America-Israel Patent Law Blog

On November 25, amendments to the Patent Regulations were published; earlier this week the ILPTO published a notice regarding the new amendments.  Both documents make good reading, if counting sheep isn’t working for you; unfortunately for those of us who practice before the ILPTO, they are both required reading. (Yes, there was a spike in sales of amphetamines this week in Israel.) Primarily these amendments revised the Regulations to conform with recent statutory amendments concerning online publication of various notices. Nevertheless, hidden within these soporific missives are a few points of interest:

First, the filing fee for new patent applications has been nearly doubled, from 1075 shekels to 2000 shekels.  This wasn’t unexpected.  In a populist response to the previous Patent Commissioner’s collecting publication fees for notices that were never published on paper (but were published online, in an understandable but nevertheless ultra vires move), earlier this year the outgoing chairman of the Knesset’s Constitution, Statute and Law committee forced the words “publication fee” out of the statute.  But the money has to come from somewhere, so now the filing fee has been raised significantly.  Ironically, the same committee that did away with "publication fees" was the one that approved the new fee increase.  Go figure.

Second, the fee increase was accompanied by the establishment of a small entity status, of sorts: individuals, or partnerships or companies having an annual turnover of up to 10 million shekels (roughly $2.5 million at current exchange rates) can get a 40% discount on the filing fee and the issue fee – a whole 800 shekels, or about $200 for the former, and 280 shekels, or about $70, for the latter – for “filing for a particular invention a first patent application”.  What exactly constitutes a first patent application for a particular invention is anyone’s guess: if it’s disclosed but not claimed and I claim it in later filed divisional, am I entitled to the discount? What if in the first application I claimed a compound and in a later application I claimed a use of that compound (and does it matter if that use was disclosed in the first application or not)?  What if I recast my original claim in a slightly different form using different terms, but in a way that effectively claims the same thing?  Was anyone who knows anything about patent prosecution involved with the drafting of this new regulation? Beam me up, Scotty.

What is clear is that the savings involved simply aren’t worth arguing about, should the ILPTO assert that you’re not entitled to the discount, since the attorney time alone will eat up the savings.

That drawback is heightened in view of the ILPTO’s statement that in order to qualify for the discount, the applicant will have to submit a sworn statement attesting to entitlement to the small entity status. Just preparing the statement for each case and getting it executed will involve professional time that eats into any potential savings.

Moreover, the imposition of such a requirement, aside from being over-the-top – it should be sufficient for the practitioner of record to assert in an unsworn statement that the applicant is entitled to small entity status, as is the case in the USA – and possibly ultra vires (I don’t think the ILPTO has the authority to require that level of proof of small entity status), also constitutes a stunning contrast to the Office’s supposed policy of transparency. Various Commissioner’s notices and circulars are now distributed in draft versions and the public invited to comment on them before they are finalized. That’s a new policy under the current Commissioner (in office since May 2011) which was put in place in the name of “transparency”. Here, there was no public discussion regarding the appropriate policy for ensuring truthful small entity status claims; the requirement for a sworn statement was put in place by ILPTO fiat.

Which, in truth, isn’t all that different from the way the Commissioner’s circulars and notices work. Because even when comments are solicited beforehand, those comments aren’t made public, the ILPTO doesn’t publicly relate to them, and rarely do the draft versions differ appreciably, if at all, from the final versions. Basically, the distribution of the drafts appears to be a fig leaf meant to provide the appearance of transparency without actually achieving transparency.

Finally, if you’re still awake, you probably need prescription narcotics.

(Actually, there’s one more point pertaining to what’s not in the new regulations, but that will wait for tomorrow’s post.)