America-Israel Patent Law

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.

Proposed Amendments to Regulations at Israel PTO: Powers of attorney (Part 1)

Last week the Israel PTO announced by email proposed amendments to the regulations (rules) governing certain aspects of practice before the Israel PTO in all four areas over which it has jurisdiction - patent, trademark and design applications and registrations, and appellation of origin applications and registrations.  I did not find a corresponding announcement on the ILPTO website, but the following links to the draft regulations appear in the email announcement:

• טיוטת תקנות הפטנטים (נוהלי הרשות, סדרי דין, מסמכים ואגרות) (תיקון), התשפ"ג-2023
• טיוטת תקנות הפטנטים (הארכת תקופת הגנה – סדרי דין בבקשה לצו, בהתנגדות לצו ובבקשה לביטול) (תיקון), התשפ"ג-2023
• טיוטת תקנות סימני המסחר (תיקון), התשפ"ג-2023
• טיוטת תקנות העיצובים (תיקון), התשפ"ג-2023
• טיוטת תקנות המדגמים (תיקון), התשפ"ג-2023
• טיוטת תקנות כינויי מקור (סדרי רישום של כינויי מקור שארץ מקורם היא ישראל), התשפ"ג-2023

Comments are due by the end of the day on Sunday, June 4.[1]  Sadly, the announcement doesn’t include an email address to which to send comments. Rather, the announcement refers to each of the web pages above, which include links for people to provide comments, although I have not yet checked to see that those links work.[2] 

The principal change proposed, and on the only one common to all the proposals, is a change in the procedures for filing power of attorney.  In tomorrow’s post, I’ll relate to those proposed changes and their shortcomings.  In this post I’ll focus on the current shortcomings concerning powers of attorney.  Although I’m going to specifically POAs with respect to patents, the ILPTO has proposed the same change with the same language in the relevant regulations for trademarks, designs and appellations of origin as well.

As one would expect, in Israel applicants for patents may act pro se, or such applicants may appoint an authorized representative.[3]  The relevant provisions are set forth in rules 16 and 17 of the Patents Regulations. Rule 16 concerns providing the ILPTO with an address for service in Israel; for pending patent applications, the applicant must provide the office with such an address.  Per the most recent amendments to the regs from several years ago, the applicant may also provide an address for email service of documents.[4] 

Rule 16(f) specifies that if the applicant is represented by an authorized representative per rule 17 (see next paragraph), then the address for service must be the address of that representative.  Since probably upward of 99% of patent applications in Israel are filed via representatives, and the regulations also stipulate that representatives must file electronically, de facto these provisions collectively mean that almost all correspondence with the ILPTO must be conducted electronically.

Rule 17 concerns the appointment of representatives, and says that, by way of a written power of attorney that “shall be delivered to the ILPTO”, an applicant may appoint a representative to act on the applicant’s behalf before the ILPTO.  Rule 17 also says that a person may not appoint more than one representative per matter, unless the multiple representatives are “partners or they work together in the same single office”.

It’s not always possible to get a signed power of attorney prior to filing a patent application, so the practice of the ILPTO has been to allow practitioners to submit a patent application without a POA, and then to requisition a POA (asserting rule 17 as granting authority to requisition the POA), giving the applicant a month to provide the POA.  Failure to file the POA will result in abandonment of the application.

As someone licensed to practice before both the USPTO and ILPTO, and who also makes use of WIPO’s ePCT filing system, I’ve long found the ILPTO’s approach to be suboptimal (to put it mildly), and possibly ultra vires.

Specifically, what practitioner is going to file a new patent application that he hasn’t been instructed to file? The electronic filing system that an Israel practitioner must use to file the application won’t allow the new application to be filed without paying the filing fee (around $600 for an application of 100 or fewer pages); why would any practitioner spend that money if he hasn’t been told he’ll be reimbursed?

More importantly, a practitioner’s license is his livelihood. What practitioner is going to knowingly file an application, or a document in an application, that he hasn’t been authorized to file, particularly if doing so will prejudice the putative client’s interests? It’s a safe bet that the practitioner is only going to file something if he’s been instructed to do so, or if he hasn’t received specific instructions but has a general standing instruction from the client to keep the case pending. It doesn’t take a genius to understanding that doing something to deliberately harm the applicant or patentee could not only cost the practitioner money in a tort suit, it could be the end of his career. (For readers who have studied Gemara, this is an example of one of the definitions of the term “migo” מיגו.)

