The Israel PTO’s push to become a PCT search and examination authority is slowly moving forward. This past March saw the publication of a Government-sponsored bill that would make the statutory changes necessary for the ILPTO to become an ISA. This Tuesday, November 22, the Knesset’s Constitution, Statute and Law Committee will be discussing the bill. In fact, it has allotted nearly three hours for this discussion, which raises the question, why? Making Israel an ISA would seem to be a straightforward enterprise. What’s the problem that requires so much time to address?
Rumor has it that, in classic Israeli disrespect-yourself-and-shoot-yourself-in-the-foot fashion, some decision-makers have gotten it through their heads that Israel being an ISA would be a bad idea. Apparently they reason that the ILPTO can’t handle the amount of work it currently has, or that it does a poor job of examination, and therefore it can’t possibly take on the additional work of being a PCT ISA.
To anyone who’s done patent prosecution in Israel over the last ten years or more, it’s clear that that line of reasoning is about as fallacious as yours truly expecting to be elected Pope. During the tenure of the previous the Commissioner, the ILPTO went on a hiring spree and added dozens of new examiners to its existing corps of several dozen. The results have been palpable: waiting times between filing or national phase entry and the commencement of examination has dropped. That’s not just anectodal. Every October the ILPTO publishes statistics on the status of examination, and in general the lag between filing and examination has dropped. Similarly, a look through the Patents Journal shows that the delay in publications under Section 16 (which is a reflection of how quickly the office processes new applications) is on the order of a few months, instead of a few years like it was back in 2005. Although some of that may be attributable to an overall drop in patent filings worldwide in 2009, the fact is that the examination situation today in Israel is better than it was five years ago.
More to the point, though, is that (a) as I’ve argued before, in terms of their ability to analyze the patentability of claims vis-à-vis the prior art, Israeli examiners compare favorably to their counterparts in the USA or most other PCT ISA’s, and (b) making Israel an ISA, coupled with the signing of patent prosecution highway agreements, could augur well for both Israeli applicants wishing to obtain patents abroad, for foreign entities seeking patents in Israel, and for the ILPTO itself. To explain:
First, many of the examiners in Israel speak both English and Russian, and in some cases additional languages. And a fair number of them hold advanced degrees. Compared to some of the absolute garbage that passes for a USPTO office action these days, the ILPTO examination corps on the whole looks positively brilliant. To the extent I have a criticism of the Israeli examining corps, it’s that they don’t always do a good job of expressing themselves, saying things like “I cite publication X against the novelty of claim 1”, without further explanation. But that’s not an inherent flaw in the ability of Israeli examiners. It’s something that can be addressed through proper training – training, which presumably, Israel examiners would receive from WIPO, as they are trained in how to prepare and issue PCT search reports, written opinions and international preliminary examination reports. Inherently, examiners here are on par with examiners in many other countries (and better than the examiners in many parts of the world.) (It would be nice if I could say that WIPO wouldn’t accede to Israel becoming an ISA if the ILPTO wasn’t up to the task, but the fact that it gave Egypt the same opportunity undermines that particular argument.)
Second, there’s a worldwide problem in patent examination: the total number of applications is rising, and the world’s patent offices simply can’t keep up with the work. One of the ways to reduce the overall examination burden is to facilitate work sharing between the offices. Since the substantive requirements for patentability, viz. novelty and inventive step, are similar throughout the world, there’s no reason why work in this regard done in one competent office can’t be utilized by another office. In fact, as discussed in an earlier post, Israel was one of the first technologically advanced countries to recognize this, as for years the ILPTO has facilitated the allowance of patent applications on the basis of the allowance of a corresponding application in the EPO, the USA, or certain other countries. But until recently, Israel has been only a taker in this regard: it has accepted other countries’ examinations in lieu of its own, but no one else accepted Israel examinations.
That began to change earlier this year, when the USPTO and Israel entered a bilateral patent prosecution highway (PPH) agreement. Now the USPTO will accept the results of Israel examination on Israel-first-filed applications to expedite the examination of a corresponding U.S. application. Making the ILPTO a PCT ISA would enable Israel to take this a step or two further. Presumably, once Israel becomes an ISA, the USA will be willing to extend the PPH program to include favorable PCT searches conducted in Israel. Similar agreements could be negotiated with other countries. In and of itself, this would provide an incentive for Israeli applicants to have their PCT applications examined by the Israel ISA, as a favorable examination could then be used as a springboard to faster and presumably shorter examination elsewhere. And those same applications would not need to be examined again once they entered the national phase in Israel. In other words, with respect to Israel applications, becoming an ISA might result in some shifting in the order of examinations, but it would not create a backlog.
Beyond that, by opening itself as an ISA to non-Israeli entities, PCT examinations could prove to be a self-supporting business. The cost of paying an examiner in Israel is less than the cost of paying a USPTO or EPO examiner; the ILPTO could thus set the price for ILPTO PCT examinations below that of the USPTO or EPO, but at point where the ILPTO would profit enough that it could afford to hire additional examiners if necessary, thus offsetting any potential increased local workload.
Where Israel could really set itself apart is if it would offer to refund the PCT search fee if the search isn’t completed on time. This is something that has vexed PCT applicants for a long time: the search is supposed to be part one of the reasons for filing a PCT application, and you have to pay the search pay as part of the filing process, but there’s no mechanism under the PCT to get that search fee back if the search isn’t conducted in a timely fashion. Thus most U.S.-based practitioners have seen cases in which U.S. PCT search results were sent after the 30-month national phase entry date, with no mechanism under the PCT to redress this wrong. (I’ve sometimes wondered how a class action suit under Virginia state law against the USPTO for such a failing would fare. I would expect that a jury of laymen would respond positively to the notion that if you pay for a service to be performed by date X and it’s performed more than a year later, after the it’s no longer needed, you’re entitled to your money back.)
In Jewish law there’s the notion of going “lifnim meshurat hadin”, which roughly translates idiomatically into English as going above and beyond the letter of the law. Here, the ILPTO could set a new standard by effectively telling applicants that even though the PCT allows patent offices to act like common criminals and steal applicants’ money, the ILPTO will provide search results on time or refund the money. Although something tells me that some of the politicians involved in the legislative process (and perhaps some in the ILPTO) will react much like the father in the 1979 film Breaking Away:
