America-Israel Patent Law

Much Ado About... (Israel PTO Patent Filing Back Online)

If you're familiar with Shakespeare's plays, you know the last word in the title above.

It took the Israel PTO longer than expected, but by the end of last Thursday its patent electronic filing system was back online.

As far as I can tell, the only change made was to the interface for filing new patent applications. And the only really significant difference is that if you file a national phase of a PCT (which is something like 95% of patent filing in Israel), the system will now pull the bibliographic information from WIPO. This is certainly a nice feature, but I'm not sure it warranted a meeting at the Israel PTO (and concomitant livestream) to explain that it was being implemented. They did implement something so that now you can see a complete list of the applications you've filed, but as far as I can it's only with respect to what you've filed, and only since they implemented this new feature - none of my old filings show up there.

Otherwise, things haven't changed:

Applicants, even for national phase filings, must still upload the description, drawings and claims as separate pdf files. 

When filing responses, you still have to choose from a pre-set list of document descriptions, which still doesn't include "miscellaneous", and the system still tells you whether or not you can file a particular type of paper in a given application (an aspect of the system that sometimes is a good things but sometimes is not). 

The system still doesn't give you a filing acknowledgement immediately upon filing, showing what you filed with a hash function value so that if necessary later you can prove what you filed; rather, you still have to wait for an email that includes the very documents you filed (although with their size slightly changed) to take up space in your email folder.

When you go to pay a fee, the system still boots you out of EFS and into the government payment system.

And there's still nothing like private PAIR or ePCT that allows the filer to see, immediately after filing, what it is he filed: there's still only a single public database, and the documents in the file only become visible after the application is opened to the public.

Still Waiting for the Israel PTO's Patent E-Filing to Go Back Online

5:34 AM on September 7, system was supposed to be back online at 10:30 yesterday morning.  And no notice or emails from the ILPTO explaining what the problem is - we just get the "under construction" page when we try to go to the EFS page.  This means no filing of new applications, no submission of responses, and no paying of maintenance fees, among other things. I feel sorry for the secretaries who must have been inundated with emails containing things meant for electronic filing.

For the cynical, I have a possible answer to the question about why this work was done on a weekday, and not at a time when the Israel PTO is closed (like the first week of October, which this year will coincides with hol hamoed, the intermediate days of the Succot holiday): yesterday and today, the largest patent firm in Israel is on a retreat, with only a skeleton staff in the office. So when those guys aren't working, it must be ok for the Patent Office to effectively be closed too. That may be pure speculation, but in a small country like Israel it's not an absurd speculation.

At least the Israel Patents Database is still online...which is a good argument for keeping the filing and viewing functions in separate systems. (Hear that, designers of the USPTO's thus-far-atrocious PatentCenter? Oh, right, you never listen to the public anyway...)

Previous posts on the launch of Israel's new patent EFS: New Israel PTO Patent Electronic Filing System - Introductory Meeting, Israel Electronic Patent Filing to be Offline on September 6, Oh Where, Oh Where is My Israel PTO Electronic Filing System?

Oh Where, Oh Where is My Israel PTO Electronic Filing System?

System was supposed to be online today at 10:30. It's now 17:35 and we're still waiting - getting a "this page under construction" (or "undergoing maintenance") screen instead of a login screen. I don't have any deadlines at the ILPTO today but I pity those who do.

I have to ask, again, Why couldn't this work have been done early on Friday the 8th - when the ILPTO is closed and therefore deadlines are pushed off?

Not going to discuss the substance of yesterday's presentation about the new system until after I actually get to work with the system.  But, in memory of a now-defunct blog about IP in Israel, I will say that a friend who was physically present at the ILPTO said the pastries were good.

Israel Electronic Patent Filing to be Offline on September 6

In conjunction with the launch of its new electronic filing system (details of which will only be revealed to the public tomorrow, September 5), the ILPTO announced this morning via its email distribution list that its EFS will be offline on Wednesday, September 6 from midnight until 10:30 AM. Pending filing which have been saved for later submission will be erased as part of this process.

Why this work couldn't have been done early on Friday the 8th - when the ILPTO is closed and therefore deadlines are pushed off - is a mystery. The advantage of such scheduling is of course that if things don't go as planned, there's time to fix them before business resumes and deadlines need to be met.

Let us hope that things go better for the Israel PTO than they did for the USPTO last week, which similarly scheduled computer systems maintenance for a workday (starting at 10 PM rather than midnight), and then had its systems down for most of the following workday - no PAIR, no EFS, no Patentcenter, and no way to pay fees. And no word on why they didn't schedule the work for early Saturday morning at the beginning of a long holiday weekend.

