America-Israel Patent Law

New Proposed Prior Art Reporting Requirements in Israel – Part II (This Post Isn’t About That Dead Horse Bilski Either)

In the previous post on this blog, I discussed the Commissioner’s proposal to increase the burden on patent applicants, by requiring them to provide not only copies of prior art cited during the examination of corresponding cases elsewhere, but also copies of the foreign office actions citing that art and the applicants’ responses to those OAs.  I noted that there is no legal basis under which the Commissioner can impose such a requirement.

This post ignores the lack of legal basis for the Commissioner’s proposed requirement, and deals with some of the policy deficiencies of the Commissioner’s proposal. 

Ostensibly, the proposed requirement will make substantive examination more efficient.  That, at least, is the reason proffered by the Commissioner for imposing the requirement.  But it’s not clear to me how that’s so, for several reasons.

First, as it is, the law currently imposes a duty of candor on applicants.  Israel examiners are capable of reading prior art publications for themselves and drawing their own conclusions.  Moreover, all EPO prosecution files and most US prosecution files are currently viewable online.  Thus Examiners can access corresponding search reports and OAs if they so choose.

Second, the law varies across jurisdictions.  Non-obviousness in the USA, while generally paralleling the EPO’s inventive step requirement, is not exactly the same.  There are situations in which publications that can be cited against both novelty and non-obviousness in the USA may only be cited against novelty in Europe, and aren’t citable at all in Israel. 

To give an example, suppose X files a U.S. provisional application on January 1, 2001, disclosing and claiming ABC, and files a PCT claiming priority from the provisional on January 1, 2002.  X’s PCT publishes on July 1, 2002, and eventually he files national phase applications in the USA and Europe, but not in Israel.  Meanwhile, on July 1, 2001, Y files a PCT application also disclosing and claiming ABC, but without a priority claim.  Y eventually files national phase applications in Israel, the USA and Europe. 

In the USA, X’s PCT may be cited as prior art in assessing both the novelty and non-obviousness of Y’s application.  The fact that X’s PCT was published after Y’s filing date doesn’t matter  – see 35 U.S.C. §102(e) and last week’s CAFC decision in In re Giacomini.  But in Europe, the fact that Y’s filing date precedes the publication of X’s PCT means that X’s PCT can be cited only against the novelty of Y’s application, and not inventive step.  In Israel, X’s PCT is not citable at all against Y’s application: since X’s PCT published after Y’s filing date, X’s PCT doesn’t count as prior art under Israel law; and since X didn’t file a national phase application in Israel, there’s no basis to say that X has a prior right under Section 9 of the Israel statute (which basically says “first-come, first-served” with regard to rights in claimed inventions).

In such circumstances, how could it possibly make Israel prosecution more efficient to IL examiners with copies of OAs from the USA and Europe? 

Third, by creating an additional reporting requirement, the Commissioner would also be creating more opportunities for applicants to make innocent mistakes, and for adverse parties – which as often as not in Israel are free-loaders looking to capitalize on Israel’s liberal pre-grant opposition regime – to jump on those mistakes and assert bad faith prosecution and the like.  Given the ILPTO’s propensity for occasionally falling for such arguments, that doesn’t bode well for applicants. 

Moreover, the increased possibility of making a mistake engendered by the proposed reporting requirement is likely to lead to applicants deciding to err on the side of caution in what they report.  Think of the McKesson decision in the USA, which has led to the absurd situation of applicants providing the USPTO with copies of OAs issued by the USPTO in other related cases – even when it’s the same examiner examining both cases!  That doesn’t add to prosecution efficiency, it bogs it down, for both applicants and examiners.  Just because the US has gotten this wrong doesn’t mean Israel has to follow the USA’s lead.

Finally, not only is the proposed reporting requirement unnecessary and detrimental for the reasons explained above, but it is likely to also impose enough of a burden on applicants that some will rethink filing in Israel.  The new reporting requirement will require more paralegal and attorney time on their end, as well as the costs imposed by local patent practitioners.  Suppose a large company presently files 50 patent applications in Israel annually.  That’s a significant amount of additional cost to impose on such a company.  But contrary to what some locals seem to think, the patent budgets of large foreign corporations, to say nothing of smaller companies, are not elastic and infinite.  Israel is generally not important enough to them that they are willing to spend whatever it takes to get a patent in Israel.  So if the cost of patenting in Israel is raised sufficiently high, those applicants will simply reduce their number of Israel filings, or stop filing here altogether. 

In sum, aside from the ultra vires nature of the proposed reporting requirement, even if the Commissioner was empowered to impose such a requirement, he would be ill-advised to do so.  It’s unnecessary and instead of leading to prosecution efficiency will lead to inefficiency or even a reduction in patent filings in Israel.

What Part of “May” Doesn’t the Commissioner Get? (This Post Does NOT Pertain to Bilski)

If you’re looking for comments on the much-anticipated U.S. Supreme Court decision in In re Bilski, which is expected to be released this morning, you’ve come to the wrong place.  If you want a non-Bilski post, keep reading.

 

As in US law, the Israel patent statute imposes a duty of candor on applicants for patents.  The law also empowers the Commissioner to ask applicants to provide certain information, in order to assist the examining corps in examining applications.  Hitherto, in accordance with the relevant statutory and regulatory provisions, the practice has been for the ILPTO to send a letter to applicants a few months before examination commences, asking them provide lists of prior art cited against corresponding applications elsewhere.  In the case of X- and Y-level references from PCT search reports, applicants have also been asked to provide copies of such references on a CD-ROM.

 

Several months ago, the Israel Commissioner of Patents published a notice which stated that, beginning July 1, 2010, applicants would be required not only to submit lists of prior art cited elsewhere, but also (a) copies of office actions from other countries, and (b) copies of the applicants’ responses to those OAs.  Failure to comply, the notice stated, would be deemed a failure to respond to the pre-examination letter (an omission that will eventually result in the application going abandoned).

 

The imposition of this requirement was ostensibly to help the ILPTO do its job and to reduce redundant work efforts.  Nevertheless, the requirement caused consternation among local patent practitioners, in that, as worded, it would have significantly raised the costs of patent prosecution in Israel, at least for those applicants with large numbers of corresponding applications (such as multinational companies).  Moreover, as I’ve mentioned in an earlier post or two, the Commissioner isn’t empowered to make such a requirement.  But more on that below.

 

Yesterday, for reasons unstated but apparently in response to comments from different quarters, the Commissioner backtracked a bit.  He announced that the new requirement would not come into force on July 1.  Instead, he published a revised version of the notice, which he called a draft, and asked that comments on the draft notice be sent by July 11 to MitmahePatents@justice.gov.il.  It is hoped that the ILPTO will publish the comments it receives.  Translated into English, the revised draft notice reads as follows:

 

1. Section 18 of the Patents Act allows an examiner to use for assistance the search and examination reports of foreign patent authorities that examined patent applications for the same invention.

