America-Israel Patent Law

Current USPTO Director Listens to Former USPTO Directors and Withdraws Proposed Rule for Terminal Disclaimers

I have written in the past about terminal disclaimers (TDs) under US law (e.g. here and here). Briefly, a TD promises that (a) the term of the patent that issues from the subject application will not extend time-wise beyond the term of an earlier patent that is specified in the TD; and (b) both patent need to be co-owned in order for the later-issued patent to be enforceable.

TDs arose at a time when US patents were issued for 17 years from the grant date, and there was no publication of applications prior to grant. In cases in which later-pending claims were deemed to be obvious over the granted claims of an inventor’s earlier-issued patent (for example, the inventor took the narrow claims than an examiner was willing to grant, then filed a continuation in order to argue further about broader claims to which the inventor felt he was entitled), where the earlier patent was not available as prior art against the later application (most commonly when the later application was a continuation of the earlier patent), TDs provided an elegant solution for the PTO and the inventor: by limiting the term of the later-issued patent, TDs preclude the inventor from gaming the system to obtain effectively a longer patent term than that to which he was entitled (since the later-issuing patent, the claims of which in principle could have been included in the earlier patent, would in the absence of a TD expire later than the claims of the earlier-issued patent); and by requiring co-ownership for enforceability, third parties wishing to license the patents or challenge their validity would only have to deal with patent owner. 

Even after the US switched to a 20-years-from-earliest-filing regime in the 1990’s, thus in most cases obviating the need to the “terminal” part of the TD, the co-ownership requirement remained.  TDs thus are still in use any time an examiner makes an “obviousness-type double-patent” rejecting between an applicant’s pending application and applicant’s patent or additional pending application.

There’s one catch to a TD: the PTO has to approve it. Ostensibly, that’s just a ministerial act, and in some cases, via the PTO’s electronic filing system, one can submit a TD that is automatically granted, without human intervention. Of course, that route involves providing the PTO with the magic words it wants to see in a TD.

Last spring, the USPTO proposed new rules regarding terminal disclaimer practice. These would have increased the cost for filing a TD, but more importantly they would have made the grant of a TD conditional upon agreeing to more than just a limitation of the term of the patent and co-ownership as a requisite for enforceability. The proposed rules would have made the applicant promise that if a claim in one of the TD-related patents was invalidated, then the claims in the other patent would also be invalid.

The PTO received about 350 comments. I have not read all of them, but in my view there cannot be more a more damning comment letter one than this one, and not just because I agree with all the points raised therein. This comment letter was signed by two of current Director Vidal’s predecessors (Andre Iancu and David Kappos), as well someone who was Acting Director (Drew Hirschfeld), and two former Deputy Directors of the PTO (Laura Peter and Russell Slifer).  I reproduce the substantive portions here, which speak for themselves.

“We take the unusual step of sending you this letter because we are deeply concerned with the substance and process surrounding the USPTO's recent promulgation of a rules package regarding continuations and terminal disclaimers (89 FR 40439). We call on your Office to withdraw it immediately. These proposed rules provide perverse incentives and threaten serious harm to America's innovation economy. They are contrary to law, and it will be argued that they exceed the Office's rulemaking authority.

“We are particularly troubled that the Office promulgated rules of such consequence without conducting thorough studies that the public could evaluate regarding the proposed changes' alleged desirability and potential impact. The proposed rules run counter to decades of patent practice, undermining long- settled expectations. While we recognize that the USPTO has shown a genuine interest in receiving public feedback, the NPRM is having an immediate impact while pending. Patents convey property rights upon which inventors, investors, companies, and the public make important long-term decisions. They are financial instruments at the core of the innovation economy, enabling investment, trade, and collaboration. Radical changes in the patent system should be undertaken only after careful analysis of need, consequence, and public input.

“The proposed rules package contradicts these fundamental principles of a stable and robust patent system. Some of our concerns include:

“* Because the proposal clearly impacts the scope of patent rights in one application based on validity determinations in another, it will be argued that it constitutes a "substantive" rule, which is outside of the Office's statutory authority and, therefore, illegal.