The USPTO recognizes this reality, and operates accordingly.  As in Israel, US Rule 1.33(a) requires that a new application include a correspondence address. But Rule 1.33(b) says that amendments may be filed by a practitioner who is on record as having power of attorney, or by a practitioner acting in a representative capacity per Rule. 1.34.  And Rule 1.34 establishes when a practitioner who is not of record (viz. for whom a power of attorney has not been recorded) files papers, “his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts”.

That’s a smart arrangement: it makes it clear that the practitioner can act without a POA, but by doing so he’s effectively certifying that he’s authorized to act. 

Additionally, the USPTO as a matter of policy still requires a POA for the filing of two documents: an express abandonment of an application or patent, or a terminal disclaimer that foreshortens the term of the patent.  That makes sense too, since those acts irreversible and, on their face, prejudicial to the applicant/patentee’s interests.

What this means in practice is that, for example, if an applicant wants a new US practitioner to take over a file, the new practitioner can do so without having to wait to obtain a power of attorney. Of course, if the new practitioner wants to receive notifications from the USPTO about new correspondence in the case, and the like, he’ll need to record a change of correspondence, but that’s a separate matter, and doesn’t prevent the new representative from filing responses or paying fees.

The USPTO arrangement also means that if, for example, a solo practitioner will be going on vacation, and some response will need to be filed or a fee will need to be paid, he can arrange for a colleague to attend to the matter. 

So for the ILPTO to insist on the submission of a signed POA as condition for continued representation of the applicant in most situations is, from the practical standpoint, not just silly, but counterproductive.[5]

Additionally, the threat of closing the file because a POA isn’t submitted is legal hogwash, both statutorily[6] and from the commonsense standpoint: if an application is incomplete upon filing (e.g. it contains illegible drawings), and the defect is never cured, or if an applicant doesn’t respond to an examination report, those could be a reason for closing the file. But failure to submit a POA? It’s not in the same league. And in point of fact, I have had cases that were filed without a POA, in which the ILPTO has asked for a POA, which I prosecuted through to grant.

Another problem with the present system in Israel is that, as mentioned earlier, Rule 17 says that an applicant or patentee may not appoint more than one representative per matter, unless the multiple representatives are “partners [a term not defined in the patent statute] or they work together in the same single office”.  That reflects a particular way of thinking about how people work or should work together that is outmoded: people work together in different constellations and with different arrangements, and it’s unreasonable for the ILPTO to try to force them into a particular work model. Such a narrow conception of what constitutes “working together” is also prejudicial to applicants, who may want a particular team of practitioners to work on a matter, even though the practitioners are not “partners” and do not “work together in the same single office”.

Inasmuch as the present regulations limit practitioners’ freedom to make their own work arrangements, and limits applicants’ ability to choose their representatives, this narrow conception of “working together” also stands in contravention to two so-called “basic laws”, the “Basic Law: Freedom of Occupation” and the “Basic Law: Human Dignity and Freedom”, which the “High Court of Justice” (not to be confused with the Supreme Court) regards as having constitutional status.  

By contrast, USPTO allows an applicant to appoint whichever registered practitioners it wants to represent it before the USPTO.[7] Similarly, in PCT applications, WIPO makes it possible for any combination of people that the applicant desires to have access to its PCT applications, with varying levels of authorization. 

A related point is that whereas the USPTO will send out notices of correspondence in a file to up to three email addresses, and WIPO’s ePCT allows for notifications to be sent to multiple email addresses, the ILPTO will only send such correspondence to a single email address.

There’s also the problem (discussed in an earlier blog post) that the Israel PTO does not have a mechanism that enables patentees to provide correspondence addresses for maintenance fees only.

As will be discussed in tomorrow’s blog post, the ILPTO’s proposed amendments attempt to address only one of these matters, and fails even at that.