 

2. Rule 36(2) of the Patents Regulations states that the applicant “may append to its answer the documents submitted by it or by its predecessor in ownership rights, to the same authority in reply to the objections raised against the application filed there”. 

 

3. The goal of these legislative instructions is, inter alia, to save office resources, to improve the efficiency of examination and to reduce pendency.

 

4. In many cases, this goal is not fully realized, as the Israel examiner is compelled to raise anew objections that were raised by foreign patent examiners and replied to by the applicant, by way of amendment of the claims or by dealing with the objection in another manner.

 

5. In order to increase the efficiency of examination to benefit the general public, beginning with the coming into force of this notice the applicant shall append to his answer to the demand per Section 18 of the Act his comments on references cited against the novelty or inventive step in the corresponding application or the PCT application, as follows:

 

A. The applicant shall transmit to the office his answer to the international search report, if he submitted such an answer to the international search and preliminary examination authority.

 

B. The applicant shall submit one answer only to each citation, in English or Hebrew, as he chooses. 

 

C. Per section 18A of the Act, during examination the applicant must update the office regarding any additional citation made in a foreign patent office.  To the extent the prior art was cited against the novelty or inventive step, the applicant must provide a copy of his answer to the citation, as submitted to the foreign patent office, if the answer is in English.

 

6. Non-submission of comments as recited in the preceding paragraph 5 is as if no reply to a Section 18 demand was filed. 

 

7. The wording of the section 18 demand will be revised in accordance with this notice.

 

8. This notice shall come into force on __ (three months the final version of the notice is published on the office’s web site).

 

There are a number of difficulties with this proposal, from both a legal and a policy perspective.  Today I’m going to discuss the legal perspective; observations on the policy issues will follow in a subsequent post. 

 

For starters, the proposed notice relies on Rule 36(2) of the implementing regulations.  Unlike the Patent Rules in the USA, which are promulgated by the USPTO itself (in accordance with the Administrative Procedures Act), the regulations in Israel are established by the Justice Minister, and thus, unlike the USPTO, the ILPTO is not afforded deference in its interpretation of the rules.  Rule 36 reads as follows (again, translated from the original Hebrew):

 

Demand of References

 

36.       The following rules will apply to a demand per §18(a)(2) of the statute:

 

(1)     Approximately four months before examination of the application will commence, the Commissioner will send a notice to the applicant in which he will demand of the applicant the following particulars:

 

(a) The lands [should probably say “countries” per (b) following – DJF] in which protection for the invention which is the subject of the application was sought by the applicant or its predecessor in ownership rights;

 

(b) The references upon which the authority relied in the aforementioned country in which the application was examined;

 

(2)    The applicant must answer the demand within four months from being asked to do so, and may append to its answer the documents submitted by it or by its predecessor in ownership rights, to the same authority in reply to the objections raised against the application filed there; if said documents are written in a language which is not an official language, the applicant will append to them a translation into an official language;

 

(3)    If in the applicant’s answer per paragraph (2) there were mentioned references which are specifications of patents, designs, or utility models or other documents which have not been offered for sale to the public, the Commissioner may demand a copy of them if they are not in the possession of the office.

 

As explained in its first line, Rule 36 comes to set forth the implementation of Section 18(a) of the statute.  There’s just one problem with that: there is no section 18(a) in the statute!  Huh?! 

 

Well, Rule 36(2) was enacted in 1968, following the adoption of the statute itself in 1967.  As enacted, the statute indeed contained a section 18(a), which in translation read as follows:

 

18. (a)   In applications of certain classes which will be prescribed, the Commissioner or an examiner may utilize for the examination the following additional means:

 

(1)   To transmit the application to an international institution with which the state has contracted for the sake of searching for material that enables said examination;

 

(2)  To demand that the applicant provide the list of references upon which a foreign patent office relied during examination of an application for the same invention which was filed in that country by the applicant or its predecessor in ownership right in the invention. * * *

 

But in 1995, §18 was amended, and §§18A, 18B and 18C were inserted.  These are written in Hebrew and in translation read as follows:

 

18. Additional Means of Examination (Amendment: 1995)

 

The examiner will utilize at least one of the following additional means of examination:

 

(1)    The list of references upon which any foreign patent authority relied in examining a patent application for the same invention which was filed in the foreign country by the applicant or the applicant’s predecessor in ownership rights in the invention;

 

(2)    A list of publications which were published before the application date, known to the applicant and directly touching upon [alternative translation: pertaining to] the invention;

 

(3)    Copies of publications and references that the applicant is required to list [for the ILPTO] in accordance with this section, if the examiner requests such copies;

 

(4)        Copies of publications and references that are mentioned in publications and references that the applicant is required to list [for the ILPTO] in accordance with this section, if the examiner requests such copies;

 

(5)        Transfer of a copy of the application, for purposes of searching for material that will enable the office to examine, to an institution in Israel or abroad, with which the office has contracted in accordance with any statute in a contract drafted by the Commissioner and that includes a section pertaining to the maintenance of secrecy of patent applications and non-disclosure of information, in accordance with §165 [of the patent statute];

 

and to this end he may do one or more of the following:

 

(1)     demand that the applicant to produce any of the documents listed in paragraphs (1) to (4) above;

 

(2)    transfer the application for the sake of searching as stated in paragraph (5).

 

18A. Obligation of the Application to Update the Office (Amendment: 1995)

 

Until the application is accepted [i.e. allowed and published for purposes of pre-grant opposition - DJF], the application is obligated to update the office regarding any change that occurs in the list of references or publications enumerated in Section 18, if the changes were brought to its attention or the attention of its attorney.

 

18B. Notice of the Institutions Assisting in Examination (Amendment: 1995)

 

The Commissioner shall publish in the official publications journal [the equivalent of the Federal Register – DJF] a notice of the institutions with which the office has contracted per §18(3) and the types of applications with regard to which he plans to use the [search] means enumerated in said section.

 

18C.  Means of Enforcement With Regard to The Examination Process (Amendment: 1995)

 

If a misleading particular was transmitted in the applicant’s answer to a demand per §18, or if the applicant knowingly did not update the office regarding any substantive change in the list of documents or the publications that he is required to update per §18A, and a patent was granted on the application, or the application was accepted [i.e. allowed and published for purposes of pre-grant opposition - DJF] –

 

(1)     The Court or the Commissioner, in a proceeding before them, may do one or more of the following:

(a) cancel the patent or not grant a patent;

(b)    grant a license to exploit the patent to anyone who desires such, as if the Court or Commissioner comes in the stead of the patentee, under conditions agreed upon by the parties, and in the absence of such agreement, by the hand of the Court or Commissioner, in accordance with the matter;

(c)   order a shortening of the term of the patent.