New Israel PTO Patent Electronic Filing System - Introductory Meeting

Last week the Israel PTO announced it would be holding a meeting at the ILPTO at 11 AM on Tuesday, September 5 to demonstrate how to use its new electronic filing system.

Amazingly, it didn't occur to anyone in the office that not all patent practitioners, paralegals and inventors live close to Jerusalem, or that there exist technologies for demonstrating such things remotely.

Today the ILPTO announced that, "In response to requests from the public, the teaching session on the new filing system...will be offered in a hybrid format". Presumably this means that people will be able to view the session remotely.  However, the office notes that "Nevertheless, we recommend that people come to the Patent Office in order to actively participate in the session".

If you wish to participate (remotely or in person), you'll need to send an email to [email protected] .  Presumably the session will be in Hebrew.

Neither announcement mentions when the new system will go live.

Problems with My Emails

Have been having problems with emails - not going into details now, but if you've been sending to [email protected] or [email protected] and it's bounced back, for now you can instead send to [email protected]

Would You File Your Patent Application Through These Guys?

Maybe it’s just me, but I’ve noticed a proliferation in the number of solicitations I’m receiving from outfits offering national phase filing services.  Most of these solicitations come from India. Here’s an example of one I received recently:

Hello, 

Reaching out from [name of company], because we assist individuals, corporates and similar legal companies to optimize the international Patent Application process by assisting to protect, strengthen, speed up, build and grow their businesses by managing and utilizing the intellectual property system in a more competent and cost-effective way.  

The cost for international Patent Application is incrementally growing and we can assist in mitigating that risk. Through our help, companies optimize their cost, increase their delivery speed and augment the output capacity. Many are able to achieve up to 70% cost reduction by utilizing the services provided by us. 

Kindly refer below to the potential patent applications of yours and permit us to support you on the same: 

PCT application number        title        30/31 month deadlines

Using our worldwide network of associates, we can assist you in filing a NATIONAL PHASE PATENT APPLICATION in various countries at a very competitive fee. Our top filing countries (more than 125+) are where we can not only assist but even guide you through the whole patent process and attain a grant in record time. 

Additionally, also note that our team is capable of handling and prosecuting TRADEMARK, DESIGN and COPYRIGHT applications in all the above-mentioned countries. 

For further details, you can have a discussion with us over Skype (email address) or WhatsApp/Call us at +91-xxxxx-xxxxx on the points mentioned above to have a better understanding of our services. 

We would love to learn about how you are currently tackling this and discuss how we may be of any assistance. 

Apart from some non-standard English (“corporates” instead of “corporations”?), I was struck by the fact that although they got the PCT number and the deadlines right, the title doesn’t correspond to one of my applications. In fact, the PCT application with that title has completely different dates.

That’s supposed to instill confidence?

But the real kicker for me regards that “network of associates”. I responded to two of companies that sent solicitations.  Here’s the first email exchange, with the critical points highlighted:

Me	Who do you use for filing in Israel? Who in the USA?
Them	Hi Daniel, Thanks for the email. We have our own network of attorneys we use for filing patents in the USA and in Israel. We have reviewed your PCT application.  The total number of pages are xxx and the total number of claims are xxx. The estimated cost for filing in the USA is USD zzzz which includes both professional fees and official fees.  The estimated cost for filing in the Israel is USD zzzz which includes both professional fees and official fees.  Also the deadline for filing it in the USA and Israel is due on WW XX YYYY. Kindly let us know if you have any further questions. We are looking forward to hearing from you. Best regards
Me	I asked who (which firm or which person) does the actual filing in the USA and who does the actual filing in Israel. Please answer those questions.
Them	Hi Daniel, Thanks for the email and query. We are sorry to inform you that we can't reveal which firm or which person we use for filling in USA and Israel. Kindly let us know in case of any further questions. We are looking forward to hearing from you.

Why would I want to work with a middleman that doesn’t tell me which firm he uses in each country?

I had a similar exchange and a similar response with another Indian company offering a similar service.

It’s a strange business model. But clearly, there are people out there who are happy to work this way.

You Want To File an IDS at the Israel PTO? First File a Power of Attorney, Buddy

Here’s another one that I heard today from a colleague in Israel.

The issue (allowance) fee was paid in an Israel patent application for an application owned by a company.  Now an examination report has issued in a corresponding application elsewhere, that mentions some previously-uncited publications as background references.  By statute, the Israel PTO needs to be made aware of those references, even though (a) they’re meaningless and (b) the ILPTO isn’t going to act on them.

At present, the rules in Israel say that any company, or any practitioner representing someone else, must file using the Israel PTO’s electronic filing system. So simply sending the list of references to the ILPTO is not an option. And the practitioner who normally attends to these things on behalf of the company is out of the country, so the company asked someone else to submit these references. But the Israel electronic filing system won’t let him, since he’s not the listed representative associated with the company.

