America-Israel Patent Law

Look What They've Done To My CAFC Web Site

The CAFC's web site has a new look, and in that department it's definitely an improvement over the old CAFC site - the new look is much classier.    It also appears to me that it provides more information than the old site, though I haven't accessed an archived version to compare.  I'm not yet sold on the new format for displaying decisions, but I may yet come around to it.  You used to be able to pull a list with 6 months' or a year's worth of decisions at a time, based on the year the decision was given, as well search by party name or case number.  You can still search by name or case number, but you can't search by year – you can go back a day, a week, a month, three months, six months, a year, or list every decision since October 2004.  But you can't list, say, only decisions from the first half of 2005.  Moreover, with the new format, there are at most 50 decisions per page – that's 122 pages (and counting) to possibly sift through.  On the other hand, the new search engine doesn't need to be told to look for partial words – when I plugged in "Fuji" in the hopes of finding a series of cases involving Fujifilm and reconstructed cameras, all the decisions I was looking for (since 2004) came up.  So maybe the new format will prove easier to use than the old one.

Pedantic Patent Offices, Persistent Pro Se 'pellants…Puh-leez!

I

Some readers may recall last summer's CAFC decision in Taylor v USPTO.  That was the case where Mr. Taylor, acting on advice given by the USPTO over the phone, paid a maintenance fee for his US 5,1787,701 with a check that was $10 short of the requisite amount.  The USPTO cashed the check, never informed Mr. Taylor about the shortfall, then deemed the patent to have lapsed for failure to pay the maintenance fee.

Mr. Taylor only discovered this several years later, when he went to pay the next maintenance fee.  His efforts to have the patent reinstated were rebuffed, as were his efforts to get his money back, in part on the grounds that he didn't pay the $200 petition fee, a fee he said he couldn't pay because he was indigent.   So he sued the USPTO pro se, asserting it had misappropriated the $1030 had paid and seeking $1,000,000,000 in damages for the patent he no longer had. 

 The district court dismissed the case for failure to state a claim upon which relief could be granted.  On appeal, the CAFC politely told the USPTO to quit being a bunch of anally retentive weenies, and remanded the case to the district court with instructions to "enter judgment in accordance with this opinion", including ordering reinstatement of the patent upon payment of all outstanding maintenance fees.  

But there's more to the story.  In December 2009, on remand, per the CAFC's instructions, the District Court ordered the USPTO to refund the $1030 and to reinstate the patent upon payment of all outstanding maintenance fees.  That didn't satisfy Mr. Taylor, who wanted the billion dollars he'd asked for.  So he again appealed to the CAFC, asking it to reopen the proceedings regarding his claim for $1B in monetary relief.

But whereas in the previous round, the CAFC had been indulgent toward the indigent Mr. Taylor, this time it unsurprisingly showed no such leniency.  In a decision issued last week, the CAFC ruled that since Taylor had failed to raise the damages claim in his appeal of the original District Court decision, he had forfeited that claim.  

Interestingly, Mr. Taylor apparently still hasn't paid the maintenance fees, and the USPTO still hasn't refunded his $1030.  PAIR lists the patent as still being involved in court proceedings, and the maintenance fee page lists the patent as having lapsed in 2001.  Do you think the USPTO will refund the money with interest?  Or credit the interest toward whatever Taylor still needs to pay?  

II

The Israel PTO imposes a fee for making changes in the Patents Register.  This includes not only changes in the identity of the applicant/patentee, but also changes in the address of the applicant or the attorney.  Seems a little ridiculous to make an applicant pay for changing counsel.  It takes the ILPTO secretary a few minutes at most to record the change.  The requirement seems especially silly when one realizes that until the patent is granted, it's not in the Register.  

Be that as it may, a colleague reported to me that he took over representation of an application and paid the requisite 227 shekel fee online on June 16.  (Current exchange rate is about 3.88 shekels/dollar.)    But unlike in the USPTO's online filing and payment system, such payments aren't recorded at the ILPTO until the receipt is actually mailed by the applicant or attorney to the ILPTO.  In this case, the inventor only signed the power of attorney on June 30.  By the time the POA and payment receipt had arrived at the ILPTO in July, the fee had gone up.

By a shekel.  

That's an increase of less than 25 cents in people money.

So the ILPTO mailed a letter to my colleague, telling him that his payment was a shekel short.

The stamp alone cost 1.7 shekels.  I don’t know what the secretary's time and envelope cost.  I do know that my colleague's time to pay the outstanding shekel and send the receipt to the ILPTO will be worth somewhat more than a shekel.

 

III

I guess it's comforting, in a perverse way, to know that patent offices on both sides of the Atlantic can be pedantic.  It's confirmation that when they send an unnecessary OA because they're being overly formalistic, they're not picking on me or my client.  That's just the way they are. 

