America-Israel Patent Law

Why Does The Israel PTO Charge A Fee To Grant DAS Access?

To IP professionals, "DAS" stands for "Digital Access Service", a service run by the World Intellectual Property Organization (WIPO).  As explained on WIPO's site:

"The WIPO Digital Access Service (DAS) is an electronic system allowing priority documents and similar documents to be securely exchanged between participating intellectual property (IP) offices. The system enables applicants and offices to meet the requirements of the Paris Convention for certification in an electronic environment.

"The Service is intended for use with documents related to patents, utility models, industrial designs and trademarks."

The idea is you file a patent (or design, or trademark) application in one jurisdiction, and within a specified period of time (one year for patents, generally 6 months for designs or trademarks) you can file in other jurisdictions and claim "priority" from the first filing, which means it's as if you filed that first application in the other jurisdictions on the same day you filed in the first jurisdiction. 

Until the computer age, and even well into it, for such a priority claim to be effective, an applicant had to provide each foreign jurisdiction with a paper copy of the priority document, certified as authentic by the issuing patent office. This usually involved someone at the first office photocopying the document, then affixing a ribbons and seals to show that it was the real deal. Since employee time costs money, applicants had to pay for these copies. And then had to pay to send the physical copies by courier to an associate in each foreign jurisdiction of interest, who would charge for filing the document.

At some point, some IP offices made bilateral arrangements to provide each other with electronic versions of priority applications.  Then WIPO introduced DAS, which is wonderful, because (a) any IP office can participate, and (b) once a participating office has uploaded the priority document to DAS, any other participating office can download a copy from DAS. Since the original copy was provided directly by the office in which the document was originally filed, the downloaded copies are certified in the sense that they're verified as authentic, and the applicant no longer has to obtain multiple certified paper copies - the one copy directly uploaded to DAS by the first office is sufficient. And no need to pay couriers or foreign associates to the document filed.

With the automation of tasks through computers, and the move of many if not most patent offices to electronic filing and record keeping, it takes almost no effort for an IP office to provide a copy of a priority document to DAS.  The USPTO, for example, doesn't charge money to upload an application to DAS.  If you file, say, a new provisional patent application using an Application Data Sheet (ADS), the default setting is that you're giving instructions to the USPTO to make that application available in DAS (there's a box to check to opt out, though I don't know why one would do that).  If you don't use an ADS at the time of filing, you can later submit a form SB/39 instructing the USPTO to make the document available to DAS.  And DAS has a feature that allows applicants to verify that the document has been uploaded to DAS. 

Israel joined DAS a few years ago, several years after electronic filing of all patent applications filed by a patent practitioners (the vast majority of filings in Israel) became mandatory.  But for some strange reason, not only will the Israel PTO make a priority document available via DAS only if the applicant explicitly requests that it do so, but the office continues to charge a fee as if it is preparing a paper copy of the document, even though the document was almost certainly filed in electronic form.  The need to make the request, and that fee, remains reasons why I still usually do my clients' initial filings outside of Israel.

Patent Practitioners Aren't The Same As Lawyers: Quod Erat Demonstrandum redux

Another example of lawyers being a different breed than patent attorneys: members of Board of Trustees of California State Bar admit they screwed up by not investigating over 200 complaints against a lawyer over a period of 40 years. The lawyer is now disbarred and facing federal charges for misappropriation of $18 million of client funds.

Raphael Mechoulam z"l

Cannabis has become a become a big (legal) business in recent years. This weekend marked the death of Raphael Mechoulam at the age of 92. An emeritus professor at Hebrew University, he was one of the fathers of research into cannabis. He began his work in this area in the 1960s and published some of the seminal papers on the cannabinoids found in cannabis. Pubmed indicates that in just the last 21 years - well into retirement, and a period that excludes the first 40 or more years of his research activity - he had 178 publications. His work was cited or listed as prior art in numerous patents and patent applications, and he himself is listed as an inventor on dozens of patents and patent applications, including two US patent applications published within the last year. יהי זכרו ברוך

This Is Why The Use of Trademarks To Identify Goods In Patents Can Be Problematic

For those who don't speak Hebrew, the bottom line says, "Cream Cheese 25% Fat - New Recipe".

