America-Israel Patent Law

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.