“* The proposal will increase the number of challenges to double patenting rejections and reduce the use of terminal disclaimers. This will, in turn, significantly increase the cost of obtaining patents and the hurdles in enforcing patents. This will disproportionately impact independent inventors, start-ups and small businesses, and other under-resourced innovators.

“* The proposed rules render unenforceable entire patents if a single claim in a different patent is found to be invalid. This is a dramatic (and arguably illegal) departure from the normal process of considering each patent claim on its own merits.

“* This proposal hands a powerful cudgel to infringers, who will attack an inventor's rights where there is a continuation patent by taking advantage of the shortcut these proposed rules would create. Infringers would be able to render strong, meritorious patent claims unenforceable without challenging those claims on their own merits.

“* The proposal seeks to solve a problem that does not exist. At a minimum, the USPTO has made no showing that the terminal disclaimer and continuations practice is harming the American economy or that the new rules would improve matters if adopted.

“Combined with another recent proposal to increase fees for continuations and terminal disclaimers, some over 700%, the Office is evidently attempting to significantly deter, if not eliminate, continuations practice – a right that inventors are given by statute. It is not for the USPTO, an administrative agency with no substantive rulemaking authority, to make such an important decision for the United States on its own.

“At a time when America is losing its technological edge to China and other nations and needs to maximize its creative output in order to compete in artificial intelligence, 5/6G, quantum, energy, biotechnology, and so much more, the USPTO’s NPRM destabilizes the patent system and advances anti- innovation policies. The terminal disclaimer and continuations proposal creates uncertainty every day that it remains under consideration, disrupting the innovation economy even if the rules are ultimately not adopted. The USPTO should withdraw this proposed rules package immediately and work to restore stability and predictability in the American patent system.”

Translation: Kathi, have you lost your mind? Not only are the proposed rules stupid and harmful, it’s not your place to make them, and the law doesn’t authorize you to make them.

Thankfully, today the PTO announced that it is withdrawing the proposed rules. Its stated reason is pithy: “In light of resource constraints, the USPTO has decided not to move forward with the proposed rule at this time and to withdraw the proposed rule.” But it’s hard not to think that Director Kathi Vidal getting smacked down by her predecessors had something to do with it.

Has Israel Captured Marvin the Martian?

Anyone my age will recall Marvin the Martian, the Loony Toons character who wanted to blow the earth into nothingness using his “Eludium PU-36 explosive space modulator”, but whose nefarious plans were foiled by Bugs Bunny.

Marvin, of course, is fictional, but apparently Israel has invented what the folks at Warner Brothers only dreamed of: a bomb that vaporizes Gazans into nothingness. At least, that’s the conclusion to draw if one believes what the Hamas-controlled Gaza Civil Defense department recently told Al-Jazeera.

“Israel is testing weapons on us that we do not recognize. They drop bombs with terrifying sounds, and when a person gets within 200-300 meters of them, they vaporize.

“The massacres happening in northern Gaza are unknown to us until later. Nobody calls to inform us. The Israeli army bombs entire residential blocks, wiping out all their inhabitants, and we only find out about them a day or two later.”

And we know that those Hamas mouthpieces never, ever lie. Heck, they don’t even exaggerate. So we’ll have to accept their word that 1760 people in Gaza were made to disappear by this new, powerful weapon.

I have not found a patent application for this new weapon, but then I would think that if someone filed such a thing, it would be subject to a secrecy order. And I suspect that if such an application were to be examined, it would get knocked out with prior art such as the Empire’s Death Star, or before that, the Martian death rays in H.G. Wells’ “The War of the Worlds”.

Follow-Up to "Letters Crossing in the (e-)Mail"

As a follow-up to yesterday's post:

1. I eventually got the acknowledgement of the filing of the POA.

2. The ILPTO sent out the same notice again today, so the problem still isn't fixed.

3. Thank you Israel Patent Office for sending out a notice. At least now we know there's a problem, it's not just me, and since the ILPTO is aware of the problem, it will be fixed at some point. In contrast, the USPTO's electronic systems often go on the fritz, and the USPTO doesn't bother to tell anyone or update its "systems status page" to reflect the outage or problem. Or, if it's a particularly egregious screw-up (like systematically mis-calculating patent term adjustment, or allowing third parties access to files that are not yet meant to be public, both of which happened in the past year), it sends out a notice after the fact saying, "We messed up, we fixed the issue so that it won't recur, but now the onus is on you to make sure that our mistake didn't injure any of your clients."