 

(2)   The Court may impose on the transmittor of the misleading particular or the person who knowingly did not update the list of documents or publications, in accordance with the matter, a fine as set forth in section 61(a)(1) of the Penal Statute, 5737-1977.

 

While the amended §18 is in some ways similar to the old §18, it is nevertheless different (otherwise why bother to amend the statute at all?).  And it doesn’t contain a subsection (a). 

 

To people used to Israeli bureaucracy, it’s not terribly surprising that in the 15 years since section 18 was amended, the Justice Ministry hasn’t managed to update the regulations accordingly.  Nevertheless, from a strictly technical standpoint, Rule 36 has no legal force, as it comes to implement a statutory provision that no longer exists.  So from a legal standpoint, the Commissioner’s using Rule 36 as basis for his new proposed policy isn’t tenable.

 

Interestingly, one wonders if the Commissioner isn’t aware of this difficulty: in the nearly 15 years since amended §18 and new §§18A-18C came into force, the ILPTO has continued to send out demand letters as described in Rule 36, but those letters don’t refer to Rule 36.  Rather, they refer directly to amended section 18, which clearly states that the Commissioner has the power to require applicants to provide him with lists of prior art cited in corresponding cases in foreign jurisdictions.  So perhaps the Commissioner realizes that Rule 36 is dead – which raises the question, why does he now refer to a dead rule in support of his attempt to impose new reporting requirements on applicants?

 

Nevertheless, for the sake of argument, let’s assume that Rule 36 didn’t die that day in July 1995 when amended §18 and new §§18A-18C took hold.  Rule 36(2) states that the applicant MAY provide copies of its arguments submitted in response to foreign OAs.  There’s no ambiguity in the Hebrew term used, “reshai” (רשאי) – it means may, as in, is at liberty to.  It’s at the APPLICANT’S discretion to submit such documents.  What part of “may” doesn’t the Commissioner understand? 

 

There is nothing in Rule 36 that gives the Commissioner the power to require that applicants submit copies of foreign OAs, let alone their replies to such foreign OAs.  And there’s nothing in §§18-18C that gives the Commissioner such power, or that empower the Justice Minister to give the Commissioner such power.  In this respect, the new version of this notice – the third one circulated by the Commissioner – is just as defective as its previous incarnations.  If the Commissioner wants to impose such a requirement on applicants, he’s going to require new legislation from the Knesset.  This isn’t a change that can come about via a bureaucrat’s fiat.

 

At least in this draft, the requirement only applies to English-language responses.  The two earlier versions of the notice, had they come into force, would have required the submission of all responses worldwide; presumably it would have been necessary to translate non-English language responses into English or Hebrew.  Even in this regard, the present draft is wanting: as discussed in an earlier post, Arabic is an official language in Israel, so the requirement in draft paragraph 5B that responses be submitted in English or Hebrew – and by implication, not Arabic – is also ultra vires.

 

(As a minor aside, I’d also mention that there is what appears to be a typo in the official Hebrew version of Rule 36 that renders it difficult if not impossible to understand; I’m not going into that particular detail here, and have translated the rule as it appears it was intended to be written.)

Fawning Over Francis?

As reported in an earlier post, last fall the Israel patent community was left scratching its head as a result of the Commissioner’s about-face regarding Australia.  Specifically, in December 2008 the Commissioner indicated that applicants would no longer be able to piggy-back on an allowance in Australia to obtain allowance of a corresponding patent application in Israel, because the ILPTO’s experience had shown that Australian examinations weren’t reliable.  In September 2009, the Commissioner reversed course and again recognized Australia for this purpose, announcing his decision in a tersely worded statement that provided no reasons for the change of heart.  At the time, some speculated, jokingly, that there had been a pay-off of some sort to the ILPTO, perhaps a junket to Australia.

 

The joke wasn’t far off the mark.  In late September, the WIPO general assembly decided to grant Israel the opportunity to become a PCT International Search and Examination Authority.  The reinstatement of Australia a few weeks earlier was done in anticipation of the WIPO meeting at which this decision was taken: Dr. Meir Noam, the Commissioner of Patents, reasoned that by reinstating Australia, he would curry favor with Francis Gurry, the head of WIPO and an Australian national.  While it’s impossible to know if the ruse worked without asking Mr. Gurry himself, it’s hard to believe that the head of WIPO would condition support for recognition of any particular country as an ISA on how that country regarded the WIPO head’s home country, rather than, say, that country’s competence at prior art searching and analysis.  It’s even more difficult to believe that Mr. Gurry actually pays attention to details of Israel patent practice such as whether or not one can piggy-back on Australia to gain allowance in Israel. 

 

While Dr. Noam has admitted that he was trying to get in Mr. Gurry’s good graces for purposes of having Israel named as a potential ISA, it’s hard not to wonder if, in reversing his position on Australia, Dr. Noam wasn’t also angling for a job at WIPO.  He has been pushing for stronger ties with WIPO, and during his tenure hired an Israeli national from WIPO’s administrative ranks to be an adjudicator at the ILPTO.  In February 2009 the Cabinet decided to limit the terms of high-ranking civil servants across the board, so by last September, it was probably clear to Dr. Noam that he would be out of a job at the end of 2010.  Maybe he was hoping that by placing politics, both ILPTO and personal, above substantive concerns about the quality of patent examination in Australia, Mr. Gurry would be more likely to offer him a job.

 

What is clear is that although during Dr. Noam’s tenure as Commissioner, the ILPTO has made progress on some fronts, in others it still lags behind, and in some ways things have gone precipitously downhill.  On the up side, many new examiners have been hired, and according to the ILPTO, as of April 2010 the backlog in patent examination had dropped in most areas to between about 2-3 years from national phase entry to the beginning of examination.  Similarly, the backlog in judicial decisions (e.g. patent and trademark oppositions; patent, trademark and design cancellation actions; ex parte appeals within the ILPTO) had dropped significantly – although given the fact that Dr. Noam’s predecessor had failed to render a single substantive patent decision in the over four years he was on the job, things couldn’t have gotten any worse in that regard.  And as discussed in a previous post, there is now a publicly-available online database that facilitates checking the status of Israel patent applications. 

 

Nevertheless, not all is rosy.  The quality of OAs remains spotty, with many examiners, even senior ones, still failing to explain how the art they cite applies to which claims.  In the 1990’s Israel was one of the first countries to introduce electronic filing of trademarks – credit Nurit Maoz, who is still head of the trademarks division, for that – but it still isn’t possible to file a patent application electronically in Israel, let alone to view patent file histories online.  Similarly, the quality of the judicial decisions has not always been on the mark.  Witness, for example, Dr. Noam’s decision in IL 100816, a case in which a patent containing 1 independent and five dependent claims was at issue.  After disposing of claim 1 as being obvious over the prior art, Dr. Noam concluded that the remaining claims, by virtue of being dependent from claim 1, were necessarily obvious and thus invalid – without actually analyzing the additional recitations in those dependent claims to see if they distinguished over the prior art.

