America-Israel Patent Law

What Do Diaper Wars and Cottage Cheese Revolts Have To Do With The Israel Patent & Trademark Office?

One of the big local stories in Israel earlier in the summer was the outcry over the price of cottage cheese.  For many Israelis, this is a staple item.  June was when someone noticed that the price of cottage cheese had crept up precipitously over the last few years – and that the same locally-produced cottage cheese sold for less in Europe than it did in Israel.  So this person decided to do something about it: he used Facebook to organize a boycott.  Turns out that not only had the three major dairies (which collective control close to 100% of the market) raised their prices significantly, and almost in lockstep, since the de-regulation of the price of cottage cheese a few years earlier, but one of them had even commissioned McKinsey to tell them how much they could raise prices without losing business.

In the end, the dairies caved and lowered their prices, at least a bit.  (Don’t worry, as of this writing the price of cottage cheese isn’t that much lower than before the protest, the dairies are still gouging consumers on everything else they produce, and like lambs Israeli consumers aren’t complaining.)  But the part of this story that interests me is the notion of price elasticity, or rather inelasticity: the idea that in certain markets, the demand for an item will remain essentially steady no matter what the price, and therefore producers are free to raise prices without fear of loss of sales.  Clearly, with regard to cottage cheese, the dairies felt that the de facto staple status of this commodity, coupled with the lack of local or foreign competition (no one imports cottage cheese into Israel) meant that they could steadily raise the price and make ever-larger profits.  The same is true of the fees charged by banks for doing us the favor of holding on to our money, the fees charged by cellphone companies, and the prices of many other goods and services in Israel.

On the other hand, in early July the price of name-brand diapers in Israel fell - dramatically.  Here it wasn’t the threat of a boycott that caused the price reduction but old-fashioned competition.  Both Pampers and Huggies have arrangements with local manufacturers; until recently those diapers retailed for around 62 shekels a package at all of the large supermarket chains.  Since parallel imports are legal in Israel (no, that’s not the IP angle of this story), one of those chains, Mega, decided to draw customers by importing a large number of Huggies from Turkey, at a price that was lower than what the local Huggies manufacturer charges Mega; Mega then offered the diapers at a much lower retail price.  In mid-July, for example, Mega advertised Huggies for 26 shekels per package for customers who buy 100 shekels’ worth of other products. 

It didn’t take long for the price of locally produced Huggies and Pampers to drop as well.  For example, for a while Supersol Deal, another large chain, sold both brands for 36 shekels per package, i.e. at a price 42% lower than it was a few weeks previously.  The fact that the prices of these diapers could drop so dramatically suggests that hitherto a certain degree of price inelasticity was at work – even though, unlike with cottage cheese, there are also local brands which normally sell for lower prices than Pampers and Huggies.

What does this have to do with patents in Israel?  Well, as far as I can tell, there are some movers and shakers within the patent department of the Israel PTO who think that the price of the services they provide is also inelastic.  Or at least there are several ways in which the ILPTO acts as if it can charge what it wants without repercussion.  Consider:

1. Until relatively recently, if a patent examiner said that an applicant’s claims were directed to more than one invention, that applicant could cancel claims on the second (and third, fourth, etc. inventions), and file them in a divisional application.  The divisional could be filed any time before the parent application was laid open to the public, and the only fee due was the filing fee for the filing of the divisional.  In June 2008 the previous Commissioner issued his circular no. MN 62, which said that a divisional filed in response to an office action containing a finding of disunity had to be filed along with the response to the OA.  A divisional could be filed after that time, but if so, it would have to be accompanied by an extension fee for each month or portion thereof after the deadline for response to the OA in the parent case.

2. Additionally, longstanding practice in Israel was that if one had already filed a first divisional, and one wished to further divide that first divisional by filing a second divisional application, the second divisional could be filed at any time before the first divisional was laid open to the public, even if that event occurred well after the original parent case had itself been laid open for public inspection.  As discussed previously, in February 2010 the previous Commissioner indicated that all divisionals, whether divided directly from the parent case or indirectly from an already-filed divisional, had to be filed before the original parent case was laid open to the public. 

3. Also as discussed previously, under the previous Commissioner, the ILPTO began to charge applicants for suspending the examination of their applications.

4. There used to be no limit on the total number of claims in an application.  In 2010, the ILPTO successfully lobbied the Justice Minister to amend the regulations so that a fee of 500 shekels would be assessed for each claim over 50 (at the time, the filing for a new application was about 1500 shekels).

5. Israel, like England, is a “loser pays” system when it comes to inter partes matters, whether in court or before the PTO.  Whereas traditionally the fee awards granted to the prevailing party in patent oppositions or cancellation actions were largely symbolic, usually not more than a few thousand dollars and often even smaller, in recent years those awards (as well as awards in similar trademark disputes) have just become plain large, in some cases over $100,000.  (A more detailed discussion of this phenomenon will be forthcoming in a future post.)

In the first four cases, the monies collected go the ILPTO, and thus can be viewed as attempts by the ILPTO to squeeze money from applicants, and to squeeze it from them earlier in the process, e.g. by collecting filing fees for all divisionals sooner rather than later.  My speculation is that the impetus for this was the ILPTO’s change in status from a mere branch of the Justice Ministry to a semi-autonomous “Authority” under the general aegis of the ministry.  The change was effected under the previous Commissioner at his behest.  While the new status helped streamline ILPTO operations by giving it more control over its own spending, the new status also meant that the ILPTO became responsible for raising its own funds to cover its budget, including paying the salaries of its staff.  Coupled with the fact that the previous Commissioner went on a hiring spree and significantly increased the number of examiners (which in and of itself was a good thing), the need for revenue became more acute than it was previously. 

The fifth case is a little different, because the funds go to one of the parties to the proceedings, not to the ILPTO.  Nevertheless, when taken together, the five phenomena suggest a view on the part of the ILPTO that no matter how high the expected cost of availing oneself of the Israel patenting process, people and companies will file patent applications at the ILPTO.  After all, the ILPTO has a monopoly on the granting of patents, so do people have a choice? 

That view, of course, is just plain wrong, as is clear from a glance at other, larger jurisdictions.  Take the PCT filing statistics for 2008 and 2009, for example: when the economy tanks, patent filings drop.  Or look at the Dudas administration at the USPTO, which perversely calculated that by making it unattractive for people to file patent applications, in part by making it prohibitively expensive to do so (inter alia via onerous claims-and-continuation rules), fewer applications would be filed, which would have enabled the USPTO to reduce its backlog in patent examination. 

Israel is not a large market; people and companies, particularly those from outside Israel will only continue to file in Israel if they think it’s worth their while.  I don’t know the location of the cut-off point beyond which companies will say it’s no longer worth the expense to file in Israel, but such a cut-off point exists.  Continually raising the cost of patent prosecution brings us closer to that point, and the ultimate end result wherein raising fees nets less money for the ILPTO.