As I’ve blogged before, in the US, this would be a non-issue – submitting prior art references (or taking almost any other action in an application) is something any registered practitioner can do, even if there’s no power of attorney on record to that person.

But here in Israel? Oh, no, we can’t have that. No, in order for this practitioner to submit an IDS, even a meaningless IDS, there has to be a power of attorney on file to that practitioner.  That has to be submitted with a 240-or-so shekel fee.  And additionally, the address for service must be listed as the practitioner’s address for service.

Moreover, in the US, one can submit a POA along with other documents, in parallel. But in Israel? No parallel processing for you, young man. FIRST you have to submit the POA with a fee, and then, when the office gets around to processing that, you can submit the IDS. If you received notice of the foreign-cited references on the last day when you can submit an IDS, tough.

Now, I know what you’re thinking: why did the company not make provisions for when its usual patent counsel is on vacation? I don’t know. But the situation is as it is. And it’s ridiculous.

There are at least two ways my colleague could handle this, here I'll mention one of them: my colleague could submit a document under the heading “submission of power of attorney and change of address”, which the system will let him do, but rather than submitting a POA, he could just submit a cover letter that says, “Per its obligations under section 18 of the statute, the applicant would like to bring the following references to the attention of the Office, and since you won’t me file this under ‘Section 18 update’, I’m submitting it as a POA”. The system will still make him pay the 240 shekels to do so, but at least the document will be in the file.

What Constitutes An Authorized Signer in the USPTO's Eyes? They Want Us to Guess

To anyone who's filed more than a handful of powers of attorney or assignments at the USPTO, it's well-known that the USPTO sometimes bounces these things for seemingly capricious reasons, often relating to the title given for the person who signed the documents, with the assertion that it's not apparent that the signer is authorized to sign the document. 

Thus, this week on one of the listservs to which I subscribe (yes, there are still listservs, and I subscribe to some of them because they're populated by some very knowledgeable and very helpful people), a question arose regarding signatures on documents filed at the USPTO. And in the response thread, David Boundy produced the 2-page document shown below. It's a list of acceptable descriptions that the USPTO regards as self-evidently showing authorization to sign, as well as some descriptions that are no-nos.

What's remarkable is that at the bottom of each page, the document is marked "Internal Use ONLY". In other words, "We're not gonna tell the public what's ok and what's not, those people out there are just gonna have to guess".  That's not only inefficient, it's illegal. And to make matters worse, I've seen some documents bounced by the USPTO where the signer used one of the "acceptable" descriptions.

This seems to be par for the course at the USPTO, which since at least May 19 has has announced on its website that "Patent Center has 100% of the functionality of EFS-Web, Public and Private PAIR, and is available to all users for electronic filing and management of patent applications."

It should come as no surprise that DB was only provided with this document following a Freedom of Information Act request.

Proposed Amendments to Regulations at Israel PTO: Powers of attorney (Part 2)

Yesterday I discussed many of the problems with the Israel’s PTO’s treatment powers of attorney. Today I discuss the ILPTO’s proposed amendments to the Regulations regarding powers of attorney.

The good news is that the ILPTO has now woken up to problem of the rules seemingly requiring a POA, and seeks to rectify it. The bad news is that the ILPTO’s proposed language not only won’t accomplish this, but (a) it will make things worse than they presently are, and (b) it doesn’t address other issues that need to be addressed, such as the appointment of multiple practitioners who are not part of the same firm (e.g. an in-house attorney along with outside counsel). 

Below I present side-by-side the current wording and the proposed wording for the relevant parts of Rule 17, in both cases my translation:[1]

Current	Proposed
17.(a). Any action required of a person in accordance with the statute or these regulations or which is permitted in accordance with them, he may, by written power of attorney that shall be delivered to the Office, appoint a patent agent or lawyer who are licensed to practice their professions to do that action.	17.(a). Any action required of a person in accordance with the statute or these regulations or which is permitted in accordance with them, he may, by written power of attorney that shall be delivered to the Office, appoint a patent agent or lawyer who are licensed to practice their professions to do that action. The appointee shall inform the Commissioner that he has power of attorney to take the action on the electronic application form at the time of filing the application, and if he is appointed after the filing of the application, by way of written notice which shall be delivered to the Office.
	(d) The Commissioner may, at any time, or for a specific matter, require the appointee to produce the power of attorney, and even to condition the taking of the action on the production of the power of attorney.

