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.