Is the Glass Half Transparent, or Half Opaque? Part II: Deja Vu?

In the previous post I discussed the Commissioner’s newly-announced policy of distributing draft circular letters for comment in general, and a proposed circular dealing with extensions and suspension of examination in particular, and I provided some specific criticisms of a proposed 15-month total limitation on extensions for responses in substantive patent prosecution.  This post will focus on another criticism of the specific proposed circular dealing with extensions and suspensions, as well some questions about the comment process. 

As mentioned previously, the draft circular proposes to limit an applicant’s ability to suspend examination to the period after the applicant has filed its initial §18 response (sort of like an initial IDS that the ILPTO must ask applicants to file before it may commence substantive examination) and the issuance of a substantive OA.  Applicants will have to provide reasons for the suspension, and if the suspension is granted, applicants will have to pay for each month of suspension as if it were an extension. 

The proposed policy in essence mimics the policy implemented by the previous Commissioner in his circular no. MN 59, which was issued on February 25, 2008, except that that while the earlier circular limited the applicant’s ability to request suspension until after the §18 was mailed by the ILPTO (before which, in any event, an applicant desiring suspension doesn’t need to do anything, since examination hasn’t begun), the earlier circular did not limit the applicant’s ability to request suspension to the period prior to the first substantive OA. 

It’s not clear from the presently proposed circular why an applicant’s ability to request a suspension of examination should be limited to this small window of time, because the proposed circular doesn’t provide any explanation or reasoning with respect to this limitation.  For that matter, the proposed circular doesn’t provide reasons for ANY of the policies proposed therein.  Contrast that to rulemaking by the USPTO under the Administrative Procedures Act, under which rules proposed by the USPTO are accompanied by explanations of the rationale behind the proposed rules and the goals the rules are intended to meet.  In present case, there may be good reasons for not allowing suspension of examination once examination has commenced, but the draft circular is silent as to any such reasons.  I’ll return to the lack of reasoning in the draft circular later. 

Comparison of the earlier MN 59 and the presently proposed circular raises some questions.  For starters, both documents equate suspensions with extensions.  But that’s wrong, because a suspension (the Hebrew could also be translated as “delay” or “stay”) may or may not act like an extension.  An extension is additional time an applicant buys in order to gain more time to respond to the ILPTO – to file a list of prior art in response to request for such a list, to respond to a substantive rejection of the claims, to pay a publication fee.  A suspension, in contrast, is a request that the office stop working on a file.  Granted, there are circumstances in which a request for suspension may in effect be a request for a long extension, for example if in response to a substantive OA, an applicant asks that prosecution be suspended so that they can await the outcome of prosecution in the USA.  But if no response is due from an applicant, there is no response period to be extended.  In that case, a suspension is in effect a courtesy extended by the applicant to the patent office, telling the patent office to concentrate its resources on other applications for the time being.  

In the Israel context, the distinction between a suspension and an extension is significant.  §164 of the statute authorizes the Commissioner to grant extensions in many circumstances, but the only place where in the statute or regulations where a suspension is mentioned is in section 10 of the second sechedule of the regulations, with regard to the payment of the post-allowance publication fee.  There the regulations establish that when requesting a delay in the publication of an application – in other words, an act to be carried out by the ILPTO – an applicant must pay for each month of delay.  There is no mention anywhere of suspension before or during substantive prosecution. 

Notwithstanding that fact, I don’t think anyone would assert that the Commissioner lacks to the power to suspend the examination of an application in response to an applicant’s request.  While applications are normally examined roughly in order of filing, applicants may request that their recently-filed application be brought to the front of the line; by the same token, there’s no logical reason why an applicant shouldn’t be able to request delay of the examination of his application – in other words, to temporarily waive his right to have his application examined right now – or why the Commissioner shouldn’t be able to accede to that request, i.e. to accept the applicant’s temporary waiver of his right to have his application examined.  

But with regard to fees, there’s a huge difference between an extension and suspension.  The Commissioner is authorized to collect extension fees, but nowhere is he authorized to collect suspension fees (except per section 10 of the second schedule, as noted above).  As will hopefully be explained in a future post, I’ve long suspected that the previous Commissioner’s imposition of a fee for suspending examination was merely a ploy to increase ILPTO revenues.  That would certainly explain the strange statement in MN 59 that his statutory authority for suspending examination was §164, the section dealing with extensions but not suspensions.  By equating suspensions and extensions, the previous Commissioner tried to shoehorn fees for suspension of examination under the extension provisions of §164, thereby giving him fee-collecting authority.  

But as experience has taught, just because the previous Commissioner said he had the power to do something didn’t make it so – as illustrated by how he got himself and the ILPTO into hot water by stopping paper publication of the Patents Journal but continuing to collect the publication fee, as reported in an earlier post.  There’s still an ongoing class action suit against the ILPTO as a result of the previous Commissioner’s actions, and those actions may yet cost the ILPTO several million shekels.  §164 doesn’t mention anything about suspensions, and it’s not clear that it authorizes the Commissioner to collect fees for the voluntary suspension of an application by an applicant when no response to an OA is due; this may be yet another situation where the previous Commissioner’s willingness to flout the rules of the game end up costing the ILPTO. 

The question this raises with regard to the current proposed circular is, does Mr. Kling, the current Commissioner, really want to follow in his predecessor’s footsteps in this regard?  Because by maintaining the ruse that suspensions are a form of extension, and that the ILPTO is therefore empowered to collect fees for suspensions, he may well be setting up the office, and himself, for a fall like that of his predecessor, when a second class action suit is filed against the Commissioner for the unauthorized collection of suspension fees. 

This brings me back to the matter of the lack of reasons being provided in the draft circular.  If you’re planning to implement policy, and you want constructive input on your proposed policy, then it would make sense to explain what the policy is intended to do and why.  That would give people the opportunity to assess both the worthiness of the goal, as well as the likely effectiveness of the proposed policy, and it would make it easier to identify ways to improve the policy to be implemented.  (That’s the way draft statutes in Israel are generally presented – with explanatory language.)  The lack of any such explanation in the present draft circular makes one wonder if the Commissioner is really interested in public comment, or if this is just a matter of perfunctorily going through the motions.  

This doubt is magnified by the fact that following the issuance of the Commissioner’s “circular on circulars” in June, he proceeded to ignore that very document and in contradiction thereto, issued several circulars (see e.g. here and here) without first seeking public comment. 

Furthermore, so far it’s unclear what will happen to the comments received in cases where public comment is solicited.  At the USPTO, those comments are made public, and most are addressed in the final rulemaking statement.  It remains to be seen if comments received by the ILPTO will be accorded similar treatment. 

With regard to circulars pertaining to patent prosecution, one also has to ask who within the ILPTO has the Commissioner’s ear: his resume does not evince any personal experience with patent prosecution, in which case he in all likelihood relies on others within his office for advice.  But the Commissioner’s name is the only one to appear on the draft circular. 