 

Of greater concern is the observation that Dr. Noam has become increasingly authoritarian in his approach to the running of the ILPTO.  While it was traditional for Commissioner to circulate letters from time to time clarifying ILPTO policies, Dr. Noam has issued more such circulars, over 80, than any of his predecessors.  (One PTO employee I spoke with said that they no longer keep up with all the circulars because there are simply too many.)  In several cases, these circulars were so unclear that they necessitated subsequent letters of clarification – in some cases several such clarification letters. 

 

Furthermore, whereas in the past those circulars were issued with respect to questions that had arisen regarding interpretation of the Patent statute and regulations, or policies adopted for administrative convenience, Dr. Noam has in some cases tried to impose new policies that are substantive policy-making and thus properly the province the Knesset (the legislature), not a civil servant.  Placing limitations on the filings of divisionals-of-divisionals is one example.  Another, on tap for the beginning of July, is a requirement, newly imposed by the Commissioner without legal basis therefor, that applicants provide copies of OAs from corresponding applications in foreign jurisdictions and their responses to the points raised in those foreign OAs – even if the claims pending in Israel are different or the applicant has not yet filed a response to the original OA.  (American readers: echoes of the Dudas administration?)

 

Nor has the Commissioner made his administration a model of transparency.  The decision to reinstate Australia was done without explanation, as was the decision to attempt to require applicants to do the ILPTO’s work by imposing draconian reporting requirements.  (Curiously, earlier this month, in yet another circular, the Commissioner announced that in the future he would disseminate draft circulars and solicit comments before issuing new circulars.  Yet later in the same week, he issued more circulars without going through such a process; and to date, no draft circulars have been disseminated.)  Until March of this year, the ILPTO’s web site contained telephone listings of all examiners and many other ILPTO personnel; that list is now gone, replaced with a much more truncated list that doesn’t include examiner telephone numbers.  (Here is a copy of the list of ILPTO personnel from March 2009, organized by department.) In addition, in some cases information is sent via email, without being posted on the ILPTO’s web site.  And the web site itself doesn’t contain, for example, copies of all ILPTO judicial decisions.  

 

Given some of his more recent actions, there will probably be many in the Israel patent community who will not mourn Dr. Noam’s exit as Commissioner.  As for his relationship with WIPO, we will have to wait and see if Dr. Noam ultimately lands a WIPO sinecure, and if he does secure such a post, we may never know if he actively pursued it.  One interesting tidbit, though: Mr. Gurry is in Israel this week, and a letter from the Association of Patent Attorneys in Israel (APAI) to its members stated that Dr. Noam urged that there be a “massive” turnout of patent practitioners at a reception for Mr. Gurry to be held tomorrow in Tel-Aviv.  So that we can show our collective obsequiousness?

Civil Servant Gone Wild: The Israel Commissioner of Patents’ End-Run on The Patent Statute

Ok, I know that if made into a video, the subject of this post won’t sell as many copies as Girls Gone Wild, nor are its effects as wide-ranging as, say, Jon Dudas’ lame (and, mercifully, now late) attempts to circumvent the rule-making process in the USA.  But for those of us who practice patent law in this neck of the woods, the Commissioner has displayed a remarkably cavalier attitude toward the very statute that creates the position he now occupies. 

 

First, there was the announcement by the Commissioner that if an examiner has determined that an application contains claimed directed to more than one invention, then that applicant must file a divisional application along with its response to the examiner.  Divisionals filed after the deadline for response will only be accepted upon payment of an extension fee for each month of “lateness” in filing.  The Commissioner asserted that this policy was dictated by the statute, but it’s not clear that the statute really supports him on this point – and indeed, in the 40 or so years prior to the Commissioner’s announcement that the statute had been in force, none of his predecessors adopted this view.  However, since the cost of an extension is only about $16/month, it will almost always be cheaper for an applicant to wait and see if it wants to file a divisional, and then pay the extension fees, than to pay a lawyer to challenge the Commissioner’s view.

 

The next month, as discussed previously in this blog, the Commissioner imposed a requirement to submit an abstract, thus foisting on the applicant a requirement that the statute imposes on the Commissioner himself.

 

Then we had the now-you-see-it, now-you-don’t case of Australia as a country upon which one could piggy-back under §17(c) of the statute to gain allowance of a corresponding Israel application.  In December 2008 the Commissioner announced that he was taking Australia off the list because experience had shown it to be unreliable (i.e. Australian examinations weren’t very good); in September 2009, he reinstated Australia, without providing reasons.  While the statute empowers the Commissioner to list and de-list foreign patent offices in this manner, it presumes he makes such determinations based on objective criteria of the quality of foreign examination.  Here, the quick change of heart, without accompanying reasons, raised eyebrows.  In retrospect, it appears that the change of heart was motivated not by a substantive change in the situation but by politics, as part of the Commissioner’s efforts to get Israel recognized as a PCT search authority.

 

Next came more extensive reporting requirements under §18 of the statute (the rough equivalent of IDS practice in the USA).  §18 empowers the Commissioner to ask an applicant to provide a list of documents cited during the examination of corresponding applications elsewhere, or which are known to the applicant to be relevant to patentabilty, as well as copies of those documents.  The related Rule 36(1) says that pursuant to §18, before beginning examination, the Commissioner will send a letter to the applicant asking that he provide these documents.  Rule 36(2) says that when an applicant responds to such a request, he may include copies of his arguments submitted in response in the foreign jurisdiction(s).  Note that this is purely at the Applicant’s discretion. 

 

But in January of this year, the Commissioner announced that henceforth, applicants would be required to include copies of those answers, insofar as they relate to novelty and inventive step, and that failure to include such arguments would be regarded as failure to respond to the request under §18.  Nevermind that the statute itself does not empower the Commissioner to request copies of arguments filed abroad.  Or that in the cases of Europe and the USA, those documents will almost always be freely available over the internet, and that ILPTO examiners are already adept at finding those corresponding documents.  Better to act ultra vires and impose unnecessary reporting requirements on applicants than to have Israel examiners engage in a few extra mouse clicks.

 

Next up, limits on the number of independent claims.  About two weeks ago the Commissioner circulated another notice, this one informing people that the ILPTO would only accept two independent claims “of each type”, viz. one or independent claims on a product, one or two for a process for making the product, one or two for an apparatus for making the product, and one or two for using the product.  Ostensibly the Commissioner was merely reminding the public of long-standing ILPTO practice, as most recently enunciated in a 2004 decision of this same Commissioner.  However, there really is no basis in law for the arbitrary limitation of the number of independent claims; and in point of fact, I’ve personally prosecuted applications with numerous independent “Swiss” claims, which belies the assertion that this really represents long-standing ILPTO practice.

