America-Israel Patent Law

You Can’t Make This Stuff Up, Installment Number I’ve Lost Count

I wrote in April and May about the Israel PTO’s update to its patent electronic filing system, in particular about how there were many glitches in the system, even as the Office claimed everything was hunky dory.

This post is about two ongoing problems with the electronic filing system: the lack of a filing acknowledgement showing what was submitted; and the fascistic design of the system, that presumes to anticipate every possible scenario and thus limit a filer’s options accordingly.

When the Israel PTO introduced electronic filing for patent applications in December 2015 as an optional filing means, they didn’t include a mechanism to provide the filer with confirmation of what had been filed.  As the deadline forcing practitioners to use the electronic system approached in June 2016, apparently at the urging of one of the more senior practitioners, the ILPTO started sending the filer an email containing the files submitted. Not ideal, but better than nothing.

But since the ILPTO first forced us to file new patent applications via the “new” electronic system in September 2023, the “new” system has never provided a filing receipt showing what you filed.

Now, theoretically, one can see what one filed after it’s been submitted. That’s because what happens when one files a new application, or a response, via the new system is that the system opens what I’ll call a “basket”. As soon as the “basket” is opened, a tracking number is assigned to this basket, and the date on which the “basket” was opened is recorded.  One then uploads to the “basket” the files one wishes to submit, and then clicks “submit”.  There’s a lag between when one clicks “submit” and when the system actually “accepts” the submission, to use the Hebrew term (what I’ll call “processes” a submission), but once the “basket” has been submitted, one can enter the basket in the EFS and see the documents that were submitted.  However, there are two problems here.

First, the system only provides information about two dates: the date on which the basket was created, and the date on which the basket was last updated. There’s no listing of the date and time on which a particular basket was processed into the system, and no email or other documentation is ever sent to the filer confirming the time of submission and what was submitted. And although the basket creation date can’t be changed, at least not by the end user, any time one goes into the basket to look at the documents contained therein – even after the basket has been processed into the system – the “basket last updated” status gets changed to the date on which one accessed the already-processed basket. I call it the Heisenberg feature of the system: you can’t prove both what you filed and the date on which it was processed into the system, because by entering the “basket” to see what’s contained therein, the system changes the “last updated” status.

In principle, once a document has been processed into the system, it’s visible in the ILPTO’s database (which is separate from the filing system). But the ILPTO has the capability to remove files from the database. So there really is no way to prove what one filed. And not all submissions show up in the database. For example, when one pays certain fees via the new system, there’s nothing in the database to reflect that something was paid.  Indeed, whereas in the “old” system, an extension of time, for example, always needed to be accompanied by some accompanying letter (e.g. an OA response or just an extension request), filings done under the “new” system have no such requirement, so no document appears in the database.

With the USPTO’s EFS, and even now with the USPTO’s PatentCrapper, which in many ways is a downgrade from its predecessor EFS, you can immediately download a filing acknowledgement that lists exactly the documents you submitted.  Moreover, those documents appear in the list with a hash function value, so that if you ever need to prove what it was you filed, you can do so. Why can’t the Israel PTO’s electronic patent filing system do the same?

The ”old” ILPTO electronic filing system is still available for certain actions. And because that system provides users with a filing confirmation, I continue to use that system for anything I can. Admittedly, that filing confirmation is itself flawed: the system emails back to the filer all the files that were submitted, except each one is shown as being about 2 kilobytes larger than the file that was actually submitted.  Still, it’s possible to retain those emails, or if one doesn’t wish to do that, to print out each email and the list of attached files, so that one can prove what was submitted.

This brings me to the limited choices that both the “old” system, but especially the “new system” provide to users.

When filing a response, or a request for extension, or a fee, the “old” system asks you to input the application number, and then to choose an action from a list of actions. In some cases, it says “Nyeah nyeah nyeah, you can’t do that action in this file!” The “new” system is even more draconian: you input the application or patent number, and the system proactively gives you a list of possible actions. In neither system is there the possibility of filing a “miscellaneous paper”.

This, of course, leads to problems if the system calculates things incorrectly.  For example, in neither the “old” system or the “new” system is “supplemental OA response” one of the choices. Another example: in the “new” system, if you want to submit something and an extension fee is due, the system calculates the amount it thinks is due and won’t let the filer submit until that fee is paid. I discussed previously a case in which the system told me I had 30 days to file a response even though a response had already been filed, and another case I had in which no fee was due but the system thought one was due and therefore wouldn’t let me submit.  In the latter case, without the option to file a “miscellaneous paper” for which the system wouldn’t calculate a fee, it took some work to get the issue resolved.