Transparency from state bodies is a good thing.  But based on the experience so far with the new policy of transparency regarding the issuance of new circulars, it’s not clear if this new policy really makes anything more transparent.

Is the Glass Half Transparent, or Half Opaque? Part I: Proposed Israel PTO Policy Regarding Extensions and Suspensions

As has been discussed here before, the immediate past Commissioner was disposed to making policy in the form of “circular letters”.  In some cases he issued such letters on matters about which he actually had jurisdiction, in other cases he overstepped his bounds.  It is undisputed, however, that in comparison to his predecessors he was the king of circular letters, averaging about one a month over the course of his tenure. 

Aside from the pace of the previous Commissioner’s policy-making, which was enough to give a person whiplash, one of the complaints about the issuance of the circulars was that often they seemed to come out of the blue.  Apparently in an effort to make this policy-making process more transparent, in June the current Commissioner issued what can best be termed a “circular on circulars”, in which he explained that henceforth, before issuing new circulars, he will post them on the ILPTO web site and distribute them via the ILPTO’s email distribution list, to enable the solicitation of comments.  [I have included a pdf version of this "circular on circulars"; I would have preferred to instead include a hyperlink to this file, but the ILPTO’s website presently does not enable people to view circular letters.  Rather, the website includes two lists of circular letters, both in MS Word format, one arranged chronologically and one arranged by subject.  Both lists are apparently supposed to include hyperlinks to the circulars themselves, but those hyperlinks don’t work, at least not for me.  So to the extent I can presently access circular letters, these are pdf files that were either emailed to me or that for some reason I already had on my hard drive from an earlier time when one actually could download circulars from the ILPTO website.]

On July 25 the Commissioner distributed his first proposed circular for comment, dealing with the issue of extensions during patent prosecution.  Prior to 2010, patent applicants had four months to respond to substantive official actions, with the ILPTO granting an additional four months, without show of cause, upon payment of a nominal fee.  Extensions beyond those four months could be obtained upon a show of cause, and there was no limit to the total number of extensions available during the course of prosecution of any particular application.  In addition, applicants could prospectively request suspension of examination; typically the ILPTO would grant suspensions for up to two years without any difficulty.  During the tenure of the previous Commissioner, it became necessary to provide reasons for the suspension, and to pay a fee for each month of suspension. 

In 2010, by way of a circular letter, the previous Commissioner changed the rules of the game regarding extensions, by limiting the total number of extensions during substantive prosecution to 15 months’ worth, with no extension for response to any single OA to exceed six months.  That policy only applied to applications for which a substantive OA had not yet issued at the time the circular was distributed. 

The present Commissioner’s draft circular seems to be an attempt to deal with the matter of extensions in a more comprehensive manner, and differs from the previous Commissioner’s circulars in a number of ways.  First, it sets out the relevant statutory provisions under which the Commissioner has discretion to grant extensions in various instances.  Second, it relates not only to extensions in response to substantive prosecution, reiterating the policy of the previous Commissioner in that regard, but also seeks to clarify that policy.  In particular, it is now proposed that the 6-month maximum/15-month total limit on extensions during substantive prosecution will:

(a)       apply retroactively to all pending applications, including those in which substantive OA’s have already issued; extensions already taken in applications in which substantive OA’s have already issued will not count against the 15-month limit; 

(b)       include all time between a refusal of an application under §21 of the statute and the submission of a request for reconsideration under §21A; and

(c)       not include (i) suspensions of prosecution initiated by the ILPTO due to an earlier-filed application that claims part of what is claimed in the suspended application, or (ii) extensions for filing divisional applications in response to findings of disunity; the 6/15 limits will still apply with regard to the filing of a response to the disunity rejection in the parent case (and any other points raised alongside the disunity rejection). 

Third, the draft circular attempts to be more thorough than circulars issued heretofore, in that it addresses other types of extensions as well:

1.            Extensions for responding to notices under Regulations 30 and 31.  For those familiar with U.S. prosecution, those are essentially the Israeli versions of notices to file missing parts.  It is proposed to limit applicants to six months of extension beyond the three months established by the regulations).

2.            Responses to §18 requests.  Although Israel imposes a duty of disclosure on applicants similar to that in the USA, before beginning substantive examination the ILPTO, unlike the USPTO, sends a notice to the applicant under §18 of the statute, asking for a list of relevant art known to the applicant or cited elsewhere.  It is proposed to limit the applicant to six months of extension beyond the four months to respond established by the regulations. 

3.            Suspension of examination.  The draft circular would also limit an applicant’s ability to request suspension of examination to the period after (or, presumably, concurrently with) the filing of a response to a §18 notice and prior to the mailing of a first substantive OA; once substantive examination has begun, applicants would not be able to request suspension of examination.  According to the draft, the suspension must be of at least 7 months’ duration.  Somewhat strangely, the draft circular considers suspension of examination to be a form of extension.

4.         Post-allowance publication fee.  Applicants would likewise be limited to six months of extensions to pay the publication fee after an application has been allowed.  

5.         Pre-refusal warning letters: In addition, ILPTO practice regarding missed deadlines would change.  Currently, if an applicant doesn’t respond to an OA within the theoretically extended deadline, the ILPTO will send out a letter sometime thereafter, to the effect of “You didn’t respond to the OA of date XXXX within the prescribed time and if you don’t tell us right now that you want to continue prosecution, we’re going to close the file.”  A few months (or in some cases many months) later, the ILPTO issues a notice of refusal of the application (sort of akin to a Notice of Abandonment in the U.S.A.).  It’s proposed that the ILPTO will instead send a notice at the end of nine months from the issuance of a substantive OA (four months + five extended months), or when 14 of 15 months of extensions have been used up, or, if no extensions remain, when one month remains to respond, in all warning the applicant that if they don’t respond by the 10-month deadline, the application will be deemed refused.

Comments on the draft circular are due today, August 8.   In that vein, there are a few aspects of the draft circular I find lacking. 

First, setting a hard-and-fast cap on the total number of extensions once substantive prosecution has begun can conceivably create unwarranted hardships in certain circumstances, and would seem to constitute an abrogation of the Commissioner’s discretion in each case.  Having clear rules a priori regarding extensions is desirable; but inasmuch as the statute gives the Commissioner discretion to extend various deadlines, the Commissioner should leave open the possibility of further extending those deadlines in individual cases upon show of cause.  To give an example, suppose that an applicant is a sole inventor.  While preparing a response to an OA, he’s diagnosed with cancer and begins chemotherapy, missing the extended deadline to reply.  Such a case would seem to warrant a further extension, but the draft circular doesn’t seem to entertain this possibility.

Second, limiting the total number of extensions during prosecution to 15 months is arbitrary and capricious – why specifically 15 months?  Why not 12, or 16, or 24, or 36?  It’s quite conceivable that in certain cases, more 15 months’ total extension will be needed.  As far as I know, no other major patent office imposes such a restriction on the total number of extensions.  The U.S.A., for example, allows a maximum of six months to respond per OA, but there is no formal limit on the total amount of extension time.  The same is true of Europe. 