Ostensibly, the idea is to allow practitioners to file patent applications and to continue to take actions in those applications, without actually submitting powers of attorney, unless the Office requires such submission.  The problem is that way the proposed amendment is worded, the practitioner will need to aver upon filing that he already has a signed POA in hand. That’s worse than the present situation, since, as noted yesterday, at present a practitioner can file without a POA. 

Will practitioners be willing to make such a statement if it’s not true, viz. if they don’t have a signed POA in hand at filing time – especially if they can then be required to produce the document later? I suspect many if not most practitioners will not want to aver to something that’s not true. Thus the proposed amendment, as worded, will be a hindrance rather than a help.

Moreover, since, as also noted yesterday, the statute does not give the ILPTO the authority to close a patent application for failure to file a POA, from the perspective of making things easier for applicants and practitioners, the ostensible problem that needs addressing is one of the ILPTO’s own making, since it is the ILPTO that threatens, without authority, to close files if a POA is not filed. 

It’s also worth noting that there’s nothing in the proposed amendment to limit the power of the Commissioner to require production of a POA, i.e. that’s entirely at his discretion.  That leaves things open to abuse

It would be better to rewrite 17(a) to read something like, 17.(a). With respect to any action required of a person in accordance with the statute or these regulations or which is permitted in accordance with them, he may, by written power of attorney that shall be delivered to the Office, appoint a patent agent or lawyer who are licensed to practice their professions to do that action. The patent agent or lawyer may provide the Office with a written power of attorney from the person appointing him; in the absence of a written power of attorney, the submission of a document by a patent agent or lawyer in an application shall constitute an assertion by the agent or attorney that he is authorized to file the document.

And new 17(d) could read, (d) The Commissioner may, by way of public notice, specify classes of documents or actions for which the Office will require from the appointee a written power of attorney in order for such document or action to be valid.  (This wording could be appended at the end of 17(a) rather than appear as its own separate sub-section.)

By wording the regulation this way, all registered practitioners would be able to file documents in all patents and patent applications, but the ILPTO could still designate certain types of actions – such as express abandonments – that would require the submission of a power of attorney.  Because the electronic filing system utilizes two-factor authentication, the Office would be able to track who filed which document, and for further ease of reference the ILPTO could require documents submitted to specify the filer’s patent agent or lawyer registration number.  It would be necessary to modify the electronic filing system to enable these functions, but those technical concerns should not be an impediment to setting good policy.

Additionally, while the ILPTO’s proposed amendment doesn’t address the matter of applicants who wish to appoint multiple practitioners who are neither “partners” (a term that is not defined in the statute or regulations) nor who “work together in the same single office”, the modified proposal here would in principle facilitate such multiple appointments, since any practitioner would be able to file a document in any application, and for those documents or actions for which a POA is required, it would easy for the office to check to be sure that person filing the paper was authorized in the POA to submit the paper.  However, for the sake of completeness, it would be necessary to amend regulations 16(f) and 17(b):

Current	Proposed
16(f) If a person gave authorization in accordance with regulation 17, the address of the authorized party shall be regarded as the address for service for the authorizer, as long as the authorization remains in force and as long as neither the authorizer nor the authorized inform the Office otherwise; this sub-section applies also with respect to the address of the authorized or any other address provided, and the authorized may inform the Office of an email address as set forth in regulation 16(b) for use with all patent applications and proceedings before the office in which the authorized represents the applicant.	16(f) If a person gave authorization in accordance with regulation 17, the address of one of the authorized party parties, designated by the authorizer, shall be regarded as the address for service for the authorizer, as long as the authorization remains in force and as long as neither the authorizer nor the authorized inform the Office otherwise; this sub-section applies also with respect to the address of the authorized or any other address provided, and the authorized may inform the Office of an email address as set forth in regulation 16(b) for use with all patent applications and proceedings before the office in which the authorized represents the applicant.
17(b) No more than one person may be authorized per matter, unless there are authorized together several persons who are partners or who work together in the same office; however, a person may authorize more than one authorized to appear and argue in his name [in litigious proceedings before the ILPTO – DJF].	17(b) No mMore than one person may be authorized per matter; the Commissioner may, by way of public notice, limit to a number not less than 10 the number of persons that the authorizer may authorize, unless there are several persons authorized together several persons who are partners or who work together in the same office; however, a person may authorize more than one authorized to appear and argue in his name.

Finally, Regulations 16 and 17 should be further amended to specify that, after issuance of a patent, if a party pays a maintenance fee, then that party becomes the address for service for maintenance fees only, while any power of attorney already on file would stay in force for any other matters.  This would eliminate the present situation in which the practitioner who prosecuted the case but is not responsible for maintenance fees continues to receive notices about maintenance fees.

 

[1] In point of fact, I’ve cleaned this up, as the draft amendments appear to contain some errors.