The Israel PTO recently published two draft “Commissioner’s circular notices” (hozrei rasham in Hebrew available here and here), requesting comment by January 19, 2017 (to be sent to MitmahePatents@justice.gov.il). No explanations of the proposed circulars were provided by the ILPTO, although each one concludes with a list of earlier circulars that will be superseded by the new circulars. The new circulars state that they will have effect from the date of their publication.
Traditionally, such circular notices were used by the ILPTO to clarify various office practices under the statute and regulations. For example, the statute empowers the commissioner to grant extensions to respond to examination reports (office actions), but the statute and regulations leave to the commissioner’s discretion the conditions for granting such extensions. Thus for many years, the ILPTO would grant up to four months of extension for a response without a show of cause (upon payment of the requisite fee, which is set by the regulations), with additional extensions for any individual response being available upon a show of cause, and with no limit on the total number of extensions during the course of prosecution. Currently the ILPTO will grant up to 6 months of extension, with a limit of 15 months total extension during the course of prosecution. Presumably either of those limits could be extended if the Commissioner could be convinced to grant further extensions, although I personally am unaware of any cases in which that occurred.
It’s worth noting that in the past, circulars usually issued without requests for input beforehand, and often they arose as a result of clarification of some practice point during the course of inter partes or ex parte proceedings before the commissioner, such as the question of whether or not “Swiss” style claims would be accepted by the ILPTO.
I’m fine with the ILPTO from time to time explaining its practices in writing. Unfortunately, the ILPTO staff tends to relate to these circulars as if they were statutes, even though they are meant to be expressions of policies developed by the ILPTO – i.e. administrative conveniences – within the bounds of the statute and regulations. Moreover, in recent years, the ILPTO has attempted to use circulars to implement substantive changes in practice, in effect trying to do an end-run on the legislative process. A case in point was the ill-fated attempt of the current commissioner to issue a circular stating that the ILPTO would recognize priority claims to design applications filed under the Hague agreement, even though Israel has yet to ratify the Hague agreement.
In the next several posts, I’ll relate to many parts of the draft circulars.
The first of these documents is styled “Draft Circular 34/2016”, and contains 7 parts, A through G. Part A seeks to set forth procedures for dealing with multiple inventions in the claims:
“1. As a general rule, if more than one invention is claimed in a patent application, the examiner shall examine the first invention per the order of the claims.
“2. An exception to said rule is the case in which the examiner allows the applicant to give notice as to which invention among the claimed inventions should be examined first.
“3. There are cases in which the description discloses more than one invention and the applicant chose to claim only one of them.
“4. In each of cases 1-3 above, in accordance with Regulation 41 the examiner must notify the applicant of defect found in the application in the examined invention.
“5. Regulation 42 establishes that in its response, the applicant may rectify the defects of which it was notified, with an explanation how the amendment rectifies the defect. [Yes, the singular/plural don’t match up here…and there are other problems with the language…DJF]
“6. The applicant may rectify the defects by amending the specification per section 22 of the statute. Per regulation 42, such an amendment must address the defects found. Amendment of the specification by way of substituting the examined invention in respect of which the defect was found with a different invention, even if it [the latter invention] arises from the description, does not constitute a rectification of the defect.
“7. In accordance with regulation 45, in such circumstances the examiner will establish that the answer does not remove the defects and send the applicant a notice before refusal.
“8. Per section 24 of the statute, the applicant may claim the other invention in a separate application.”
Thus, in cases in which the examiner finds that multiple inventions are present, the ILPTO proposes to do two things that it hitherto has not done. First, if multiple inventions are claimed, the examiner will now be allowed to examine the first invention per the order of the claims. (This sounds similar to EPO practice.) Second, if in response to an office action the claims are changed to refer to an unexamined invention, such a reply will be considered non-responsive. (Readers familiar with US restriction and election practice, particularly “election by initial presentation”, will find its echoes here.)
While I don’t find fault with the general idea that once an examiner has begun substantive examination, the applicant shouldn’t be able to change the claims to claim a different invention, I think the proposed procedure is deficient in at least two respects. First, I don’t think the ILPTO should presumptively examine the “first invention”. Rather, as per current practice, the default setting should be that the ILPTO identify what it considers to be the separate inventions, and to give the applicant the opportunity to choose which invention is to be examined – or to argue that there really aren’t two or more different inventions. If the examiner nevertheless wishes to include substantive rejections against some of the claims, the examiner should be allowed to do so.
Second, a notice before refusal under section 45 of the statute is a heavy-handed response to a first “offense”. Consider, for example, a case in which only one invention was initially claimed, and in response to an OA the applicant substitutes in a new set of claims, thinking in good faith that the same invention is being claimed, but in a different way. If the examiner disagrees, and believes the new claims are directed to a different invention, it’s absurd to threaten the applicant at that point in time with refusal of the application. The proper response of the ILPTO in that situation is not to issue a notice before refusal under section 45, but for the examiner to inform the applicant that the claims are directed to a separate invention and therefore will not be considered, and to give the applicant additional time to respond. (Think of the standard USPTO letter stating that “the reply is non-responsive” but giving additional time to respond because “it appears to be a bona fide attempt to reply”.) If the applicant does not subsequently replace the claims or convince the examiner that the claims are directed to the originally-examined invention, then a notice before refusal under section 45 should be mailed, giving the applicant yet one more chance to present claims directed to the already-examined invention.