 

Finally, we come to this week’s gem.  Rather than paraphrase the Commissioner, I translate here his entire missive:

 

Commissioner’s Circular No. MN81

 

15 February 2010, 1 Adar 5770

 

To:    The Community of Applicants, Patent Agents and Lawyers

From:    Dr. Meir Noam, Commissioner of Patents, Designs and Trademarks

Re:   Division of Patent Applications

 

The purpose of this Circular is to inform the public of the interpretation given by the Patent Office to §24(a) of the Patents Statute, 1968 – 5728 [NOTE: this is a typo – the statute was passed in 1967; it is the Rules that were adopted in 1968 and reflect this in their title.  But that’s small potatoes in the present context - DJF].

 

1. §24(a) states the following: “As long as the application has not been accepted [i.e., opened to the public for inspection following completion of substantive examination – similar to publication in the USPTO Gazette in the pre-18-month publication days – DJF], the applicant may demand that it be divided into individual applications.”

 

2. This section is given to two interpretations: one, that the parent application, and it alone, may be divided until the date of acceptance; the other, that the parent, and any application divided therefrom, may be divided until each one has been accepted.

 

3. The Office hereby serves notice that the interpretation which shall be adopted is that it is the parent case, and it alone, that may be divided until the date of acceptance, and this, inter alia, because of the need to conclude examination proceedings in a reasonable time and because of considerations of legal certainty for the general public.

 

4. This circular shall take effect as of the date of its publication on the Patent Office’s web site.

 

There are several difficulties with this circular.  For starters, if one is already going to distinguish between a parent application and a divisional in terms of the ability to further divide, then there are actually three possibilities, not just two as stated in the Circular:

 

A.     Both the parent and divisional can be divided, the parent until its acceptance and the divisional until its acceptance.

B.     Both the parent and divisional can be divided, but the deadline for dividing in both cases is the date of acceptance of the parent application.

C.     Only the parent case can be divided, and the deadline for doing so is its acceptance date.

 

While the Commissioner is trying to rule out A, it’s not clear from the Circular if he’s settled on B or C as the solution.  (One wonders if in drafting this Circular he received assistance from some of the people at the USPTO who drafted the now-defunct claims and continuation rules, which after their publication required various clarifications of the ambiguities inherent therein.)

 

The bigger problem is that the statute simply doesn’t say what the Commissioner says it says.  Other than giving a divisional the same filing date and priority claims as the parent case, the statute does not distinguish between a divisional and any other application; once a divisional has been filed, the statute treats it as an application like any other, including for purposes of §24(a).  Were the Commissioner’s view correct, then the statute would throughout need to distinguish between divisional and parent applications.  But it doesn’t.

 

This can be seen most acutely by comparing §24(a) to §24(b), which states “If an application contains more than one invention, the Commissioner may, as long as he has not accepted the application, order the applicant to divide his application”.  The applicant then divides his application in accordance with §24(a).  Now suppose that I timely file a divisional, then the parent case issues, and now the examiner says my still-pending divisional claims encompass two inventions.  According to one notice already mentioned above, that constitutes an order to divide the application under §24(b).  Yet according to the latest circular, I CAN'T divide the application at that point, since under §24(a) a divisional, if it can be further divided at all, can only be divided until its parent case has been accepted (“application” in §24(a) referring to the first-filed case in the series) and in this scenario I’m already past that stage. 

 

So in this scenario I respond in either one of two ways.  I could say, Mr. Examiner, you’re no longer empowered to issue an order under §24(b) – you missed the deadline to tell me to divide the application, since the parent case was already accepted, and “application” in §24(b) refers to the same parent application as does §24(a).  Or I could respond, Mr. Examiner, you’re empowered to tell me to divide the application, since the terms “application” and “accept”, respectively, in §24(a) and §24(b) mean different things, but now you’ve given an order with which I can’t comply, since §24(a) prohibits me from dividing my application after its parent has already been accepted. 

 

The second answer makes no sense.  Why would the statute use similar phrasing in §24(a) and §24(b), yet have that phrasing mean completely different things in the two contexts?  And why would the statute empower the Commissioner to order an applicant to do something that the statute in the immediately preceding line prohibits? 

 

But the first answer makes no sense either: inasmuch as §8 stipulates that a patent shall be granted on only one invention, clearly the Commissioner must be able to tell applicants to divide their applications whenever he finds that an application is directed to more than one invention.  

In addition to the logical inconsistencies with the Commissioner’s position, it’s also interesting to note that in the over 40 years since adoption of the statute, not once has any previous commissioner or any court ruled that the time limit for filing a divisional of a divisional is the publication date of the parent case, let alone that filing a divisional of a divisional is verboten.  And given the large number of pre-grant patent oppositions filed in Israel, if indeed the filing of a divisional of a divisional was impermissible under the statute, surely someone would have cited this as grounds to oppose the grant of a divisional-of-a-divisional.  But that hasn’t happened either.  How reassuring to know that after 40-some years, this Commissioner has finally gotten it right.  And that he will no doubt have to entertain some opposition or revocation actions against divisionals-of-divisionals on the grounds that they were improperly filed.  (One wonders if he’ll be willing to refund, with interest, all the examination, publication and renewal fees paid by those applicants over the years for those divisionals-of-divisionals that he maintains the ILPTO should never have accepted in the first place.)

 

Finally, we have paragraph 4 of the circular.  This paragraph isn’t problematic so much as telling.  When one enacts a new policy that changes the status quo, that policy needs a starting date.  But if we’re talking about statutory interpretation, jurisprudential theory says that that interpretation has always been the correct one.  If indeed §24(a) says that one can’t file a divisional of a divisional, or that one can but the time limit for doing so is the publication of the grandparent case, then §24(a) has said this since it was adopted and came into force in 1967.  We don’t need to be told the proper interpretation of this section this in 2010, let alone be told when this interpretation will come into force. 

 

Thus the inclusion in the Circular of a paragraph announcing a starting date is a sort of Freudian slip.  This inclusion suggests several things.  It suggests that the Commissioner doesn’t believe what he wrote.  It suggests that that he knows full well that divisionals-of-divisionals are permissible, and that the deadline for filing a divisional from an existing divisional application is the acceptance date of the existing divisional, not of the grandparent case.  And it suggests that that he knows the issue of “interpretation” is merely a fig-leaf meant to mask his disregard for the plain meaning of the statute, and for the democratic process.  I’m not fooled. 