Letters Crossing the (e-)Mail

I have complained in the past about the time it takes for the Israel PTO to generate acknowledgement receipt for things that are filed electronically (as well as the fact that the ILPTO sends the filer a copy of the document filed, instead of issuing a hash function value like the USPTO used to do under EFS, before the introduction of PatentCrapper).

This morning I filed a power of attorney in a national phase filing that I effected last week. Then the ILPTO sent out a notice:

I'm not going to translate it, but it says that there is a temporary disruption in ILPTO's electronic patent filing system, so that it's slow to process incoming documents and issue filing acknowledgement receipts, and the Office is working on the matter.

I'm still waiting for the acknowledgement receipt, several hours after filing. But in the meantime, the ILPTO did send me notice, telling me that a POA needs to be submitted in this application.

Thanks, guys.

The Patent Law Treaty And Succot’s Four Species

Ten and half years ago (exactly!) I wrote about the connection between the (quasi-) legal fiction used in selling leavened products before Passover and US copyright law. Today I’m going to discuss another (quasi-) legal fiction, one that arises in the context of Succot, and its similarity (or rather, dissimilarity) to a situation that arises under the Patent Law Treaty.

The Patent Law Treaty (PLT) is a treaty from the early 2000’s that seeks to harmonize certain formal aspects of patent law. Both the USA and Israel are signatories, as are 41 other countries.

One of the more salient parts of the PLT is that it enables the restoration of priority. Although normally an applicant has one year from the date of its first-filed application (FFA) to file a follow-on application claiming priority from the FFA, the PLT and associated regulations establish conditions under which such priority may be “restored” in a limited window after the one-year period.  See Article 13 of the treaty.

The “restoration of priority” provisions of the PLT raise an interesting question with respect to Paris Convention Article 4, which is the part of the Paris Convention that establishes the whole priority regime. Namely, Article 4 says that if you file a first patent application on an invention, and then less than a year later file a second patent on that invention, your deadline for claiming priority to either application is 12 months from the first filing, unless at the time the second application was filed, the first application “has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority”. 

Hence, if on January 1, 2025, Applicant files application A that discloses invention A, and on February 1, 2025, Applicant files application B, that discloses invention A and some variations thereof, the deadline to file an application that claims priority to either A, or B, or both, is January 1, 2026. If the Applicant deliberately waits until February 1, 2026 to file an application claiming priority to A or B, under Paris Article 4 that priority claim is no good: more than 12 months have passed since the filing of A, and Applicant isn’t entitled to claim priority to B, since B was filed while A was still pending.

However, if prior to filing application B, Applicant had expressly abandoned application A, leaving A unpublished and with no rights outstanding, then B would be considered the first filing, and Applicant would have until February 1, 2026 to file an application claiming priority from A.

Now let’s suppose that (1) A was filed on January 1, 2025 and B was filed on January 15, 2026, and (2) both A and B were filed as US provisional applications. US provisional applications are not examined and not published, and they automatically expire after one year.  Under these facts, A would have expired by the time B was filed, and thus B could serve as a priority application for an application filed by January 15, 2027.  Or so it would seem.

Enter the PLT. Under the PLT, it’s theoretically possible that (1) an application claiming priority from A could be filed within 14 months of the filing of A (e.g. on January 15, 2026), and (2) the failure to file that follow-on application and to make the priority claim to A within 12 months of the filing of A was unintentional, in which case priority to A could be restored per the PLT.  This theoretical possibility thus gives rise to the question, “Under Paris Article 4, can application B, filed as a US provisional application within 14 months of the filing of A and after A’s ostensible expiration, serve as a priority application for an application filed on February 15, 2027?”

I’m not aware of case law that deals with this question. My gut feeling is that no, that hypothetical situation of restoration of priority doesn’t negate the ability of B to serve as a priority application – at the time B was filed, A had expired, unpublished, with no rights outstanding. Hopefully no client of mine will be the guinea pig for resolving that question, in any jurisdiction.