Moreover, imposing such a limit is unnecessary, as applicants already have incentive to respond promptly, as any extensions merely eat into their 20-year patent term, and they have no enforceable rights until they actually have a patent in hand.  If it’s desired to further encourage prompt responses, this can be addressed via the regulations, by imposing a progressive fee rate scale for extensions, as is done in the U.S.A.: instead of a flat 60-some shekels per month of extension, as is presently the case, the amounts could be geometric, and set higher: 100 shekels for the first month, 200 for the second (i.e. 300 total for two months), 300 for the third (i.e. 600 shekels for three months) and so on.  Nothing spurs applicants to respond like the potential for high but avoidable official fees; and to the extent applicants aren’t motivated by this, the ILPTO will be able to increase its revenues.  I’m sure the Commissioner can lobby the Justice Minister to amend the regulations accordingly, although if Knesset Member David Rotem is still being a sorehead about ILPTO fees – more on that in a future post – this may not presently be an option.

The 15-month total limit also imposes an additional calculation burden on applicants, their attorneys, and the ILPTO.  Whereas an applicant before the USPTO or EPO knows exactly how much time he has to respond and the absolute deadline for response to any particular OA, under the system now being proposed in the draft circular, an applicant will have to keep track of how much extension time was already used up, as will the ILPTO.  Not only will that unnecessarily demand the resources of applicants and the ILPTO to track the number of extensions remaining, it’s a situation rife with possibilities for mistakes.  Aside from raising my malpractice premium, it’s sure to give rise to contentious situations that will demand the Commissioner’s time to resolve. 

And what if, for example, an applicant pays for a 1-month extension but files the response with 29 days left in the month – will that applicant be assessed a full month out of his allotment of 15, or will he still have 14 months and 29 days left?  The draft circular doesn’t address that question.

In short, regarding the 15-month limitation on extensions, if it ain’t broke, don’t fix it.  The old 4/4 arrangement worked just fine.

Civil Servant Gone Wild (3): Putting Form Before Substance in the ILPTO Practitioner Licensing Process

Here’s a pop quiz.  

Frank is an Israeli citizen who has a science degree from an Israeli university.  He’s trained for two years in a patent firm, and he wants to take the Israel patent practitioner qualifying exams and has paid the fee to take them, but the ILPTO won’t let him take the exams.   Why not?

(a)            Because the firm where he works refuses to provide a letter attesting to the fact that he trained there for two years.

(b)            Because the ILPTO asked for samples of work he did and he refused to provide such.

(c)            Because the previous commissioner introduced a new requirement regarding trainees that has no basis in law, namely that the trainer must report to the ILPTO regarding the commencement of training within one month thereof, and the firm where the person works failed to comply with this extra-legal requirement.

For readers who’ve followed this blog for a while, the answer is clear: it’s (c).  But some explanation is in order.

As in the USA, to practice patent cases before the Israel PTO, one must (a) have a technical background, i.e. a university degree or the equivalent and (b) pass a set of exams.**  Unlike in the USA, but as is the case for lawyers in Canada, England and elsewhere, one must also undergo a two year apprenticeship period.  The statutory and regulatory framework is set forth in sections 142-145 of the statute and regulations 124-144 of the regulations (the latter being secondary legislation which is promulgated by the Justice Minister, with the approval of the relevant parliamentary committee). 

The two-year training period is set forth in section 142(4) of the statute; regulation 136 says that proof of this service shall be provided in the way of certificate from the trainer that sets forth the type of work the trainee did, the number of hours worked per week, and additional work done by the trainee, if there was any.  This regulation also empowers the Commissioner to require up to five examples of the trainee’s work in different areas of IP practice.  So in principle, answers (a) and (b) above are correct answers.  But that’s not what happened here: Frank’s firm provided such a letter, and the ILPTO didn’t ask for samples (and if it had, Frank would have complied).

No, Frank’s dilemma is a direct result of the previous Israel Patents Commissioner’s inability to usurp his urge toward the ultra vires.  Although regulation 136 says that the number of hours worked per week must be stated, nowhere do the statute or regulations prescribe a minimum number of hours that must be worked.  Desiring to bring clarity to this situation – and to end the hypothetical potential for abuse, whereby, for example, someone could work one day a week as a patent practitioner trainee over the course of two years, an abuse which I’m not aware has actually ever occurred – the previous Commissioner established a new practice, in accordance with which: 

(1)          the practitioner training the trainee must notify the ILPTO of the commencement of the training period within one month thereof, otherwise the ILPTO will not recognize the commencement of the training period until receiving actual notice from the practitioner;

(2)          the trainee must serve the equivalent of two years of full-time employment, and

(3)          anyone wishing to sit for the examinations must have completed at least one year of training.

There is no legal basis for at least two of these requirements, but as we know, the previous Commissioner had an uncanny ability to regard legal strictures as mere suggestions, to be followed only by mere mortals; this is but a minor example of that ability. 

Let’s start with the easiest one, the second requirement.  It’s sensible to want to ensure that patent practitioner trainees have trained full-time and not part-time.  And given that, maybe one could make a statutory construction argument to support this requirement, using the “purposive construction” conceit that Aaron Barak brought into vogue in Israeli jurisprudence: since the purpose of this section of the statute is to ensure that licensed practitioners have a minimum level of competence, the “two years” of training referred to in 142(4) must necessarily mean the equivalent of two years of full-time employment.  The requirement of regulation 136 to report the number of hours worked per week, it can be argued, reflects this understanding of the statute, at an essentially contemporaneous point in time (the regulations were made about a year after the statue was enacted): the point is to ensure that the person has trained for the equivalent of two years of full-time work.  So requirement (2) may be defensible.

The third requirement, however, has no basis in the statute or the regulations, which do not condition sitting for the exam on a minimum training period prior thereto.  To the contrary, the exams are mentioned as a separate, independent requirement, the express purpose of which “is to prove that [the candidate] has sufficient knowledge in the laws of patents, designs, and trademarks in Israel and abroad and in other relevant laws, as will be established [in regulations to be promulgated later], and that has command of Hebrew and another language necessary for his work, as will be established.”  So while it may be more prudent to put off the exams until after one has gained some experience, the statute enables anyone who desires to do so to sit for the exams. 

The extra-legal one-year-before-exam requirement is even more absurd considering that the ILPTO calculates the one-year on the basis of the pre-training notification requirement, which itself is the most difficult of these three requirements.  The notification requirement is legally problematic because it imposes an additional condition not set forth in the statute or regulations.  Regulation 136 doesn’t say anything about notifying the ILPTO before the start of training – it just says that the trainer must provide a certificate attesting to what the trainee did and, by implication, when he did it.  Given that the trainer may himself be subject to discipline if he lies to the ILPTO, it’s unlikely that a practitioner is going to lie about having trained someone he didn’t train. 