 

I am, however, insulted.  There may be arguments to be made for and against allowing divisionals of divisionals (though I can’t really come up with a good argument against; the fact that the EPO isn’t fond of them means they’re probably a good idea).  But hitherto Israel has allowed them, and the statute that permits such filings remains unchanged.  If anyone feels that the policy embodied in the statute should be changed, they are free to make their arguments in the public sphere and to lobby the Knesset to change the statute.  It is not the place of an unelected bureaucrat, whose position is an administrative and quasi-judicial one, to usurp the prerogatives of the public and the public’s elected representatives, and to arrogate for himself the role of policy-maker.  That Dr. Noam acts as if he may do so constitutes a slap in the face to the Israeli public.

 

Then again, maybe the Commissioner just views this as good business: after convincing the powers-that-be to allow the ILPTO to undertake a significant hiring increase in the last several years, and following a significant drop in the number of new applications filed in Israel in 2009, the Commissioner may be looking for ways to increase the ILPTO’s workload, so all those examiners don’t sit there twiddling their thumbs.  But if that’s the case, why require applicants to do the examiners’ work for them by providing examination reports and responses from abroad?

 

Unlike the Commissioner’s other forays into ultra vires land, I believe that this one has a reasonable chance of being directly challenged.  It’s not inconceivable that a pharmaceutical company will have a third-generation divisional application that it wants to get on file; or perhaps an adverse party will challenge an application or a patent on the grounds that it is a third-generation divisional. 

On the other hand, maybe here too Dr. Noam will side-step the bullet.  Most pharma patents in Israel are handled by a few large offices, who will be more than happy to advise their clients that all divisionals need to be filed before the parent case is accepted – a position that just happens to align with those offices’ interests in cash flow.

Let’s Confuse Everyone - Update On Excess Claims Fees for Israel Patent Applications: New Regulations Published; Unclear if Excess Claims May be Cancelled Prior to Examination to Avoid Fees, or if Excess Claims Fees are Due in National Phase Application

As noted in an earlier posting, on December 1, 2009, the Knesset’s Constitution, Statute and Law Committee approved the imposition of a fee of 500 shekels (approximately $130 at present exchange rates) for each claim in excess of 50.  Now, you’d think that even the Knesset and the Justice Ministry (which drafted the actual wording of the update) could get something as simple as this right, but noooooo – they had to word it in a way that sows confusion.  To wit:

 

Notice of the amended regulations was published in the official state publication journal (the equivalent of the Federal Register in the USA) on December 24, 2009; the new regulations will take effect 30 days from publication, viz. on January 23, 2010.  The amended regulations (namely the Second Schedule), in relevant part, read as follows:

 

Second Schedule

(A) 1. Upon submission of an application for patent per §11(a) of the statute, 1021 NIS

   1A.   Fee for submission of each claim in a patent application beginning with the 51st claim, 500 NIS * * *

 

This brings us to our first problem: while the revised regulations say that the fee for the first 50 claims for an application filed under §11(a) of the Patents Law is due upon filing of the application (a position necessitated by §15 of the statute, which says that an application will not be accorded a filing date until the filing fee has been paid), and that the fee for each claim in excess of 50 is 500 shekels, the amended regulations do not say when the fee for each excess claim is due.  If the excess claims fees are due upon filing, then applicants will need to carefully consider how many claims to file.  But if the payment of excess claims fees can be deferred until later, why not file a gazillion claims and then decide how to proceed once you’ve seen how things are progressing in the corresponding cases in Europe and the USA?

 

In a letter sent out on January 7, 2010, the Commissioner apparently tried to clarify this point: “The obligation to pay the fee [for excess claims] commences at the time of the filing of the patent application or at the time the specification is amended to include more than 50 claims.  Such an amendment is predicated upon payment of the appropriate fee.”  This implies that as soon as an application is filed with excess claims, the excess claims fees are due, even though the amended regulation does not state this. 

 

However, the Commissioner’s letter goes on to state that “failure to pay the fee for claims 51 and up will result in delay of examination of the application until the fee is paid”, implying that the excess claims fees themselves are not due upon filing, but only when the applicant actually wants examination to proceed.  Hence, writes the Commissioner, the language of the pre-examination letter that is sent to applicants shortly before substantive examination commences “will be updated…to remind the patent applicant community to pay the entirety of the fee due before the application comes up for examination.” 

 

Thus, the Commissioner’s latter statements imply that applicants who file applications with more than 50 claims but do not pay the excess claims fees at the time of filing, then cancel the excess claims prior to the commencement of substantive examination, will not be required to pay the excess claims fees, ever (unless they re-insert the excess claims later). 

 

Nothing like taking what should be a straightforward amendment and making it unnecessarily complicated.  Presumably this matter will be clarified in the near future; personally, it seems to me that if the excess claims are cancelled prior to examination, an applicant shouldn’t have to pay for them, as the ILPTO hasn’t had to expend any extra resources examining the extra claims.  (By the same token, if the excess claims were already allow by the USA or the EPO, and the applicant request allowance under §17(c), I don’t see why the applicant should have to pay excess claims fees, as the Israel examiner isn’t going to have to do any real work anyway.)

 

Now for the second bit of confusion: it is unclear if the new regulations apply to the national phase of PCT applications filed in Israel.  How’s that?  Well, amended part (A)1 of the Second Schedule, which refers to the filing fee for the first fifty claims, refers to applications filed under §11(a) of the statute.  But national phase applications are filed under §48(d), not §11(a).  Thus part (A)(1) clearly does not apply to national phase applications. 

 

Moreover, part (A)7 of the Second Schedule, which sets the fee for the filing of national phase applications filed under §48(d), was not amended accordingly to refer to the first fifty claims.  The failure to amend part (A)7 could thus be taken as indicating that excess claims fees are not to be imposed on national phase applications. 

 

On the other hand, new part (A)1A does not refer to a particular section of the statute, and simply sets a “Fee for submission of each claim in a patent application beginning with the 51st claim”.  Part (A)1A could thus be viewed as setting excess claims fees for national phase applications as well – although if that’s the case, why amend (A)1 at all?  And why number this statement (A)1A rather than place it elsewhere, where it will be clear it’s applicable to both regular and national phase applications? 

 

I have no doubt the ILPTO will adopt the view that excess claims fees are due for national phase applications.  Any national phase applicants who would like to test this by filing an application with 51 claims and then fight the ILPTO over the charge for the 51st claim are invited to contact me – I would be willing to fight the ILPTO on this point pro bono.

 

On the bright side, there’s one point that doesn’t seem to be confusing: it appears from the Commissioner’s letter that the ILPTO will allow applicants who originally paid for excess claims to cancel some of those excess claims and substitute them with others.  Thank goodness for small favors.