 

[1] Like in the USA, statutes in Israel often omit details about the specific means of implementation of the statutes, and say that the details will be set forth in implementing regulations.  For readers familiar with the rule-making process in the USA, the process in Israel is similar, except that formally the job of enacting the regulations is assigned to a particular minister, and the regulations must be approved by the relevant committee in the Knesset, rather than being enacted by the administrative body itself (following notice-and-comment procedures) as is the case in the USA.  In the present case, it’s clear that the impetus for these amendments is coming from the Israel PTO itself, which will then ask the Minister of Laws (a title which is unfortunately mis-translated as Justice Minister, even though the Hebrew term משפטים does not mean “justice” and is never, ever translated that way in any other context) to sign them and bring them to the committee for approval.

[2] Why allow members of the public to send a single document with comments when you can have them go to six different web sites and provide six separate sets of comments?

[3]  Namely, a licensed patent practitioner who has a technical degree and has passed the ILPTO licensing exams, or, in keeping with the practice in banana republics, any one of the tens of thousands people who don’t have a technical background but have a law degree as a first degree and have passed the lawyer licensing exams – because we all know that law school is much, much more difficult than getting a STEM degree and passing the lawyer exams imbues people with wisdom otherwise not imparted to mere mortals.

[4] Until now, Rule 16 precluded email service of the patent certificate itself, and required the office to send a paper certificate, but the proposed amendments will allow the patent certificate itself to also be sent by email; patentees will have the option of requesting a paper copy from the ILPTO, presumably for a fee.

[5] The ILPTO’s position on this is that its hands are tied, and that Rule 17 as presently worded forces it to require the submission of a written POA. I find that disingenuous, because there are other areas where the ILPTO in effect doesn’t enforce the statute or the rules. But as those situations sometimes accrue to clients’ benefit, I’m not going to discuss them here.

[6] The ILPTO says that its notice to submit a POA constitutes a “notification of defects” under section 20 of the statute, and therefore failure to reply is cause to close the file, but that’s just plain wrong. Section 20 of the statute says that if the examiner or the Commissioner find that the (claimed) invention is unpatentable or that the application fails to meet the requirements of sections 11-16A of the statute (none of which say anything about a power of attorney), the then the Office will notify the applicant. Section 21 says that if the applicant doesn’t fix the defect(s) within a specified time, the Commissioner will refuse the application. So there’s no statutory basis for closing the file – viz., refusing the application – for failure to file a POA.

[7] The mechanism by which this is done at the USPTO will wait for a later blog post.

Weizmann Institute, or Sesame Street?

When I was a kid, almost every episode of Sesame Street included a bit with a song that went something like,

"One of these things is not like the others, one of these things just doesn't belong. Can you tell which thing is not like the others by the time I finish my song?".

And usually what would be shown was a grid containing three triangles and one circle, or three cats and one dog, or three tools and a shoe, or something like that, and then the person singing the song would explain which item was different from the others.

This morning, the Weizmann Institute held a party to which all Institute staff and students were invited - probably close to two thousand people. 

 

And what occasioned these festivities?

The unveiling of Weizmann's new logo.

Below are examples of the old and new logos. I'm not saying which is which. Five brownie points for anyone who can spot the differences in less than 5 seconds.

 


With that kind of money to spend on frivolities, it's no wonder the Israel Tax Authorities have been considering taxing the interest and investment income on Weizmann's endowment.  And with so little difference in the logos, one wonders if some of the people at the Institute need to watch more Sesame Street. Especially with Israel's universities dropping in world rankings.

Interestingly, Weizmann has 11 trademarks registered in Israel, including several on the logo, but as of this writing, the Israel PTO database doesn't show an application, let alone a registration, for the new logo.

Why Did the USPTO Make Half of Form SB38 Disappear?

In March I wrote about WIPO's DAS system for the electronic exchange of priority documents in patent, trademark and design applications, and wondered why the Israel PTO charges a fee for making one's Israel application available to other countries via DAS – especially when the USA, for example, doesn't charge a fee (and in fact, for patent applications filed using an application data sheet, makes those applications available available in DAS, unless the applicant checks the opt-out box on the ADS). 