So what does any of this have to do with Succot, the holiday that Jews are currently celebrating (for one more day)?

Well, one of the mitzvot (commandments) associated with Succot is the “taking of the four species”: the Torah, in Leviticus 23:40 says, “On the first day you shall take unto yourselves the fruit of hadar trees, branches of palm trees, boughs of leafy trees, and willows of the brook, and you shall rejoice before your God seven days.”  It was determined long ago that the fruit referred to is the citron (Citrus medica), the palm branches are actually palm shoots, the “boughs of leafy trees” are three myrtle twigs, and willows are two willows. (There are various criteria for each of these to make them suitable for fulfilling the mitzvah, but those aren’t germane here.) To fulfill the mitzvah, the person bundles the species together and picks them up (and traditionally, shakes them around a bit; there are certain parts of the morning prayers that are also accompanied by such shaking). The apparently superfluous “take unto yourselves” in the verse is understood to mean that on the first day of the seven-day holiday, these four species must belong to the person taking them – on the first day, you can’t borrow someone else’s species.

That’s all fine and good when all four species are readily available, which they are in modern-day Israel (where there’s a whole industry for supplying these four species), but historically that hasn’t always been the case, and it’s still not always the case in other places. In Michigan, for example, where I grew up, the only place you’ll find palm trees will be in a greenhouse in a botanical garden.

So if on the first day the four species must be belong to you in order to fulfill the mitzva, but you’re in a place where only a few people can get ahold of all four species, what do you do?

Well, a person who has all four species could give his own species to the next guy. But then the original owner will be species-less on day 2, and maybe he won’t be in a place where he can borrow from someone else. Or maybe the original owner wants to be able to help multiple people fulfill the mitzvah, to enable all of them to fulfill the mitzvah on the first day.

Hence there is a discussion in the Talmud of the use of the legal device called matana al m’nat l’hakhzir – a gift given on condition (or with the intention) that the gift be returned to the giver. This is the quasi-legal fiction to which I alluded earlier. There are several ways that this concept is understood, but the most basic one is that the receiver of the gift is only considered the owner of the species retroactively, upon his returning those species to the original owner/gift giver, and thus, at the time he shook the species together, he was the legal owner. But if he doesn’t return the species, then he was never their owner, even though he was in possession of them. Another view is that the gift is an outright gift, but only for a limited amount of time, after which the receiver must return the species to the original owner/gift giver. (How is this latter view different from a loan, which everyone agrees doesn’t solve the problem? Ask someone who knows this issue better than I do.)

Regardless, what’s going on is an attempt to make the non-owner a temporary but bona fide owner…while enabling the original owner to effectively maintain ownership. That is, a sort of legal fiction.

Thus, in a sense, the idea of matana al m’nat l’hakhzir in connection with the four species presents a mirror image of the PLT-provisional filing problem discussed above. There, the issue is that the applicant doesn’t want his first application A to be alive – he wants it to be expired at the time he files B. But the law creates a hypothetical possibility that A is still pending, and therefore the B filing, made when A is formally expired, might not be considered good enough to allow priority to B to be claimed. It would be like having a bundle of the four species that you can’t get rid of even if you want to.

Moadim l’simcha (what’s left of it) and חג שמח.

Are Toxic Bullet Cartridges Next For Hizbullah?

Here in Israel we’re amazed by the exploding pagers and exploding radios of the last two days, in terms of the technological and logistical abilities, not to mention the chutzpa, of carrying it off. And of course we’re laughing at all those terrorists whose attempts to avoid the possible pitfalls of the digital age have left them…digitless. Lots of memes going around, like the one below. (Watch this clip if you didn’t grow up watching American TV and don’t get the joke.)

But you have to wonder, What’s next? Sure, maybe Nasrallah will come to his senses…or maybe not.

My candidate for the next thing to use, if necessary, is the device disclosed in US 9052175: looks like a bullet, but it’s loaded with a toxic agent, so the shooter pulls the trigger and poof! He’s poisoned!

Added bonus:  it’s suitable for use by both Hizbullah AND Hamas.  And since the patentee only filed in the USA, no fear of patent infringement for using this invention in Lebanon or Gaza! That’s what we patent people call a win-win.