But those examples are nothing compared what happened to a colleague recently. He was asked by a pro se applicant to file a divisional application of an application in which the applicant/inventor was listed as the address for service. But the system wouldn’t let the practitioner file the divisional, because this colleague wasn’t listed as the address for service in the parent case – “You can’t file a divisional because you don’t have power of attorney in the parent case” was what the system told him.

The problem here is there’s nothing in the statute that says a divisional can only be filed by a party that has POA in the parent case. Moreover, for initial filing, Paris Convention filings, or PCT national phase filings, the office allows practitioners to file without a POA, and then gives the applicant time to provide a POA.  That POA need not necessarily appoint the practitioner who submitted the application.

In this case, because of the glitch, the inventor called the person in charge of the filing system, who is not a lawyer nor, as far as I know, a patent practitioner, and when the inventor found he was having trouble explaining the issue, he patched the practitioner into the call so that the practitioner could explain the problem. At which point the non-lawyer non-patent practitioner ILPTO person said, “I can’t talk to you about this, you don’t have power of attorney”.

You can’t make this stuff up.

What’s really surprising about that incident, and the fascistic nature of the ILPTO’s electronic filing system in general, is that the aforementioned person in charge grew up in what was then a communist country. You’d think such a person would understand that central planning, i.e. trying to anticipate every possible scenario, and then trying to limit people’s choices on that basis, is not a winning formula.

Earth to Israel Patent Office: your patent electronic filing system leaves much to be desired. If you had asked for input from us users before you launched it, it wouldn’t be deficient. And now that you’ve launched this deficient system, you need to learn from WIPO, which is fantastic in responding to user input about ways to improve the already-good ePCT system.

On Barnard Babies and Columbia Crazies

The craziness on American college campuses continues apace: in February babies at Barnard tried to take over the president’s office, yesterday some crazies at Columbia did the same in a library…during study period for finals.  Because they hate Jews (taking over building is the logical thing to do when you hate Jews, right?), and they clearly don’t need to study.

These incidents are striking to me because at the same time that the Barnard Babies were doing their thing in February, my daughter and her husband – both currently university students, both having served reserve duty – had their first child. A real baby, who really can only eat, sleep, poop and cry. (In the interim she’s added smiling to her repertoire.) The Barnard Babies and Columbia Crazies seem to have a similarly limited skill set, even though in principle they should be able to do more. At a minimum, they should be studying.  By comparison, this morning my daughter took her baby to class, while her husband took an exam and then headed off for more reserve duty, and this in between working jobs and applying for a mortgage.  But the BBs and CCs choose to whine and cry and go on and on because terrorism is more important to them than building the world.

This prompted me to do a comparison. In 2024, the USPTO granted 2,646 patents that list at least one inventor from the following countries: Afghanistan, Algeria, Bahrain, Comoros, Djibouti, Egypt, Iran, Iraq, Jordan, Kuwait, Lebanon, Libya, Mauritania, Morocco, Oman, Pakistan, Qatar, Saudi Arabia, Somali, Sudan, Syria, Tunisia, UAE, and Yemen.  That’s all the Arab countries, plus a few others. All Moslem. The collective population of these countries is almost 900 million. That’s fewer than 3 US patents for every million people.

In the same period, 2024, the USPTO granted 5,692 patents – more than twice as many – that list at least one Israeli inventor. But Israel has a population of only about 10 million – 90 times smaller than the combined populations of those Arab/Moslem countries. That’s nearly 570 US patents for every million Israelis, i.e. 190 times more US patents per capita than the entire Arab world. 

There’s a good chance that when our baby grows up, she’ll be listed as an inventor on a US patent.  That doesn’t seem to be the case for the Barnard Babies and Columbia Crazies.

Israel PTO Says Its Updated Patent Electronic Filing System is Fixed. Israel PTO Doesn’t Tell the Truth.

Earlier today, the ILPTO said that its patent electronic filing system is fixed (announcement at right).

One of my cases in Israel received an OA on December 31, 2024. The deadline to respond is therefore four months to later, viz. until April 30, 2025. Today. (See below.)

So I went to file the response, and instead of accepting the timely-filed response, the system said we owe a one month extension fee. And wouldn’t let me file unless we paid it.