Today a colleague pointed out that the USPTO now appears to be playing games with DAS retrieval, by changing its form for instructing the USPTO to retrieve a document from DAS.

The form in question is called “SB38”.  In the previous version (Sb0038 old), the form had two parts: part A, which let the applicant instruct the PTO to retrieve a priority application via DAS (including an application from a country that only recently joined DAS); and Part B, in which the applicant could instruct the PTO to retrieve from the EPO or JPO a copy of a priority application from a country that doesn't participate in DAS, which copy was already deposited with the EPO or JPO.

In the revised form (Sb0038 new 2023), Part A has been removed.  Now the form can only be used to tell the PTO to retrieve a non-DAS country priority document from the EPO or JPO.

Trying to get into the warped minds at the PTO, I suspect that someone reasoned, "Well, if you want to retrieve a priority document via DAS, you can do so in an ADS (originally-filed or "corrected"), so we don't need to provide space in the SB38 for this".  Indeed, if one files an ADS that includes a claim for foreign priority, and in addition to the name of the foreign patent office, patent application number and filing date, one includes the relevant confirmation or access code, the USPTO will try to retrieve that foreign priority document.  So maybe someone has now decided, “Hey, we don’t need a separate form, we can just tell ‘em to do it on an ADS.”

Alternatively, maybe the USPTO has suddenly adopted a new way of reading 37 CFR 1.55(i)(2) (which has not changed since at least 2015).  That section reads,

2) The claim for priority is presented in an application data sheet (§ 1.76(b)(6) ), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and the applicant provides the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application;

The way I understand that section, and the way the USPTO has understood it until now, is that to make a foreign priority claim, the applicant must file and ADS that includes the foreign filing office, the application number, and the filing date, but that the access code for the foreign application may be submitted separately, e.g. in the old SB38.  Maybe now someone at the USPTO has decided that this section should be read as saying that the access code must also be submitted in an ADS as well, rather than separately. 

God forbid the PTO make applicants' lives easier.

Ironically, both the old form and the new form say they're approved by the OMB for use through 31 May 2024, even though the link on the PTO's "forms" page only leads to the new form.

Anybody else encounter this or have thoughts on it?  I do not make frequent use the SB38, and I always file with an ADS, but still, this is annoying.

Wow, That Was Quick!

Filed a patent prosecution highway (PPH) request with the Israel PTO at 13:30 this afternoon, asking that a patent application be examined out of turn because the claims are identical to those of a granted US patent. 

At 16:42 I received a response: "yes".

I'm impressed. Nice work.

Liar, Liar, Pants on Fire: Webinar on How The USPTO's "Docx Rule" Poses Problems to Applicants and their Attorneys

I have blogged previously (here, here and here) about the USPTO's continuing lies with respect to its "docx filing" program, but Carl Oppedahl has done a much better job of tracking this on his Ant-Like Persistence blog.  Carl will be offering two webinars about the pitfalls of docx filing, one on May 10 for people who use MS Word and one on May 12 for people who use other word processing programs.  You can learn more about the webinars and sign up here; on that page are also recordings of two earlier versions of these webinars.

Presently the docx program has been pushed off, again, until June 30, and I won't be surprised if it gets pushed off yet again, but at some point I expect the PTO to say, "No, this time we mean it", at which point I expect the matter to end up in court.

Al Tashlicheini L’et Zikna: of Jay Friedman and Pauline Newman

"Do not cast me off in old age; when my strength fails, do not forsake me!" (Psalms 71:9)  אַֽל־תַּ֭שְׁלִיכֵנִי לְעֵ֣ת זִקְנָ֑ה כִּכְל֥וֹת כֹּ֝חִ֗י אַֽל־תַּעַזְבֵֽנִי׃

 

One of my favorite albums (if you don’t know what a vinyl record is, Google it) is a collection of canzonas by the 17^th century composer Giovanni Gabrieli, arranged for brass ensemble and recorded in 1969. Apart from the spectacular playing, the recording is remarkable in that it features the entire brass sections of three major symphony orchestras (Chicago, Cleveland and Philadelphia), whose players were somehow able to clear their schedules to get together for a day in Philly. Many of the players on that album are legendary among brass players, inter alia Abe Torchinsky, Myron Bloom, Dale Clevenger, Bud Herseth, Mason Jones, and Arnold Jacobs.