To be sure, a practitioner’s providing a statement to the ILPTO about the commencement of training can help protect a trainee, for example if during the training period the two have a falling out and the practitioner later refuses to confirm the length of the trainee’s employment or what he did (and unlike the hypothetical abuse that concerned the ex-Commish, I am aware of these kinds of cases having occurred).  But the submission of such a pre-training statement should be left as something voluntary.  That’s because – and here we come to the practical difficulty with this requirement – the imposition of the extra-legal requirement to report the start of training can come back to adversely affect the blameless, as in Frank’s case.  Frank is being penalized because the trainer didn’t notify the ILPTO of start of the training period.  Assuming the practitioner-trainer had good intentions toward the trainee, it’s a shanda that the ILPTO now penalizes the trainee for the actions of a third party, actions over which the trainee had no control.

The ILPTO should follow regulation 136 as set forth: a letter from the practitioner attesting to the trainee’s training should be all that is necessary.  Where the ILPTO would be wise to change things is to allow trainees themselves to provide proof of their employment and work on patent matters, such as salary stubs and billing records, in lieu of such a letter, in cases in which practitioners refuse to sign such a letter.  A voluntarily-submitted statement from the practitioner at the outset of the training period could also be used to this end, in conjunction with other forms of proof.  But the current situation, in which the ILPTO penalizes trainees for the failure of their employer-practitioners to comply with an extra-legal requirement, is unacceptable. 

If I were advising Frank, I would tell him to seek an audience with the new Commissioner to convince him that Frank has met the legal requirements to take the exams and to receive his license if he passes those exams.  The additional requirements imposed by the Commissioner’s predecessor are ultra vires and go well beyond what is necessary to ensure the integrity of the licensing process.  I suspect that if challenged in court, the additional requirements will be struck down on those grounds – and I suspect that the present Commissioner, who worked in both a general commercial law firm as well as an IP litigation boutique before becoming Commissioner, will be sensitive to that and therefore receptive to entreaties to make the ILPTO’s position more reasonable.

Then again, I personally think the whole licensing process is in need of repair – such as getting rid of an oral exam, which is a capricious way to test people.  But that’s for a different post.

**Strictly speaking, that statement isn’t correct: by law, anyone who is licensed as a lawyer may also practice patent cases before the ILPTO, notwithstanding their complete lack of technical training, but for the most part lawyers practicing patent cases before the ILPTO restrict their representation in patent cases to oppositions and cancellation actions, not substantive prosecution.  However, there is at least one rogue lawyer of which I’m aware who files incredibly poorly written patent applications at the ILPTO.  Even more incredibly, after several years of doing this he still has a law license.

Good News: USPTO, ILPTO announce Bilateral Patent Prosecution Highway (PPH) Program

On June 20, the USPTO announced on its web site that it had agreed with the Israel PTO to undertake a pilot Patent Prosecution Highway (PPH) project, beginning July 1, 2011 and continuing until June 30, 2012.  Under the project, a patent applicant whose application was first filed in one of the two countries, and for which at least one claim has been found allowable, may request that the other office fast-track a corresponding application in the other country.  

As of this writing, the link posted on the USPTO’s site for more information on this project does not contain any country-specific information regarding the program with Israel.  However, the Israel PTO site does contain information in English (an explanation of how PPH works in Israel and a form to be filed when making the request), and although this writer wasn’t able to find comparable information in Hebrew from the Hebrew web site’s home page, the Hebrew PPH site is up (as noted in a press release in Hebrew that was sent out via the ILPTO’s email distribution list earlier today). 

Some noteworthy points about utilization of the PPH before the ILPTO:

First, according to the information on the ILPTO web site, the claims of the Israel application must be of a scope which is identical to or narrower than that of the claims allowed by the USPTO.  (This is the same requirement in place today under section 17(c) of the IL patent statute for acceptance of an application on the basis of allowance of a corresponding application in certain other countries.  Note that the English instructions use the word “similar” rather than the word “identical”, which appears in the Hebrew explanation; presumably the Hebrew is in this case more reflective of the ILPTO’s intention.)  Presumably, if one’s IL application doesn’t meet this requirement, an amendment may be filed concomitantly with the PPH request in order for the application to comply. 

Second, a fee will be required; this is in contrast to applications utilizing the PPH in the USA, where no fee is required.  And one may only request PPH status before examination of the Israel application has commenced.  It’s not clear if the pre-examination request for additional information that the ILPTO sends before beginning substantive examination counts in this regard; the sensible thing would be for it not to count.  Certain documentation will also need to be provided.

Thus, for applicants for whom Israel is the country of second filing, the present PPH program effectively amounts to a speeded-up version of the existing provisions under section 17(c) of the statute; the PPH merely provides an additional way to accelerate examination in Israel, beyond the currently accepted reasons for accelerating examination (e.g. potential infringement, imminent commercialization of the invention, etc.).  It therefore appears that applicants for whom the USA is the country of second filing (i.e. who file first in the ILPTO) get the better end of the deal: as has mentioned in a previous post, as of January 1, 2011, an applicant who first files in Israel can have his application examined in accelerated fashion without paying an extra fee, and obtain a substantive office action within three months.  Assuming allowance can be gained quickly in Israel, that applicant can use the quick allowance in Israel to obtain PPH status – at no extra cost – for a corresponding application in the much larger and more commercially significant U.S. market.

Although bilateral PPH is not as significant as PCT-PPH, it is a step in the right direction for the ILPTO, and new Commissioner Asa Kling and his staff are to be commended for completing this arrangement less than two months into his term.  If Israel succeeds in becoming a PCT search and examination authority, it would stand to reason that Israel will also conclude a PCT-PPH agreement with the USPTO, which would truly be a boon for Israel-based applicants.

The form used for requesting PPH in the ILPTO does raise at least one important question, however: it’s sufficient for PPH applicants to direct the ILPTO to the allowed claims on the USPTO’s public PAIR, instead of supplying a hard copy themselves.  That means the ILPTO staff is competent enough to make its way through public PAIR.  If that’s the case, why are patent applicants in Israel still required to provide copies of prior art patent publications that can be downloaded from various sites on the internet just as easily as allowed US claims can be downloaded by the ILPTO staff from PAIR? 

A Few More Words on “Overlap”

During a discussion with a colleague following my last post on “overlap” rejections in the ILPTO, it became apparent that a few additional points regarding such “overlap” rejections – in contrast to US practice - bear mentioning.  The first of these, which pertains to divisional applications, will be discussed in this post.  The second, which pertains to the erroneous basis for the ILPTO’s view on “overlap”, will wait for a subsequent post. 