Guess the system isn’t really fixed.

I emailed the response to the person responsible for the next system, explained the situation, and instructed her to enter the response. I’m not paying a fee that we don’t owe.

Israel PTO Patent Electronic Filing System Still Not 100%

1. A few minutes ago the Israel PTO sent out the notice to right, confirming what I wrote yesterday: that its new-and-improved system is timely sending out automatically-generated warning letters, but which provide warning about the wrong action that ostensibly needs to be taken. Took them a while to catch this, but at least they admit there’s a problem and are working to fix it. And they say that the erroneously-sent letters will be cancelled.

2. Earlier today, the Israel PTO sent out a notice that the new system chokes on PCT national phase filings, and advised people whose applications were not yet at the deadline to refrain from filing until the problem is fixed, and advised those with deadlines today to file the applications by email. Although there has been no subsequent announcement stating that the system has been fixed, as of this writing it appears that problem has been overcome: after logging in, choosing “PCT national phase filing” and entering the PCT application number, the system gives what says it’s an error message, but then the system pulls the data application from WIPO and allows the user to proceed.

We’re Back Online, But…

Both the ILPTO’s patent electronic filing system and database are back online.  But there’s at least one interesting glitch here.

In the demonstration session yesterday, they explained that whereas in the past, if you missed certain deadlines, the office would eventually send a letter telling you that you missed the deadline and giving you 30 days to respond or they’d close the file (“eventually” in some cases being more than a year after the missed deadline), henceforth we are to get letters warning us that we only have one month left (including any available extensions) to respond.

As a general matter, I applaud this. It’s great to get reminders while you can still take action, and I appreciate the ILPTO doing this.

However, there seems to be a glitch in the implementation of the system. Specifically, in two files, we just received warning letters telling us that we didn’t respond to an OA that issued sometime in 2023, and that we have 30 days to respond to respond to the OA.  Except that we most definitely responded in both of those cases, because both cases have been allowed, and we now have to pay the issue fee in each case, in one of them in a few weeks from now, in the other next week.

Giving the ILPTO the benefit of the doubt, I suspect that what happened here is that they want to remind us that the issue fees are due, but the system incorrectly read something and referred to an OA rather than the issue fee.

They get an “A” for effort, anyway.

Israel PTO Patent Electronic Filing System is Still Offline.

Yesterday the Israel PTO announced that its new patent electronic filing system would be online today as of 13:30.

As predicted, the system wasn't online then and still isn't online now. So if you have to file something today at the Israel PTO, good luck.

At least the ILPTO had the sense and the decency to send out an email at 13:39 telling us that the system remains offline, and that they'll tell us when it's fixed. If this was the USPTO, it would be hours, if at, before the office acknowledged that there was a problem.

It would have been nice if they'd given us similar advance warning about the scheduling and length of the training session for the new system that took place yesterday, instead of a mere four days' warning for a session that started 15 minutes late and then lasted two hours.

Israel PTO Electronic Patent Filing and Search To Be Offline April 28

The Israel PTO just announced that its patent electronic filing system and the patent database will be offline tomorrow, April 28, from 07:00 to 13:00.

When they tried this in September 2023, they said the system would offline from midnight to 10:30. But it wasn't ready by the appointed hour. Wasn't back online the following day either.

No, it took them nearly five days to get the system up and running again.

And that was only for electronic filing, not the database too. That database, by the way, now constitutes the official register of the ILPTO. 

As of this writing, we still don't know what changes are supposed to be implemented - that will be revealed to us a few minutes from now.

Still, the Israel has yet to screw up its IT systems as badly as the USPTO has screwed up both its patent and trademark filing and search systems. Let us hope that statement remains true even after the forthcoming changes.

Proposed Amendments to the Israel Patents Statute 2025, Part 1: The April Ambush

Yesterday (April 23), the Israel PTO notified members of its email distribution list of the publication of a memorandum of proposed new legislation (a tazkir hok) that would change principally the Patents Statute. The deadline for comments (via a link on that same page) is 23:59 on May 1 – fewer than nine days after distribution of the email, of which two days are non-workdays (Saturday and Independence Day (Yom Ha’atsma’ut)), which this year is being celebrated on May 1), and one is Memorial Day (Yom Hazikaron), a day on which many people work shortened hours or don’t work at all, which this year is being commemorated on April 30. 