Address for Renewal Fee Service: Another Suggestion for the Israel PTO

Patent renewal fees, also sometimes called maintenance fees or annuities, are a feature of most patent systems.  Readers can look at economic-analysis-of-law textbooks for an explanation of the economic rationale for these fees, but from the standpoint of most patent offices they’re just another form of income.  In the US, renewal fees are due 3.5, 7.5 and 11.5 years after patent grant; in Israel they’re due within three months of grant and thereafter at 6, 10, 14 and 18 years from the filing date.

Although the renewal fees themselves can get hefty, particularly toward the end of the life of a patent, administratively it doesn’t take much to pay the fee, especially now that most patent office accept online payments.  It should therefore come as no surprise that there are several companies that in essence function as renewal fee payment aggregators: they have managed to get lots of customers to pay them to manage renewal fee payments, and as a result they’re usually able to negotiate bulk discounts with a local service provider that takes care of the actual payment.  (I say “usually” because it's not always the case that the cost when working through one of these providers is cheaper.) For patentees, especially patentees with large portfolios, this can be a good deal, since the renewal fee company keeps track of the deadlines and the costs, for less than it would cost having a law firm track this information.

The USPTO recognizes the fact that paying a renewal fee is a purely ministerial act, and allows a patentee to maintain one address for service for correspondence for substantive matters (like patent term extensions), while maintaining a separate address for correspondence pertaining to renewal fees. This way, if the patentee chooses to use a renewal fee service, and there’s a power of attorney on file, the attorney of record is off the hook for renewal fees.

Sadly, while the Israel PTO recognizes that paying renewal fees is purely ministerial and therefore will accept a renewal fee payment from anyone, the Israel PTO does not recognize that it’s possible to have separate correspondence addresses for renewal fees and for other matters. This oversight creates unnecessary work for local practitioners, particularly since the Israel PTO usually requires – unjustifiably, in my view, but that’s a topic for another blog post – that patent applicants submit a power of attorney.  The way it works is that the Israel practitioner will generally prosecute a case through to grant, and then pay the first renewal fee due within 3 months of grant.  Thereafter, though, the patentee often uses a renewal fee service, which contracts with one of the large Israel patent firms to take care of its renewal fees.

That in and of itself wouldn’t matter, but (a) the Israel PTO sends renewal fee reminders* to the address for service on record, and that’s usually the address of the practitioner to whom the POA was given, and (b) the renewal fee certificates that are issued once the fee has been paid are sent to that same address for service. 

The result is that a practitioner who has been told by the client that he is not responsible for renewal fees in a particular case continues to receive notices about renewal fees for that case, something that may necessitate checking the docket system to confirm that he is not responsible for renewal fee in question.

While a practitioner could in principle withdraw from representation once the patent issues, that’s overkill, since the patentee may want the practitioner to continue to be responsible, e.g. should the patent be subject to a cancellation action of if it’s desired to obtain an extension of a pharmaceutical patent.

There is no reason the Israel PTO can’t do like the USPTO does, and enable the recording of a separate address for renewal fee correspondence. It would make life easier for everyone involved.

*The fact that the Israel PTO sends renewal reminders BEFORE the fees are due is a nice service. The USPTO, by contrast, only sends out a reminder once the initial deadline has been missed, as if to say, “Oops, you missed your deadline and now you can still pay, but with a 10% penalty.”

USPTO Moving to Electronic Issuance of Patents

In a press release from today and a Federal Register Notice that will be published tomorrow, the USPTO announces that in April it will be moving to electronically issued patents, rather than continuing to publish paper copies. This will come as a relief to some, but will be disappointing for those who like those paper copies.