“Overlap” in Divisional Applications

In both the USA and Israel, the claims of a patent application must be directed to a single invention.  If the claims are directed to more than one invention, the examiner may instruct the applicant to restrict his claims to a single invention.  Although the details of the practices in the two countries differ – U.S. restriction practice remains a source of much confusion for both applicants and examiners alike – the basic contours of the law are the same in both jurisdictions: unless the applicant can convince the examiner that the claims are directed to a single invention, the applicant must choose which invention he wishes to have examined.  He may then file claims on the remaining invention(s) in one or more “divisional” applications, which have the same effective filing date as the earlier application.  I’ll call such applications “involuntary” divisional applications; applicants may also voluntarily divide their applications, even in the absence of a finding that the claims of the parent application are directed to more than one invention.  

Now suppose that an examiner has said that the claims are directed to two inventions, and as a result the applicant has divided his application.  The divisional is still pending, and the parent case has matured into a patent.  (Occasionally, the reverse occurs – the divisional issues first.)  Can the examiner now say that the claims of the still-pending application are obvious in view of the granted patent, i.e. can the examiner make an obviousness-type double-patenting rejection on the basis of the related parent (or child) patent?  In the U.S.A., 35 U.S.C. §121, the relevant part of which is reproduced here, protects applicants in such a case:

If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. * * * 

In other words, if you file a divisional as a result of a restriction requirement, the examiner can’t cite the parent patent against you; or vice versa, if the child application matures into a patent first.  That seems fair enough: if the USPTO was of the view that the claims were directed to two patentably distinct inventions, it shouldn’t be allowed to reverse course later and say that they’re not patentably distinct, and that one invention is obvious in view of the other.  Put differently, §121 statutorily creates an estoppel against forcing applicants to divide their applications, then using one of the two applications to impugn the other. 

Unfortunately, there is no similar statutory provision in Israel.  And although logically, for the reasons explained in the previous paragraph, the ILPTO should be estopped from citing a parent case against a divisional or vice versa when it was the ILPTO itself that ordered the division, there is (as yet) no case law saying that such an estoppel exists.  As a result, it’s not unusual for an Israel examiner to tell an applicant to divide its application, and then, after the applicant has filed a divisional along the lines delineated by the examiner, to assert that there is “overlap” between the claims of the two applications. 

Given that significant statutory changes are in the pipeline (which the subject of a post in the not-too-distant future), the Justice Ministry should consider proposing a statutory amendment that would correct this situation as well, and which would explicitly state that if an applicant divides his application in accordance with a finding of disunity issued by the ILPTO, the ILPTO cannot later reject one of the two applications over the over because of “overlap” or double-patenting.

The lack of either a statutory provision or explicit case law (at least as of today) against this sort of “double jeopardy” takes on added significance in view of the position announced by the ILPTO last year that it would no longer permit the filing of divisionals of divisonals once the earliest application in the chain has been published for opposition purposes.  As explained in an earlier post, the ILPTO’s position regarding divisionals of divisionals has no basis whatsoever in the statute.  Not that things like statutory wording ever stopped the now-ex-commissioner from doing whatever he felt like doing.  Which may be why the now-ex-commissioner, in a clarification issued after the moratorium on divisionals of divisionals was announced, stated that if an examiner tells an applicant to divide an application, the applicant does so, the parent case publishes, and then the examiner says the divisional contains two inventions, the applicant has to choose which of the inventions in his divisional he wants to keep and which to jettison, because he has lost the right to file his divisional.  While I’m certain that sooner or later, the ILPTO’s position on this will be litigated, and the ILPTO will lose, repeal of this ill-considered and ultra vires policy would be more efficient and less costly.  It should be one of the incoming Commissioner’s first acts in office.

Overdoing It With “Overlap”: An Obvious Way the Israel PTO Could Learn from U.S. “Obviousness-type” Double Patenting Practice

35 U.S.C. §101 reads as follows:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

§101 has received much attention in recent years in the context of litigation over what kinds of inventions are and aren’t eligible for patent protection, last June’s Supreme Court Bilski decision and the CAFC’s Myriad Genetics case later this term being the most prominent examples.  But there’s another aspect to §101 that, fortunately, hasn’t been the object of attention for quite a while: the limitation that a person may only receive a single patent on his invention.  In U.S. parlance, the statutorily prohibited practice of getting two patents on the same invention is called “double patenting”.  The logic of the case law in this regard is that the statute says an inventor may receive “a patent”, in the singular, not “patents” in the plural.   

In some ways, though, that statement is specious.  The fact is that through the filing of continuations and divisionals, applicants routinely get more than one patent for what any reasonable person would regard as the same invention, or at least part of the same invention.  But here the case law make a neat distinction that only a lawyer (as opposed to a reasonable person) could love: “invention” in this context means “claimed invention”, as in the invention as defined by the claims of the patent.  So if two claims in an inventor’s two patent applications are close to each other but don’t claim quite the same thing, he doesn’t run afoul of §101’s prohibition on double patenting. 

To illustrate – and if you’re a U.S. practitioner, you can skip down to the discussion of Israel – suppose you’ve got a patent with two claims,

“1. A table comprising four legs and a square tabletop” and

“2. A table comprising four legs and a triangular tabletop.” 

If in addition you have a still-pending application that claims, “3. A table comprising four legs and a tabletop having a shape selected from the group consisting of square and triangular”, that last claim might be shot down for a host of reasons, but the double-patenting prohibition of §101 isn’t one of them.  Even though the scope of claim 3 is the same as the scope of the two granted claims when taken together, the scope of claim 3 when compared to either of the granted claims individually is different.  Consequently, there’s no double-patenting issue under §101.

But wait, the non-practitioner cries in shock and amazement, how can that be?!  Claim 3 is so close to the first two, how can it be allowed in the face of them?  The answer is, under U.S. law it can’t, but not because of §101’s double-patenting prohibition.  There’s a second double-patenting prohibition that has its basis in case law rather than the statute.  That prohibition is called obviousness-type double patenting, and it has its origins in a time when U.S. patents were issued for 17 years from the date of grant.  Referring back to the example above, if claim 3 issued in a patent on a later date than the patent containing the first two claims, the later expiration date of the later-issued patent would effectively give the patentee an extension of his period of exclusivity for what is an obvious variation of claims 1 and 2 in the first patent.  Put differently, inasmuch as claim 3 is an obvious variation of claims 1 and 2, there was no reason the patentee couldn’t have included claim 3 in the same patent as claims 1 and 2.  To now grant him claim 3 in a later-expiring patent wouldn’t be fair to the public. 

An additional problem with granting claim 3 in a separate patent is that the patentee could in principle sell the first patent but not the second patent, or vice versa.  This would make it difficult for potential licensees to negotiate a license, since they would now have to negotiate with two parties instead of one.  (In law school-speak that’s called raising transaction costs, and it’s considered to be a bad thing because higher transaction costs lead to sub-optimal allocations of resources.)  Even if a competitor designed a work-around to avoid infringement of either patent, he might still need to defend against infringement suits from two parties instead of one, with concomitantly higher legal expenses – what the case law calls “vexatious litigation”. 