The denouement of the Taylor case also shows that just because the USPTO is wrong doesn't necessarily mean that a solo inventor is right.  Sort of the patent world corollary to "Just because you're paranoid doesn't mean they're not out to get you."

New Proposed Prior Art Reporting Requirements in Israel – Part II (This Post Isn’t About That Dead Horse Bilski Either)

In the previous post on this blog, I discussed the Commissioner’s proposal to increase the burden on patent applicants, by requiring them to provide not only copies of prior art cited during the examination of corresponding cases elsewhere, but also copies of the foreign office actions citing that art and the applicants’ responses to those OAs.  I noted that there is no legal basis under which the Commissioner can impose such a requirement.

This post ignores the lack of legal basis for the Commissioner’s proposed requirement, and deals with some of the policy deficiencies of the Commissioner’s proposal. 

Ostensibly, the proposed requirement will make substantive examination more efficient.  That, at least, is the reason proffered by the Commissioner for imposing the requirement.  But it’s not clear to me how that’s so, for several reasons.

First, as it is, the law currently imposes a duty of candor on applicants.  Israel examiners are capable of reading prior art publications for themselves and drawing their own conclusions.  Moreover, all EPO prosecution files and most US prosecution files are currently viewable online.  Thus Examiners can access corresponding search reports and OAs if they so choose.

Second, the law varies across jurisdictions.  Non-obviousness in the USA, while generally paralleling the EPO’s inventive step requirement, is not exactly the same.  There are situations in which publications that can be cited against both novelty and non-obviousness in the USA may only be cited against novelty in Europe, and aren’t citable at all in Israel. 

To give an example, suppose X files a U.S. provisional application on January 1, 2001, disclosing and claiming ABC, and files a PCT claiming priority from the provisional on January 1, 2002.  X’s PCT publishes on July 1, 2002, and eventually he files national phase applications in the USA and Europe, but not in Israel.  Meanwhile, on July 1, 2001, Y files a PCT application also disclosing and claiming ABC, but without a priority claim.  Y eventually files national phase applications in Israel, the USA and Europe. 

In the USA, X’s PCT may be cited as prior art in assessing both the novelty and non-obviousness of Y’s application.  The fact that X’s PCT was published after Y’s filing date doesn’t matter  – see 35 U.S.C. §102(e) and last week’s CAFC decision in In re Giacomini.  But in Europe, the fact that Y’s filing date precedes the publication of X’s PCT means that X’s PCT can be cited only against the novelty of Y’s application, and not inventive step.  In Israel, X’s PCT is not citable at all against Y’s application: since X’s PCT published after Y’s filing date, X’s PCT doesn’t count as prior art under Israel law; and since X didn’t file a national phase application in Israel, there’s no basis to say that X has a prior right under Section 9 of the Israel statute (which basically says “first-come, first-served” with regard to rights in claimed inventions).

In such circumstances, how could it possibly make Israel prosecution more efficient to IL examiners with copies of OAs from the USA and Europe? 

Third, by creating an additional reporting requirement, the Commissioner would also be creating more opportunities for applicants to make innocent mistakes, and for adverse parties – which as often as not in Israel are free-loaders looking to capitalize on Israel’s liberal pre-grant opposition regime – to jump on those mistakes and assert bad faith prosecution and the like.  Given the ILPTO’s propensity for occasionally falling for such arguments, that doesn’t bode well for applicants. 

Moreover, the increased possibility of making a mistake engendered by the proposed reporting requirement is likely to lead to applicants deciding to err on the side of caution in what they report.  Think of the McKesson decision in the USA, which has led to the absurd situation of applicants providing the USPTO with copies of OAs issued by the USPTO in other related cases – even when it’s the same examiner examining both cases!  That doesn’t add to prosecution efficiency, it bogs it down, for both applicants and examiners.  Just because the US has gotten this wrong doesn’t mean Israel has to follow the USA’s lead.

Finally, not only is the proposed reporting requirement unnecessary and detrimental for the reasons explained above, but it is likely to also impose enough of a burden on applicants that some will rethink filing in Israel.  The new reporting requirement will require more paralegal and attorney time on their end, as well as the costs imposed by local patent practitioners.  Suppose a large company presently files 50 patent applications in Israel annually.  That’s a significant amount of additional cost to impose on such a company.  But contrary to what some locals seem to think, the patent budgets of large foreign corporations, to say nothing of smaller companies, are not elastic and infinite.  Israel is generally not important enough to them that they are willing to spend whatever it takes to get a patent in Israel.  So if the cost of patenting in Israel is raised sufficiently high, those applicants will simply reduce their number of Israel filings, or stop filing here altogether. 

In sum, aside from the ultra vires nature of the proposed reporting requirement, even if the Commissioner was empowered to impose such a requirement, he would be ill-advised to do so.  It’s unnecessary and instead of leading to prosecution efficiency will lead to inefficiency or even a reduction in patent filings in Israel.