;
(b) grant a license to exploit the patent to anyone who desires such, as if the Court or Commissioner comes in the stead of the patentee, under conditions agreed upon by the parties, and in the absence of such agreement, by the hand of the Court or Commissioner, in accordance with the matter;
(c) order a shortening of the term of the patent.
(2) The Court may impose on the transmittor of the misleading particular or the person who knowingly did not update the list of documents or publications, in accordance with the matter, a fine as set forth in section 61(a)(1) of the Penal Statute, 5737-1977.
While the amended §18 is in some ways similar to the old §18, it is nevertheless different (otherwise why bother to amend the statute at all?). And it doesn’t contain a subsection (a).
To people used to Israeli bureaucracy, it’s not terribly surprising that in the 15 years since section 18 was amended, the Justice Ministry hasn’t managed to update the regulations accordingly. Nevertheless, from a strictly technical standpoint, Rule 36 has no legal force, as it comes to implement a statutory provision that no longer exists. So from a legal standpoint, the Commissioner’s using Rule 36 as basis for his new proposed policy isn’t tenable.
Interestingly, one wonders if the Commissioner isn’t aware of this difficulty: in the nearly 15 years since amended §18 and new §§18A-18C came into force, the ILPTO has continued to send out demand letters as described in Rule 36, but those letters don’t refer to Rule 36. Rather, they refer directly to amended section 18, which clearly states that the Commissioner has the power to require applicants to provide him with lists of prior art cited in corresponding cases in foreign jurisdictions. So perhaps the Commissioner realizes that Rule 36 is dead – which raises the question, why does he now refer to a dead rule in support of his attempt to impose new reporting requirements on applicants?
Nevertheless, for the sake of argument, let’s assume that Rule 36 didn’t die that day in July 1995 when amended §18 and new §§18A-18C took hold. Rule 36(2) states that the applicant MAY provide copies of its arguments submitted in response to foreign OAs. There’s no ambiguity in the Hebrew term used, “reshai” (רשאי) – it means may, as in, is at liberty to. It’s at the APPLICANT’S discretion to submit such documents. What part of “may” doesn’t the Commissioner understand?
There is nothing in Rule 36 that gives the Commissioner the power to require that applicants submit copies of foreign OAs, let alone their replies to such foreign OAs. And there’s nothing in §§18-18C that gives the Commissioner such power, or that empower the Justice Minister to give the Commissioner such power. In this respect, the new version of this notice – the third one circulated by the Commissioner – is just as defective as its previous incarnations. If the Commissioner wants to impose such a requirement on applicants, he’s going to require new legislation from the Knesset. This isn’t a change that can come about via a bureaucrat’s fiat.
At least in this draft, the requirement only applies to English-language responses. The two earlier versions of the notice, had they come into force, would have required the submission of all responses worldwide; presumably it would have been necessary to translate non-English language responses into English or Hebrew. Even in this regard, the present draft is wanting: as discussed in an earlier post, Arabic is an official language in Israel, so the requirement in draft paragraph 5B that responses be submitted in English or Hebrew – and by implication, not Arabic – is also ultra vires.