To avoid these twin problems, over the years U.S. courts developed the doctrine of obviousness-type double patenting: an applicant can’t get claims in a later patent that are obvious in view of the claims in an earlier-granted patent of that same applicant.  However, unlike statutory double-patenting, which can only be remedied by amendment or cancellation of the offending claims, an applicant or patentee can overcome o.t.d.p. without amending or canceling his claims.  He does this by filing a notice at the USPTO that says (a) the applicant or patentee disclaims the term of the later-granted patent which extends beyond the term of the earlier-granted patent [thus obviating the patent term-extension aspect of the later-granted patent], and (b) in order for either patent to be enforceable, the two patents must be owned by the same entity [thus obviating the threat of “vexatious litigation” that concerned the courts].  This statement, called a “terminal disclaimer”, is so common that the USPTO even has a standard form that can be used for it.  (Although the U.S. moved to a 20-years-from-earliest-filing system in 1995, which has eviscerated the first reason for o.t.d.p., the case law has not caught up in this respect, perhaps because the second reason for o.t.d.p. remains.) 

Turning to my local environs, Israel too has a statutory prohibition on double-patenting: §2 of the statute says that the owner a patentable invention may apply for a patent on that invention.  As in the USA, the courts in Israel have said “a patent” means one, not two or more.  However, when it comes to obviousness-type double patenting, Israel still lags behind.  Again taking the example from above, whereas in the U.S.A. claim 3 would be rejected for obviousness-type double patenting, here in Israel the patent office would say, “Claim 3 overlaps with claims 1 and 2 of your earlier patent/application.”  At which point the applicant would scratch his head and say, “Yeah, so what?  There’s nothing in the statute against overlap.  What do you want from me?”, because indeed nowhere in the statute does it say that “overlap” between claims is verboten. 

So what does the ILPTO mean when it says there’s “overlap” between the claims of one’s later application and one’s earlier application?  There are a few possibilities.  It could be trying to say, you’re claiming the same invention in two different applications, which is prohibited by section 2 of the statute, and thus we can’t allow the claims.  The problem with that explanation is that since it’s the claims that define the invention – section 13 of the statute say so – then claims that merely overlap in their scope aren’t really prohibited under section 2.  And besides, if it was a section 2 issue, then why not just say so, instead of saying “there’s overlap”? 

Or the ILPTO could be trying to say that the later claimed invention is anticipated by, or obvious in view of, the earlier claimed invention.  But here too, if that’s the case why not just say that the later claims are anticipated or obvious?  Moreover, the ILPTO will reject the claims of a divisional application for “overlap” with the claims of the parent application; but since a divisional and its parent share the same priority and filing dates, the parent can’t be cited against the divisional as a basis for anticipation or obviousness. 

So by deduction, if “overlap” isn’t shorthand for rejections under sections 2 (statutory double patenting), 4 (novelty) or 5 (inventive step) of the statute, then what the ILPTO is trying to get at in its clumsy, communication-challenged way when it issues an “overlap” rejection are the same two factors that gave rise to the obviousness-type double patenting doctrine in the USA – the possible extension of the period of exclusivity for some of what is claimed in the first application, and the ability to split ownership of the patents, making life unnecessarily difficult for competitors.  

If “overlap” is meant to be shorthand for “obviousness-type double patenting”, then it follows that the ILPTO has adopted a terminal disclaimer practice like that in the USA, right?  Silly you.  Why be so sensible?  Under current Israel practice, the only way for an applicant to overcome an “overlap” rejection is to convince the examiner there is no overlap, or to excise the offending material from the claims of the later application.  In chemical cases in which large genera of compounds are claimed in both applications, that can involve significant analysis on the part of the applicant or its attorney – i.e. it can both be a pain and cost a lot – and it can lead to the introduction of multiple provisos, which makes ascertaining the scope the claim so amended somewhat difficult.  The introduction of such carve-outs also necessitates significant examiner time checking to make sure that all of the “overlap” has been eliminated.  (I once sat with an examiner for three hours painstakingly going over a proposed amendment to be sure he was satisfied that all "overlap" between two applications had been removed.)  Filing a terminal disclaimer would be a much simpler, less costly and more efficient route to achieve the same end.

Moreover, unlike many of the policies that the (mercifully, now ex-) Commissioner instituted over the past few years, with which he clearly overstepped his authority, the implementation of a terminal disclaimer program is something that is within his purview.  And it’s fairly in keeping with other aspects of Israel patent law: assignments and liens on patents, for example, are recorded at the ILPTO; there’s no reason a stipulation of joint ownership between two patents as a condition for their enforceability couldn’t also be recorded at the ILPTO.

Hopefully the next Commissioner (we’re still waiting for an announcement) will be someone with enough patent experience to appreciate how useful terminal disclaimers can be, and who will be willing to allow their use before the ILPTO.

Who’s the Boss?

No, this isn’t a post about Tony Danza, although when I moved to Israel in 1990 it sometimes seemed that the above-named television show was the only thing on TV here.  (Now they’ve got a gazillion channels on cable…some people call that progress.)  The issue is that although it was known for well over a year that the Commissioner of the ILPTO would be out of a job on January 1, 2011, it was only late in 2010 that the job opening was posted; as shown below in the text of the advertisement (sorry, non-Hebrew-speaking readers, I haven’t gotten around to translating it), the deadline for submission of candidacies was December 16.  No word as to why the ministry in charge of this particular job waited until the last minute to post the opening. 

 

Unsurprisingly, no replacement Commissioner has been named as yet.  Which is why I got a chuckle out of a letter I saw today that the ILTPO sent to an applicant, informing the applicant that a particular patent application had been deemed refused under section 21 of the statute for lack of response to an OA.  The letter was signed by one of the administrative staff “on behalf of the Commissioner”.  So was the letter ultra vires? 

Apparently not: it seems that the Director General of the Justice Ministry, under the aegis of which the ILPTO operates as the semi-autonomous “patents authority” named himself the interim Commissioner until a new one is found.  For better or worse, this probably means there is less oversight going on at the ILPTO right now on the administrative side of things.  That’s not necessarily so bad: there haven’t been any pronouncements of new administrative policies for over two weeks, which is a welcome relief from the frenetic pace of administrative policy-making under the last Commissioner.  With regard to judicial proceeds (e.g. patent and trademark oppositions and appeals), most things can still proceed apace, as there’s still a deputy commissioner and a hearing officer, both of whom are empowered to deal with most of these matters.

Incidentally, refusals under section 21 are something of a rarity.  In the USA, if an applicant doesn’t file a satisfactory response to an OA within 6 months along with any necessary extension fees, the application automatically goes abandoned.  Here in Israel the PTO is more forgiving.  Typically, applicants get an OA with a four-month response period; then there’s a period of months in which extensions can be obtained “no questions asked” in exchange for a fee; if no response is filed by the extended period, then sometime thereafter (could be a few more months) the ILPTO will send the applicant a letter saying, “respond or we’ll refuse the application”), and only if the ILPTO still gets no response does it issue a section 21 refusal.  (For those of you who are wondering, the practitioner handling this particular file assures me that the applicant decided to abandon the application.)