Suggestion to the terrorists: don’t buy your ammunition from Benzi’s Bullet Bazaar.

Where Are All Those “Palestinian” Inventions?

I wrote last year noting that there were apparently no patent applications filed, ever, listing Shifa “Hospital” in Gaza as the applicant. Today on a whim I looked for patent applications for anyone in Gaza. Turns out that, at least according to WIPO’s Patentscope and freepatentsonline.com, no one from Gaza City has ever applied for a patent, although back in the 1970’s there was an entity in the USSR that had the word “Gaza” in its name.

So I decided to look for patents and applications that list the inventor country as “PS”, guessing that since PL is already taken for Poland, “PS” is what someone might use as a fake two-letter code for the fictional country of “Palestine” – fake because there is no WIPO two-letter code for “Palestine”.

Patentscope yielded around 20 results, but one of them is clearly a typo – the inventor lives in Texas. Of the rest, most are for people from Ramallah and Shchem (Nablus) who are students in Saudi Arabia or Qatar. But there’s one patent application family for a German chemical company that has an inventor who lists his city as Khan Yunis, in Gaza. WO 2013/046041, “PYRIDINYLPYRAZOLES FOR USE AS KINASE MODULATORS FOR THE TREATMENT OF CANCER”, was filed by a German company, Synovo GmbH, and includes Bassam abu Thaher of Khan Yunis as an inventor. A continuation bypass in the USA eventually matured into US 9416123 B1, but apparently no corresponding applications were filed elsewhere.

A search in Patentscope for applicants who list “PS” as their state yields two PCTs, one that lists Al Quds University jointly with Rutgers, and a gem – WO/2023/063908 – that lists a Ramadan Ziada of Ramallah as both inventor and applicant, titled “Perpetual Motion Machine”. The EPO, acting as International Search Authority, stated that the “invention” was both novel and inventive, but that it was not susceptible of industrial applicability, as it “violates the law of conservation of energy” and that the disclosure thus fails as “the claimed invention can not be carried out by a person of skill in the art.” Good luck with that application, Mr. Ziada.

31 years since Oslo, hundreds of millions of Euros spent building tunnels and rockets and bombs to use to kill Israelis, but no inventions of any use to mankind. During that same time Israel has developed thousands of technologies. Including the Iron Dome system to intercept those rockets.

Some folks only know how to destroy, not to create anything of value (cf. "Al Qaida" and "Twin Towers"). Maybe if “the Palestinians” tried to make something of themselves instead of falsely blaming the Jews for “the Palestinians” self-induced failings, they’d get somewhere.

From the Mouths of Babes, vol. 2 (or, Steph Curry Couldn’t Have Been Clearer)

I don’t do trademark prosecution, but the issue of possible trademark protection is something I often discuss with clients. One of the ways I illustrate how successful marks convey distinctiveness is that you don’t necessarily have to be able to read to know what a mark means.

Case in point: when our oldest daughter was about 3, we were walking by a travel agency (once upon a time, there were brick-and-mortar travel agencies that made travel arrangements for people) and she recognized Mickey Mouse in the window. She also recognized Tony the Tiger on a billboard.

Indeed, the ability of pre-reading children to distinguish objects is recognized in Jewish law: in certain cases, when there is a perceived defect in a letter in a Torah scroll, a child who has learned his letters but doesn’t yet know how to read may be consulted to determine whether the letter has the correct appearance or not. Since the child can’t read, he is not going to be influenced in his judgment by the letters surrounding the letter in question.

Which brings us to yesterday’s Olympics men’s basketball final, in which Steph Curry sank four 3-pointers in the last two minutes to put the game away for the USA. Here’s a clip of our now-adult daughter’s own 3-year-old calling the game (in Hebrew; our daughter inserted Hebrew subtitles to make things clearer):

 

If you don’t speak or read Hebrew, here’s the translation:

0-5 seconds, as Curry makes one 3-pointer: “Daddy – maybe the far away one will win!”

5-13 seconds, as Curry fakes out two defenders to sink another 3-pointer: “There – here it is! Daddy, this one wins!”

13-15 seconds, as Curry celebrates by putting his hands together under his tilted head to signify “Lights out!” or “Nighty-night!”: “He’s going to sleep!”.