 

Having been recorded more than 50 years ago, most of the musicians on the album are no longer with us. Amazingly, however, one of those players is not only still around, but still active: at age 82 or so, by which age most brass players would have long since retired, Jay Friedman is still the principal trombone player of the Chicago Symphony, where he has played since 1962 (!). Here’s a picture of him at a CSO concert I attended last month, in which he (and the rest of the CSO) played the @#$% out of Dvorak's ninth symphony ("From the New World").

 

One feature of symphony orchestras, especially those at the apex of the profession like the CSO, is that it becomes apparent very quickly when a musician can no longer perform at the necessary level. In the CSO’s case, to help mitigate the incentive to keep the job when it’s time to move on, the orchestra provides a generous retirement package. I assume that when the time comes, Mr. Friedman will step aside, but until then, as we said in the 70’s, keep on truckin’!

 

This leads to the big news that came out of the Court of Appeals for the Federal Circuit last week: not a groundbreaking patent law decision, but the fact that the court’s chief judge, Kimberly Moore, is seeking to force judge Pauline Newman out of her job. You can read the court’s announcements on the matter here, here and here, but basically, the assertion is that, at the age of 95, Judge Newman is no longer able to pull her weight, and is allegedly even suffering mental lapses.  Gene Quinn broke the story on his blog (here and here), and the comments in those pieces include remarks from people who have seen and heard Judge Newman recently, who state that she’s still on the ball.

 

I don’t know the inner workings of the CAFC, and I don’t personally know any of the CAFC judges, nor have I seen Judge Newman herself recently.  However, as a long-time follower of the CAFC, I think that Judge Newman has long been the sharpest judge on the court.  I also know most of the CAFC judges who ostensibly have IP experience from private practice have experience as litigators, which is a different role than preparing and prosecuting patent applications. As in-house counsel at FMC corporation for 30 years, including as head of the patent department for 15 years, Judge Newman has more patent procurement experience than any other judge on the court, and possibly more than all the other judges combined.  In her decisions she rarely gets things wrong, and a dissent from her almost always means that her colleagues in the majority are in error. Frankly, it’s a shame there haven’t been more judges like her on the CAFC.  

 

The Talmud relates how the amora Rav Yosef (bar Hiyya) suffered a sickness (perhaps a stroke) that caused him to forget much of he knew, so that his student Abbaye (who became one of the two leading scholars of his own generation) had to re-teach him what he himself had taught Abbaye. Yet it’s clear that other scholars continued to involve him in discussions, even though Abbaye would sometimes have to remind Rav Yosef of things that Rav Yosef himself had taught when he was younger.

 

It could turn out that Judge Newman’s younger colleagues are conniving cutthroats; it could be that Judge Newman is still sharp but that physical infirmity is taking its toll on her ability to work, and that taking senior status (which allows for a lighter workload) is appropriate; it could be that her mental acuity is also in decline and that it’s time to retire.  We shall see in the coming months if this incident marks the unfortunate but inevitable end of Judge Newman’s career, if it stains the court itself, or both.  For those of us who work in the trenches of patent prosecution, Judge Newman will have our respect even after she’s no longer hearing cases.  

 

And, to slightly twist the verse at the start of this post, the patent community thanks her for not having abandoned us in her old age.

Al Jaffee z"l - Cartoonist and Creator of Prior Art

We heard earlier this week about the passing of 102-year-old Al Jaffee, who for many years wrote for MAD Magazine, and who only retired from cartooning three years ago.  His most well-known (and most consistent) contribution to MAD was no doubt the “fold-in” on the inside back cover, which was the first thing any loyal MAD reader looked at (followed by Prohias’ Spy vs. Spy, the Don Martin cartoons, Dave Berg’s “The Lighter Side of…”, and the doodles in the margins by Sergio Aragones.  The last things a reader would get to were the movie and TV satires). 

But another feature that Jaffee did from time to time involved showing useful gadgets from the distant or not-so-distant future, like a piece on improvements in the collection and disposal of what my colleague David Klein might refer to in patentspeak as “canine exudates”.  At one point MAD collected these into a book called “Al Jaffee’s MAD Inventions”, which I’m sure my brothers and I owned at one point.