However, the main practical difference for applicants will be that the window to file continuation applications (or to withdraw the application from issue, for example to file an information disclosure statement) will be much smaller.  At present, once the issue fee is paid, it takes the USPTO several weeks (usually six to eight) to issue the patent, an act that always occurs on a Tuesday. About three weeks before the patent is issued, the USPTO mails an "issue notification", telling the applicant when the patent will issue, and effectively informing the applicant of the deadline to file a continuation application or withdraw from issue.  Under the new scheme, the patent will issue shortly after the issue fee is paid, still on a Tuesday, but the applicant will only get warning of the impending issuance 5 or 6 days beforehand.  "Therefore", says the USPTO, "the best practice would be for applicants to file these submissions as early as possible. Preferably, continuing applications should be filed before the payment of the issue fee."  This may be the first time that I will recommend that clients follow legal advice given by the USPTO

When 1+1 Does Not Equal 2: Israel PTO Filing System Gags on Merged PDF File

I had a strange experience this morning when filing something at the Israel PTO via the ILPTO EFS.  I had merged two pdf documents into a single pdf document, and when I tried to upload the merged document to the Israel PTO filing system, it gave me an error message - something about a problem with the fonts.  But when I uploaded up each pdf document separately, I received no such message.  Thinking that the problem might be with the pdf editing program I was using to merge the files, I merged the two files using a different pdf editor, but the same thing happened when I tried to upload the merged file.  Printing the merged file as a new pdf document using cutepdf didn't help either.  Ultimately I uploaded the two documents separately (listing one as the specification and one as a sequence listing, which it's not, but it's clearly labeled "appendix"; I was concerned that the EFS would only accept text files as sequence listings, but it was fine with my pdf).  

Are there any hardcore pdf mavens out there who can explain what the glitch in the ILPTO's filing system might be?

Mea Culpa, and Check Your Israel PTO Email Subscription

In a previous post I stated that the Israel PTO did not use its regular email subscription list to inform people about its recently-held "roundtable" on possible "ethics rules" for patent practitioners.  Turns out I was wrong on that score, and I apologize for that.  I discovered last night that the email account I usually use stopped receiving emails via the ILPTO subscription list about two months ago.  (There's another account I have to which those emails are also sent, which is how I discovered the source of the problem, but I check that account infrequently.)  I'm not sure why I stopped getting the emails at my regular account, but I promptly re-subscribed.  If you're supposed to get emails from the Israel PTO but haven't received any lately, maybe you should re-subscribe.

FWIW, I still smell a rat with the process for adopting these "ethics rules", but that's for a future post.

Israel Reaches 300,000 Patent Applications

I didn't see anything about this on the Israel PTO's web site, but from the Patents Journal that published on February 1, I see that Israel hit patent application no. 300,000 on January 16, 17 or 18.  Patent applications in Israel are numbered sequentially and stay the same once a patent is granted, and since not all applications proceed to grant, this means that we're still at fewer than 300K granted patents.  Still, 300,000 applications is a respectable milestone.

To get a sense of timing, application no. 75,100 was filed in May 1985 (before Israel joined the PCT), no. 100,000 was filed in November 1991, no. 125,000 in June 1998 (after Israel joined the PCT), no. 150,000 in June 2002, no. 175,000 in April 2006, no. 200,000 in July 2009, no. 225,000 in September 2011, no. 250,000 in January 2017, and no. 275,000 in May 2020.  Most of those applications were all filed as national phase applications of PCT filings, and consequently in the ILPTO's database their filing dates are listed as the PCT filing date rather than the national phase date, but the application number accords with the date of national phase entry.

Patent Practitioners Aren't The Same As Lawyers: Quod Erat Demonstrandum

This afternoon, the Israel PTO and Justice Ministry held a roundtable discussion about in-the-works draft ethics rules for patent practitioners.  I may or may not report more on the meeting in a later post, but while that meeting was going on, this story broke about the head of the Israel Bar Association resigning because he whacked off during a video chat with a female colleague who he'd recommended for a judgeship. The story implies that he admits to the act, but didn't believe he did anything wrong because it was consensual.

Every time the issue of ethics rules for patent practitioners in Israel has come up, I've said that patent practitioners don't have a reputation as sleazebags and don't have the kind of opportunities for abuse of client trust that lawyers do. And usually I've pointed to the existence of canonical lists of lawyer jokes on the internet, but the noticeable absence of the same for patent practitioners. But I think this story proves my point. Especially when one considers that this guy's predecessor as head of the bar association resigned amidst criminal charges of trying to get his mistress through passport control improperly. Or that another former head of the bar association sued a cop for half a million shekels - and lost - after the cop arrested the lawyer when the lawyer refused to pay his cab driver.

Not the same professions. QED.