USPTO Issues Mea Culpa: Some Patent Application Information Made Available Too Early (And Not Through Wikileaks)

This morning, during my daily check of correspondence from the USPTO on private PAIR, I found a fascinating letter, the text of which is reprinted below.  Turns out that the USPTO goofed, and enabled some patent application data to become publicly available on November 11 when that data wasn’t supposed to become available until November 18.  The data wasn’t actually posted on PAIR; it was posted on a third party web site, then removed on November 15 and reposted on November 18, when it also became available on PAIR. 

As the USPTO notes, the number of applications affected by the error is likely quite small, and the effect will be limited to corresponding applications filed outside the USA from November 11 through November 17 without a priority claim to the erroneously disclosed application.  Personally, I’m curious if ANY foreign applications were or will be adversely affected by the premature disclosure. 

What is impressive is that the USPTO came clean regarding its mistake relatively quickly: it seems that it only took about two weeks from the time the USPTO discovered the mistake to the time it mailed letters to all 6015 affected applicants, including the Thanksgiving hiatus.  (A random sampling of the PAIR records for several of those applications indicates that all the letters were mailed November 30.)  The USPTO could have stayed silent about this; had it not said anything, this story might have stayed buried for a long time, if not permanently.  Hat tip to Commissioner David Kappos and his staff for this one.

The text of the letter sent to affected applicants is as follows:

Notice of Erroneous Early Release of Patent Application Information on November 11, 2010

On November 11, 2010, the United States Patent and Trademark Office (USPTO), unintentionally and as a result of a processing error, made available to subscribers of patent application data the patent application publications that were not scheduled to publish under 35 U.S.C. 122(b) until November 18, 2010. The USPTO's subscription service allows a member of the public to obtain copies of all patents or application publications from the USPTO on the date of grant or publication for a fee. One subscriber who had access to the early-published data made these premature patent application publications available on its free Web service, known as Free Patents Online, on November 11, 2010 - one week prior to the scheduled publication date. At the USPTO's request, the subscriber removed access to the patent application publications dated November 18, 2010 on November 15, 2010 until November 18, 2010. While the premature release of application information on November 11, 2010, is not considered a publication of such applications under 35 U.S.c. 122(b), the USPTO acknowledges that there are potential international ramifications in certain very limited circumstances such as where an applicant whose application information was released early did not file a foreign application within the Paris Convention priority period but did file in a foreign country between November 11, 2010 and November 18,2010.

The USPTO did not post the publications on its Web site until November 18,2010, and it did not provide access to the public Patent Application Information Retrieval (PAIR) System based on the early release of the publication data. Moreover, the USPTO did not record in its records that a publication occurred until November 18, 2010. Copies of, and access to, any of the affected applications described in this document were not provided by the USPTO under 37 CFR 1.14 based on the error described in this document. The USPTO regrets this error and is instituting controls to prevent similar processing errors in the future.

Inquiries regarding this matter may be directed to Mark Polutta, Senior Legal Advisor, Office of Patent Legal Administration at (571) 272-7709 or via email addressed to mark.polutta@uspto.gov.

 

A Thanksgiving Present from the Israel PTO: Proposed New Expedited Examination Program To Make Examination in Israel More Attractive

Although the notion of a meal of thanks is well enshrined in Jewish tradition, Thanksgiving is a distinctly American holiday.  Nevertheless, over the weekend the Israel PTO gave Israel patent applicants something to (hopefully) be thankful for.

Seasoned U.S. patent practitioners will recall a time when an applicant who wished to have his application examined on an expedited basis could file a “petition to make special” on several grounds.  In 2006 this practice was changed, so that the only remaining grounds for filing a petition to make special are the inventor’s age or health or under the Patent Prosecution Highway.  See MPEP 708.02.  Otherwise, the petition to make special program was supplanted by the accelerated examination program (MPEP 708.02(a)).  While the latter program has been more successful than its predecessor in speeding up the examination of subject applications, its requirements are much more onerous, as the applicant must conduct a rigorous prior art search before filing and essentially prepare the first Office Action for the Examiner.  

The comparable program in Israel can be found in Regulation 35(a) of the Patents Regulations, which enables applicants having good reason to petition the Commissioner to expedite the examination of his application.  Typically such requests are based on concerns about possible infringement by a competitor and/or the imminent launch by the applicant of a product intended to covered by the claims of the patent application. 

The Israel PTO has now announced that as of January 1, 2011, applicants who have filed an application in Israel and who plan file foreign applications claiming priority from that Israel application may request expedited examination on this basis alone.  The catch is that as part of the request, applicants must file a declaration stating that the Israel application is “the first one filed on the invention”; presumably what the ILPTO means is that the Israel application is the first one filed anywhere in a Paris Convention country on the claimed invention.  In exchange, the ILPTO promises to deliver a “comprehensive” examination report within three months of the approval of the request for expedited examination.  Unfortunately, the report will be delivered in Hebrew, although apparently if the applicant so requests, the ILPTO will prepare an English version of the examination report for consideration by the PCT search authority per PCT Rule 4.12. 

If, as expected, Israel and the USA sign a Patent Prosecution Highway (PPH) agreement, then the newly-announced policy for expedited examination would make the use of the PPH easier for Israeli applicants, since they would be able to file first in Israel and obtain an examination report during the priority year.  Presently the combined filing and initial publication for an Israel patent application is 1194 shekels (about 330 dollars), and the fee for requesting expedited examination is 685 shekels (about 185 dollars).  For applicants wishing to obtain a U.S. patent quickly, this is small price to pay to be able to take advantage of the PPH, especially compared to the cost of accelerated examination when search and attorney fees are taken into account.  It will also be less costly and faster than utilizing the PCT-PPH route by first filing a provisional application, then using the EPO as the PCT search authority. 

Moreover, it does not appear that applicants wishing to take advantage of this new form of expedited examination in Israel would be precluded from filing the same application as a U.S. provisional application on the same day or shortly after the application is filed in Israel (provided that their invention is not a defense technology-related invention, the foreign filing of which is statutorily prohibited). 

The big question is whether or not the ILPTO is really capable of providing a “comprehensive” examination report in every case of expedited examination.  As I noted in a previous post, some Israeli examiners do a first-rate job, finding the most relevant art and clearly explaining its applicability to the patentability of all pending claims; but other examiners don’t find the best art, and/or mis-apply the prior art they do find, and/or do a poor job of explaining how the art applies to the pending claims, and/or don’t explain how the art applies to each and every claim.  If the ILPTO has developed a system for ensuring that all its examiners can provide first-rate examination reports, then this weekend’s announcement is a welcome one.