From time to time I’ve wondered if any of Al Jaffee’s invention were cited as prior art during the course of patent prosecution, either voluntarily by an applicant, or even better, by the examiner under 102 or 103, but neither my brother Aaron nor I bothered looking until now.  Searching for patents that list “Mad Magazine” or “Al Jaffee” as prior art yields several examples, but the only cited MAD reference I could find that was archived on the internet was from the June 1964 issue which included a piece written by Al Jaffee entitled “The Great Cigarette Filter Tip War”.  The second page of that piece is listed as prior art in US patents nos. 3439685 and 3528432. Although the file histories of these two patents are not available online, if at all, the fact that the patents issued to two different inventors but were examined by the same examiner would seem to suggest that, in at least one of the cases, it was the examiner who cited Jaffee's work.

Passover Post from the Dead Sea

I’ve been spending Passover at the lowest point on the earth’s surface not covered by water, viz. on the shore of the Dead Sea, or what these days (as will be explained below) is more properly referred to as “drying pool no. 5”. This week I’ve learned a few things that are interesting to chemists, to Zionists, and to a lesser extent to IP professionals. 

I’ll start with our visit to the Dead Sea Works’ visitors’ center, which is located at the site of the original southern Dead Sea mineral production facility.  The Dead Sea isn’t so much a sea as a saline lake, which until the 20^th century was fed by water flowing from the Kinneret (Sea of Galilee) via the Jordan River.  As there’s no outflow of water but only water loss by evaporation, the water in the Dead Sea is extremely salty.  Already in the early 1900’s, the Siberian-born and Zionistically-oriented Moshe Novomeysky recognized the potential to obtain valuable minerals from the water.  It took 10 years to get the British bureaucracy to grant permission to establish a plant to harvest the minerals, but permission was granted in 1929 and the first plant on the northern end of the Dead Sea was operational by 1930.  A few years later, a second plant was established on the southern part of the lake after much effort by a group of kibbutznikim. The plants’ products were Mandatory Palestine’s most profitable export. (When the Jordanians captured the northern plant in 1948, they destroyed it rather than use it to produce materials. Today the eastern half of the southern park of the Dead Sea is used by Jordan to produce minerals.)

Before building the facilities, Novomeysky needed proof of concept for his idea for production of the minerals, but once proven feasible, it was implemented and remains in use until today. Basically, the water is put into relatively shallow drying pools having a large surface area. As the water evaporates, sodium chloride precipitates out.  The water is then moved to the next pool, where the process is repeated to collect the next mineral, and so on.  The result is that today Israel produces large amounts of potassium chloride, magnesium chloride, phosphorus, and bromine (of which it produces 40% of the world’s supply).  The NaCl, evidently, is of little commercial value.  The hotels of the Dead Sea area are all located along the shore of the southern part of the lake, specifically along drying pool no. 5.

As a patent attorney, I find it interesting that the same process has been in use for over 90 years, and – the flip side of that – that there are few if any patents related to the production process. Typically, with chemical processes, companies look for a new process or an improvement in an existing process, because any little bit of increase efficiency translates into reductions in cost and thus increases in profitability.  But sometimes you just can’t beat the older process - the Wacker process for production of acetaldehyde from ethylene (by palladium-catalyzed oxidation) has been used since the 1950’s and remains the primary method for production of acetaldehyde.  Additionally, you need the raw materials, and the facilities, and there aren’t many if any other places in the world that have the combination of these minerals in sufficient concentration in aqueous solution, with the area, sunshine and temperatures to facilitate efficient drying. In short, you don’t need to a patent a process (or improvements on that process) if there’s no chance of someone copying what you’re doing.

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I learned this week that the medieval rabbi Levi ben Gershon, aka Ralbag, who is probably best know for his commentaries on the Bible, also published a book of mathematics, Maaseh Khoshev, in which he made use of induction proofs (one my favorite things in high school math), and that he invented a tool referred to as Jacob’s Staff that was used for centuries by sailors.  There is a crater on the moon named after him.

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.