Excess Claims Fees for Israel Patent Applications

Hitherto, Israel has charged a single fee for patent applications, irrespective of application length or the number of claims.  Two weeks ago, the Commissioner sent out a letter informing the patent practitioner community that on December 1, 2009, the Knesset’s Constitution, Statute and Law Committee approved the imposition of a fee of 500 shekels (approximately $130 at present exchange rates) for each claim in excess of 50.  As of December 22, 2009, official notice of this change had not been published in the official state publication journal (the equivalent of the Federal Register in the USA), but such publication is expected soon; the new regulation is expected to take effect 30 days from publication. 

 

In the same vein, this week the ILPTO circulated an updated list of official fees that will take effect January 1, 2010.  Most fees have been revised upward by a few percentage points.  For example, the filing fee for a new patent application will rise about 2.5%, from 1162 shekels to 1191 shekels.  The new list makes no mention of excess claims fees (as it shouldn’t, since such fees will not take effect January 1), nor does it even mention that fees for excess claims will soon be imposed.

Presumably, (a) the new regulation governing excess claims fees will not have retroactive effect for applications having 51 or more claims that were filed prior to the regulation’s coming into force, and (b) applications which as of the publication date of the new regulation have fewer than 51 claims, but which are amended to include more than 50 claims between the publication date and the coming into force of the regulation, will not be subject to excess claims fees, although the latter is an open question.  Similarly, it is unclear if in the future, excess claims fees will apply to applications already on file with more than 50 claims, in cases in which some of the excess claims are cancelled and replaced with new claims.  For those applications where many claims could be filed but for some reason haven’t been filed, it may be prudent to add such claims now, so as to avoid having to pay fees for them in the future.

As a practical matter, the combined filing and publication fees for a new application will remain about 1200 shekels.  Consequently, in those cases where an applicant feels a necessity to file 53 or more claims, from an official fees standpoint it will be less costly to file two applications each containing up to 50 claims than to file a single application containing 53 or more claims.  In thinking about how to approach such situations, there spring to mind a number of options for minimizing applicants’ costs while preserving their ability to maximize their claim coverage.  I won’t detail those here.  Suffice it to say that the decision regarding how to approach such cases should be made in consultation with competent Israel patent counsel.

Commissioner-cum-Magician: Making Australia Disappear and Reappear

Like the USPTO, the Israel PTO is blessed with some good patent examiners.  Like the USPTO, it also has more than its fair share of less-than-stellar examiners.  And like the USPTO, the ILPTO has a backlog of cases to examine.  Unlike the USPTO, however, the ILPTO long ago decided to admit it had a problem, and to do something constructive about it.  Thus, in the 1980’s, the ILPTO began allowing applicants to piggyback their Israel applications on the allowance of a corresponding application in certain other jurisdictions, most notably the USA and the EPO.  In 1995 this practice was enacted into legislation the form of §17(c) of the Patents Act. 

 

As one might imagine, examination under §17(c) has been a popular choice with applicants who also file outside Israel and who seek to reduce their patent prosecution costs: coupled with the fact that applications can be filed in Israel in English, §17(c) practice enables applicants to leverage allowance in jurisdictions in which they will prosecute anyway to obtain an Israel patent inexpensively.[1]

 

§17(c) practice has also caught the attention of proponents of patent office worksharing.  If two patent offices can conduct equally good examination, the argument goes, and their substantive criteria for patentability are similar, why should both offices devote resources to examining what is substantively the same application?  It would be more efficient to let one office do the examination and for the other to rely on the examination conducted by the first.  In this regard, Israel’s §17(c) practice is remarkably progressive, as it sets aside national pride or arrogance, in principle acknowledges that other patent offices can do as good or better a job of examination as the Israel PTO, and takes advantage of that fact to reduce examiner workload. 

 

Nor does §17(c) practice divest the Israel PTO of control over the examination: under §17(d), the Commissioner may refuse a request under §17(c) if the conditions of §17(c) have not been fulfilled, or if “there exists another a special reason not to accept the application”.  (More on the latter statement below.)

 

The statute vests the authority to determine which patent-granting authorities may be relied under §17(c) in the Commissioner of Patents.  The statute provides no guidance as to how the Commissioner is to determine whether or not a particular jurisdiction should be included in the list, and the ILPTO itself has never published the criteria it uses in making such determinations.  Nevertheless, presumably, the Commissioner must be satisfied that a given patent office has high-quality control; of the offices currently on the list, none is a registration-only jurisdiction.[2]  In fact, in December 2008, the Commissioner issued Circular No. 65, in which he removed Australia from the list of countries:

 

“Because of the experience that the Patent Office has accumulated in implementing §17(c) of the Patents Act, it has been decided to remove Australia from the list of countries in which acceptance of a patent application enables an applicant file a request under §17(c).  This is in view of the fact that in most of the instances in which applicants request examination per §17(c) on the basis of an Australian patent, §17(d) is invoked [i.e. the Commissioner found there were grounds to refuse the request].”

 

Put less diplomatically, the ILPTO found that examination by IP Australia wasn’t very good.  Prima facie, then, notwithstanding the absence of clear guidelines for inclusion on the list, the Commissioner tries to limit the list of acceptable countries to those which have a proven track record of good searching and analysis of the prior art.

 

Which is why the Commissioner’s issuance earlier this week of Circular No. 75 raised eyebrows:

 

“Circular No. 65 is hereby canceled.  For the avoidance of doubt, it is clarified that Australia is again included in the list of countries in which acceptance of a patent application enables an applicant file a request under §17(c).”

 

No reasons given, just a reinstatement.  If this were Doug Henning or David Copperfield, it would be great stuff - Poof!  Now you don’t see Australia, it now you do!  But in the context of the ILPTO, it’s not so magical.

 

The lack of a reason for the reinstatement is particularly glaring against the backdrop of the earlier reason for dropping Australia from the list – given the ILPTO’s experience with IP Australia over the course of many years that led to dissatisfaction with Australian examination, what changed in the course of a mere nine months?  And what prompted the Commissioner to re-evaluate the situation so soon?  Is the Israel PTO trying to curry favor with IP Australia as Israel attempts to become certified as a PCT Search Authority?  Did someone at the ILPTO recently get a trip to Australia?  Both of these possibilities are suggested by the Commissioner’s Rosh Hashana greetings, sent out two days after Circular No. 75, in which he acknowledged that Israel is attempting to be certified as a PCT search authority, and that the ILPTO has established “an important connection” with IP Australia.

 

Coupled with the lack of transparency, let alone clear-cut guidelines, in how the Commissioner determines which countries to include on the §17(c) list, the Commissioner’s about-face on the inclusion of Australia in the list of §17(c) countries only serves to undermine confidence in the §17(c) process within the context of Israel patent practice, and to highlight the possibility of manipulation or usurpation of worksharing programs generally by political considerations (a possibility acknowledged by proponents of worksharing).  That’s a shame, because worksharing, done properly, can result in better patents across the board, in a larger number of jurisdictions.   