The memorandum was actually first posted on the (misnamed) “Justice” Ministry’s site at 16:11 on Thursday April 10, viz. at the close of business on the last day the Ministry and the ILPTO were open before the Passover holiday. Although those offices reopened on Sunday April 20, the email from the ILPTO was only sent on April 23.  And very few if any regular users of the patent system in Israel regularly check the Ministry’s site for proposed legislation; to the extent people follow proposed legislation affecting patents, they tend to rely on the ILPTO’s emails. Clearly, someone doesn’t want public comment on these proposals. Oh, those pesky citizens!

It's not clear what the rush is. One of the main proposals – to create an Israeli provisional application – have been kicked around for several years, so a few more weeks’ wait won’t matter.  One disappointing aspect of the memorandum is that the introductory part of the memorandum (translation below) is silent about a few significant proposed changes, which I list after the translation below.  I do not relate here to the memorandum’s “explanations” that follow the proposed changes to wording the statute; I hope to do so in the coming days.

The memorandum follows what I assume is the Ministry’s standard format for such memoranda, with the introductory part constituting a sort of executive summary. I used Google to translate and made some changes thereafter.

Memorandum of Statute

A. Name of the proposed statute

Patents Statute Memorandum (Amendment No. 15) 5785- 2025

B. Purpose of the proposed statute, the need for it, its main provisions and its impact on the existing law

The memorandum includes proposals to change the procedure for examination of a patent [application – DJF] by the Patents Authority, and additional matters. These changes are necessary in view of technological changes, changes in corresponding procedures in foreign countries, and the need to re-examine the desired system of balances between the inventor and his competitors in the [should be “a” – DJF] variety of contexts.

Principal point 1: Examination of patents by demand

It is proposed to adopt a method according to which, before the examination of the application begins, the applicant will be required to request the examination by submitting a request and paying a fee ("Request for examination"), replacing the existing method according to which patent applications are examined in the order in which they are filed with the Authority in accordance with the classification of the scientific field of the subject matter of the application. According to the proposed arrangement, the applicant will have a period of four years during which he will be able to demand that his application be examined, and applications will be examined in the order in which the demands for examination are submitted. If the applicant does not request the examination within four years, the patent application will be refused and the patent will not be registered. The advantage is in making examination more efficient, so that only applications in which the applicants interested will be examined, in contrast to the current situation where sometimes after the examination begins, the applicants abandon the application.

Principal point 2: Provisional patent application

It is proposed to allow the filing of a provisional patent application, which, if the applicant does not convert it into a regular application within a year, will expire as if it had never existed after a year, i.e. before it has been fully published to the public and without the need for active notification of its abandonment, similar to the "Provisional Patent Application" track that exists in the USA. The advantage of this track is that it gives the applicant time to consider his steps with respect to his invention and the filing of the final application.

Principal point 3: Grace Period

As a general rule, an invention that is published before a patent application is filed will not be eligible for registration [in a patent – DJF] due to lack of novelty. There are limited exceptions to this rule, set out in Section 6 of the statute. It is proposed to stipulate that publication by the owner of the invention within a period of one year prior to filing the application will not negate the novelty of his application. This arrangement exists in Israel for designs, and also exists in the US and other countries.

Principal point 4: Possibility of early opening of the patent file for public inspection

Currently, patent application documents are opened for public inspection 18 months after the date of filing the application, and for an international application – within 45 days [of national phase entry – DJF]. It is proposed to allow the applicant to advance the opening of the patent documents for public inspection. Early publication will allow the application to serve as prior knowledge with respect to patent applications that will be filed after the early publication date, and in addition, early publication will advance the date from which the applicant will be entitled to receive reasonable royalties for infringement of the patent during the period that it was pending, provided that the patent is registered at the end of the examination process.

Principal point 5: Divisional applications

It is proposed to authorize the Minister of Justice to determine conditions and limitations on the division of an application. Currently, as long as the patent application is not accepted [viz. published after examination for purposes of opposition – DJF], the applicant is entitled to demand that it be divided into several applications. This arrangement allows the patent applicant to split A patent application that he filed so that he could advance the registration of the patent for the parts of the application that the patent examiner approved as patentable, and continue the discussion with the examiner regarding the remaining parts of the application. However, there arise allegations of abuse of the ability to divide an application, so that applications that are not fit for registration remain pending for a long period. The authorization is intended to enable the Minister of Justice to establish mechanisms to reduce the abuse of divisional applications.

