In July 2012, Israel enacted legislation facilitating publication of patent applications 18 months after the earliest priority date. Unlike in the USA, where the move to 18-month publication did not have retroactive effect, in Israel the decision was that all pending applications would be laid open to the public 18 months after the earliest priority date. No opt-out for already-filed applications was provided, nor was there the possibility for filing a new application with a non-publication request. The only provision for preventing publication of one’s application was, and remains, to abandon the application before publication occurs.
“Publication” in this context doesn’t really mean publication in the sense of the ILPTO printing up a document. What it means is that on or shortly before the last day of the calendar month in which the 18-month date falls, the ILTPO publishes its Patents Journal online, which lists newly publicly-accessible applications. Simultaneously with publication of the Journal, the application file as it appears in the ILPTO’s public database is made accessible. Thus preventing public access to an abandoned application doesn’t really require much work on the ILPTO’s part, and abandonment should be possible relatively close to the date of publication, since all that needs to happen is for the application file to remain invisible online.
In practice, the ILPTO sends applicants a letter about a month before the scheduled publication, informing them that they have 14 days to abandon the application in order to prevent publication.
Acting pro se, Zamir Tribelsky filed patent application no. 220352 at the ILPTO on June 13, 2012, several weeks before the “we publish all applications” legislation was enacted. Under the law at the time he filed, the application file would only become public at the conclusion of examination, after payment of a publication fee. Even after the statutory amendment took effect, as a new filing with no priority claims, the application was due to be made publicly available in late December 2013, when that month’s Patents Journal published.
On December 2, 2013, the ILPTO sent a letter to Mr. Tribelsky, telling him that the application was scheduled to be made public on December 31, 2013, and that if he wished to prevent its publication, he needed to notify the ILPTO accordingly within 14 days, i.e. by December 16, 2013. Download Tribelsky IL 220352 notice of publication
On December 9, 2013, within the 14-day window, Mr. Tribelsky informed the ILPTO that he wished to abandon the application so that it wouldn’t publish. Download Tribelsky IL 220352 letter to ILPTO 2013-12-09
On December 10, 2013, the ILPTO sent Mr. Tribelsky a letter confirming that the application had been cancelled. Download Tribelsky IL 220352 letter from ILPTO 2013-12-10
And despite that letter, on December 31, 2013, the ILPTO published notice of the application in the Patents Journal and opened the file to the public, where it is still visible today.
Mr. Tribelsky is not my client. I’ve no idea if his invention was worth anything, or if his patent application was well-drafted, or, if granted, if it would have provided commercially valuable protection. But I do know through an independent source that Mr. Tribelsky was unaware of the publishing of his abandoned application until long after that publication had occurred. So if he had dreams of re-filing his application at a later date, the Israel PTO destroyed that possibility.
The treatment of Mr. Tribelsky by the Israel PTO contrasts sharply with the image the ILPTO likes to project that it is a truly modern patent office. To hear the ILPTO tell it, it is an office with modern computer systems, including a wonderful e-filing system, so wonderful that everyone except pro se individual applicants are forbidden from filing any other way.
However, the publishing of an abandoned application, contrary to law and contrary to what the ILPTO indicated to the applicant, so as to adversely affect that applicant's rights worldwide, is entirely consistent with the reality of the ILPTO's computer systems. The e-filing system, to put it generously, leaves much to be desired, on many levels. The uploading of documents to the public database, whether those documents were filed by the e-filing system or generated by examiners, is done manually, so that sometimes documents are simply never loaded into the database. The public database itself is subject to manipulation (I had a case last year where a document that was in the database one day was gone the next). And there is no way for filers to view the application files for their own unpublished applications, i.e. there is no corollary to the USPTO's private PAIR.
This is why, notwithstanding my lack of knowledge of the particulars of Mr. Tribelsky's case, if he was my client, I would recommend suing the pants off the ILPTO. Not because he'll get lots of money: although proving negligence on the part of the ILPTO in this case is a slam dunk, putting a monetary figure on the damage caused will be difficult if not impossible. No, I would recommend suing the ILPTO because someone needs to get it through the heads of the higher-ups at the ILPTO that no matter how great the degree of computerization and automation, any system involving people is fallible, and making the ILPTO a defendant in such a suit would most definitely get the ILPTO’s attention, not to mention the attention of the people in the Justice Ministry to whom the ILPTO Commissioner reports. And as a result of that, maybe the higher-ups will realize that redundancy – say, by allowing people to file applications and responses in paper, by fax, as well as through an electronic filing system – is something to be embraced, not eliminated.