 

Incidentally, the lack of transparency in §17(c) practice by the ILPTO isn’t confined to the inclusion of countries on the list.  It also applies with respect to the invocation of §17(d) by the ILPTO.  As noted above, under §17(d) the Commissioner may refuse a §17(c) request either because the application doesn’t meet the requirements of §17(c) or if “there exists another a special reason not to accept the application”.  But in the 14 years since §17(c) was enacted, the ILPTO has never clarified what constitutes such a “special reason”.  Thus, unless the ILPTO cites some killer prior art that was missed by the foreign patent office, the applicant is left to wonder why his §17(c) request is being refused.

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[1] The head of one local in-house patent department even told that if it weren’t for §17(c), his company wouldn’t bother filing in Israel. 

[2] As of September 6, 2009, the list consists of austria, Australia, the USA, Germany, Denmark, the UK, the Russian Federation, Japan, the EPO, Norway, Canada and Sweden.

Abstract or abstruse?

Both the United States and Israel publish notices of patent applications that have been allowed by their respective patent offices.  In the United States, this happens every Tuesday in the form of the USPTO Gazette.  (See the 12:01 Tuesday blog for more info.)  In Israel this occurs about once a month.  Both publications contain bibliographic data about the allowed applications, including an abstract. 

 

In the USA, the abstract is submitted by the applicant.  The requirement to do so is not found in the statute, but in Rule 1.72(b).  As anyone who has practiced in the USA knows, anything an applicant says before the USPTO can and will be used against the applicant during subsequent litigation to limit the scope of the claims, literally and/or under the doctrine of equivalents.  Hence, notwithstanding the statement in Rule 1.72(b) that “The purpose of the abstract is to enable the United States Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure” – thus implying that the abstract will not be used for purposes of claim construction – the Federal Circuit has on occasion used the abstract in construing the claims.  See, e.g. Revolution Eyewear v. Aspex Eyewear, 563 F.3d 1358 (Fed. Cir. 2009).  As a result, Irving Kayton and others have urged applicants to be as careful writing their abstracts as in writing the rest of the application, avoiding the use of expressions such as “The invention is” or “An object of the invention is to provide…”.

 

In Israel, the situation has hitherto been somewhat different.  Section 26 of the patent statute states that the Commissioner will publish notice of acceptance of the application, including “what in the Commissioner’s view is a description of the essence of the invention”.  Traditionally this has meant that the ILPTO simply takes claim 1 and, if appropriate, a relevant drawing, and publishes this as the “essence of the invention”.  Furthermore, section 27 of the statute explicitly states that this description “shall not serve the court or the Commissioner as evidentiary material in interpreting the specification [which includes the claims – DJF] in any judicial proceeding.”

 

The situation in Israel changed last week, with the issuance of Commissioner’s Circular No. 73.  (Commissioner’s Circulars are public notices in which the Commissioner announces new ILPTO administrative policies.) In it, the Commissioner explained that hitherto, it has been the Government Printing Office that typed up the information regarding the “essence of the invention” for publication.  Now, with newly-emplaced technology, it is possible to spare the GPO the work of typing in this information itself, as the information can be taken directly from the ILPTO’s own electronic files. 

 

So far, so good.  The rub is that in order to take advantage of the new technology, it will be necessary for applicants to supply in electronic form a statement as to what constitutes “the essence of the invention”.  Hence, effective as of the publication of Circular No. 73, all applicants, except for applicants whose applications are PCT national phase applications, are required to submit to the ILPTO a statement of the essence of the invention as an .rtf file of no more than 2 megabytes.  (In the case of national phase applications, the abstract submitted to as part of the PCT filing will be used.)  A request for applicants to provide this statement will included in the Notice of Allowance; according to the Circular, the deadline for submitting the statement of the “essence of the invention” will be the deadline for paying the Issue Fee.

 

At first blush, the new policy regarding abstracts seems unremarkable.  Administratively, the burden imposed upon applicant by the new policy is minor, as by the time most Israel patent applications are allowed, corresponding PCT and/or US applications, including an abstract, have already been filed, and the .rtf file of the abstract can be submitted by email to the ILPTO.  And substantively, §27 would appear to insulate applicants from their self-authored abstracts coming back to bite them.  

 

Nevertheless, upon reflection, it would seem that risk-averse applicants would do well to adopt a Kayton-like approach in submitting their abstracts.  The expression “essence of the invention”, which appears in §§26-27 of the statute, also appears in §49, which is the section that establishes that the patentee has the right to prevent others from exploiting an invention for which a patent has been granted, “whether in the manner defined in the claims or in a similar manner that includes, in view of what is defined in the claims, the essence of the invention that is the subject of the patent”.   Thus, in cases where literal infringement cannot be shown, the patentee needs to demonstrate infringement of “the essence of the invention”, so the applicant would be remiss to put statements into the record that could be used to restrict the scope of this “essence of the invention”. 

 

Furthermore, with respect to the shield provided by §27, it could be argued that a distinction should be made between an abstract provided by the Commissioner versus an abstract provided by the applicant itself.  The former does not necessarily reflect the applicant’s views as to what constitutes the “essence of the invention”, and indeed is usually made without thought on the part of the ILPTO by simply reprinting claim 1, and without seeking the applicant’s input.  The latter, however surely does reflect the applicant’s view.  It could be argued that §27 is only meant to provide a shield for the patentee from the ILPTO’s possibly haphazard, one-sided characterization of “the essence of the invention”, not from the patentee’s own such characterization, and thus §27 does not apply to the applicant’s abstract. 

 

Fortunately, it is relatively easy to write and an abstract that is non-committal, e.g. “There are disclosed compounds of the general formula X; other embodiments are also disclosed”.  Even if the ILPTO notice explicitly asks the applicant to provide a statement describing “the essence of the invention”, the applicant could simply respond that “The enclosed text is claim 1 of the application; the applicant does not take a position as to what constitutes ‘the essence of the invention’ ”. 

 

Finally, while it is admirable that the Commissioner is attempting to make ILPTO and GPO operations more efficient, he appears to have exceeded his authority with Circular No. 73.  Neither the statute nor the implementing regulations require the applicant to provide an abstract, let alone a description of the “essence of the invention”.  In contrast, the statute specifically requires that the Commissioner publish what he considers to be the essence of the invention.  There is no statutory basis for the Commissioner to require an applicant to provide him with a statement as to what the applicant considers to be “the essence of the invention”, let alone to publicly declare such a position. 

 

It is unclear what will happen to applicants who fail to provide the required statement in time, even if they timely pay the issue fee.  Will publication of the application be delayed until the applicant provides the statement?  Will the application be considered abandoned?  Will the applicant have to pay an extension fee for the overdue abstract?  Since damages for patent infringement in Israel can only be accrue from the time the application is published, such delay or abandonment would deprive the applicant of effective patent term or even patent protection, without any legal basis for such deprivation.