The kid got it!

Israel Patent Office Changes Policy On Suspension of Examination…But Still Acts Ultra Vires

I’ve written several times in the past about suspension of patent examination at the Israel PTO (here, here, here and here). In June, the ILPTO announced a new policy for dealing with the suspension of patent examinations. We’ll get to the new policy shortly, but a brief history of suspensions is in order.

There is nothing in the statute about suspending patent examination. So under the sui generis policy that had been in place for many years, as long as no response was outstanding from the patent applicant, an applicant could request suspension at any time, and the ILPTO would set the application aside. Since nothing was outstanding, there was nothing for the applicant to pay.

Then the ILPTO switched gears, and said that suspensions could only be requested after the applicant filed its response to the pre-examination letter that the ILPTO issued under §18 of the statute (which response consists of the submission of an IDS-type document and a list of corresponding applications outside Israel), and before the mailing of the first office action; once substantive examination commenced, no suspensions would be granted. And a fee for each month of suspension had to be paid in order for the suspension to take effect. 

After a few years of that, some applicants realized they were unnecessarily paying for suspensions (since in some cases the suspensions expired before the examiner would have taken up the case anyway), and they complained about it. So the ILPTO again changed its policy, and said that you still had to ask for the suspension before the first substantive OA, but that the ILPTO would mail a request for money shortly before examination was due to start. If the applicant paid the fee, the case would be suspended; if not, the file would be closed for failure to respond.

Now the ILPTO has again changed tack, in two ways. First, while the window for requesting suspension only opens upon the filing of a §18 response, it now closes three months before substantive examination is due to start. And how does one know when that date is? Well, in the ILPTO’s database, for each case for which examination hasn’t yet started, there’s a notice stating that examination is expected to commence in X months. See the screenshot below.

Problem is, that notice doesn’t say from which date those X months are calculated. The priority date? The PCT filing date? The national phase entry date, or the Israel filing date for non-PCT applications? Inquiring minds want to know!

Second, the ILPTO now demands payment of the fee for suspension up front. And what if the ILPTO refuses your request for suspension? You can then request a refund. This is a fun process that in some cases will cost more in attorney time than the value of the fee paid.

Supposedly, in cases in which the suspension is approved and paid for, the system will automatically delay the start of examination by the number of months of suspension.

Apart from putting the onus for tracking the deadline to request suspension on the applicant and requiring payment in advance, the real problem with this system is that the ILPTO is not authorized to collect money for suspensions. As I explained several years ago, the office can collect fees for extensions of time, viz. when the applicant owes the office a response by a certain date and responds after that date. But in the case of suspensions, the applicant owes the office nothing. Indeed, the suspension can only be requested after a response to the pre-examination letter has been filed, viz. when the applicant doesn’t owe the office any response. Apparently the ILPTO wants to get hit with a class-action suit demanding repayment of improperly collected fees.

The better approach, as I outlined previously, is to tell applicants that they have four months to respond to the §18 letter, and that they can extend that response period not by a mere six months (as is the present practice) but by some lengthy period, like 24-36 months. Applicants could then pay the legally required extension fee at the end of the period; if they don’t file a response with the extension fees, the application goes abandoned.  By allowing a lengthy extension period for responding to the §18 letter, the ILPTO would effectively convert the response to the §18 letter into a request for examination, and the suspension period would be converted into a legal extension period. It’s a win-win.

What do you say, ILPTO?

Wait And See: Don't Pay For, Let Alone Charge The Client For, An Unnecessary Extension Fee

A few years ago I wrote a blog entry entitled “How To Rip Off Your Clients Without Them Knowing They’re Being Had”. Basically, the issue is that in Israel, the statute says that you can retroactively request extensions of time in patent cases, i.e. at the time you file the response, even if it’s after the initial deadline; but there are several offices that tell their clients such extensions must be obtained prospectively. Those offices do that solely so that they can bill their clients more money.

I recently had a case in which, close to the initial deadline, the client told me, “We need more time, please obtain an extension”.  To which I responded, “No need, we can obtain the extension when we respond”.

Subsequently, the client said to let the case go abandoned.

Score one for the good guys.