Principal point 6: Right to continue exploiting an invention after reopening the application file

Currently, a person who began to exploit an invention before a patent application was filed on the invention, or after the patent protecting the invention expired, will be entitled to continue exploiting it even if a patent application was filed or if the patent was reinstated, respectively. It is proposed that this arrangement will also apply in the case of a patent application that was refused by the examiner and then the refusal of the application was cancelled and the patent was granted.

Principal point 7: Additional remedies for infringing products

It is proposed to explicitly enshrine in the Patent Statute the authority of the court adjudicating a charge of infringement to order the transfer of ownership of infringing products or their destruction, similar to the authority that exists in most intellectual property legislation and in accordance with Article 46 of the TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights).

Principal change 8: Change in the name of the Patent Authority and granting additional functions

It is proposed to change the name of the Patent Authority to "Intellectual Property Registration Authority" to express all of the authority's areas of activity, which also deals with designs, trademarks and appellations of origin. The functions of the Patent Authority include providing information to the public on patents and maintaining contact with institutions and bodies outside Israel in its areas of activity, and it is proposed to also add to these functions service to the public on the subject of intellectual property registration.

C. The impact of the proposed law on certain population groups

No effect.

D. The impact of the proposed memorandum of law on the budget and administrative standard of the initiating ministry, other ministries and other authorities.

No impact.

As will be discussed in a future post, a reading of the details of the proposed amendments shows that the above summary glosses over some critical details of the points mentioned.  Additionally, there are several significant proposed changes that are not mentioned at all in the introductory section above. Among these:

- it will not be necessary to provide a copy of the priority document, unless asked to do so by the examiner;

-  third parties would be allowed to pay the examination fee;

- in cases in which an application is “accepted” prior to 18 month publication, the Office as a matter of course will conduct a further examination before the end of the opposition period (if no opposition has been filed) and may rescind the ”acceptance” of the application;

- acceptance under section 17(c) would be allowed if both the Israel patent application and the corresponding foreign application are national phase application of the same PCT application;

- the filing of an opposition or other challenge to the foreign patent on which a 17(c) request is based will automatically result in the return of the application to the examination queue;

- once the application is filed, it will not be permissible to broaden claims in any way, even if there is support for such broadening in the application;

- the long-standing practice of being able to add new material to an application, provided that such material is post-dated to the date on which it is added to the application, will be abolished;

- any party will be able to oppose the grant of a patent, or seek its cancellation before the Office, on grounds that the applicant is not the owner of the invention; currently only a party alleging that it is the actual owner may make such an argument before the Office;

- an Israel patent application A having a filing date earlier than application B but a publication date after the filing date of B will constitute prior art for purposes of considering novelty;

- any party will be able to request reexamination of a patent or patent application on grounds of lack of novelty due to an earlier-filed Israel patent application;

- as is already the case for pre-grant oppositions, if a cancellation action is initiated against a patent by a third party that then withdraws from the proceeding, the Office may still cancel the patent;

- the standard for considering a late-presented priority claim and certain other matters will reduced to a “reasonable care” standard instead of an “unavoidable” standard.

Rather a lot to pack into a set of amendments with such a small window to respond.

Another New Israel PTO Patent Electronic Filing System - Deja Vu All Over Again!

Having introduced a new interface for filing patent applications back in September 2023 (see here, here, here, here and here), today the Israel PTO announced that it will soon be introducing yet ANOTHER new electronic filing system. Oh frabjus day! Calloo! Callay! I hope that this time, the entire system won't be offline for a day while they install the new software.

The ILPTO will be holding a Zoom session on April 27 at 11:30 to explain the new system.  Those who wish to register to participate may do so here.

"In Praise of Big Pharma" in Commentary Magazine

Excellent piece in this month's Commentary on the assault on the pharmaceutical industry. And it doesn't even mention patents! Two good quotes:

"...it is possible that the average consumer of popular culture in 21st-century America will see more negative depictions of pharmaceutical companies than of Islamist terrorists, the Chinese Communist Party, and tyrannical governments in Cuba or North Korea combined. "

and

"An old FDA joke goes, “You never get called up to the Hill for the drug you didn’t approve.”" That's a corollary of my observation that no one knows what drug never made it to market because the patent wasn't granted.

Bottom line is what I've been saying for years: new medicines are good. If you want more of them, stop treating US pharmaceutical companies as if they're evil.