America-Israel Patent Law

We Forgot About Your Patent Application. Sucks To Be You.

In 1995, the USA moved to a 20-years-from-earliest-filing-date regime. A few years later, in response to complaints that this effectively foreshortened patent term from the previous 17-years-from-grant if the USPTO was slow in examining cases, Congress enacted provisions for patent term adjustment (PTA, not be confused with patent term extension – PTE – for drug patents under the 1984 Waxman-Hatch amendment).  The formula for just how much adjustment a patentee is entitled to is a bit complicated, and there are pitfalls for the unwary, but the basic idea remains: examination shouldn’t take more than 3 years, and to the extent it does and that’s the fault of the USPTO, the term of the patent is adjusted accordingly to compensate.

There is no similar mechanism here in Israel, which is a pity. Particularly when the Israel PTO is as derelict in its duty as it was in a case I recently heard about from a colleague.

The application in question was filed more than 10 years ago as a national phase application.  A few years later, responsibility for the case was transferred to my colleague, who amended the claims to correspond to those granted in a foreign patent and requested allowance per §17(c) of the statute. The PTO sent a notice of allowance.  Two days later, it sent a letter withdrawing the notice of allowance.  The letter stated that the allowance was being withdrawn because certain of the claims did not comply with a particular Registrar’s Circular letter. 

And what was the issue with these claims?  They were worded, “Use of an XXX according to claim 1 for [doing YY]”. 

There is nothing in the statute per se that prevents the grant of claims worded that way. In fact, for many years, the Israel PTO granted such claims, many such claims were litigated over the years, and I am not aware of a single instance in which such a claim was found to be invalid on account of having been worded that way.  Nevertheless, at some point someone in the ILPTO decided such claims were not acceptable (because, it is asserted, they don’t recite a process and therefore don’t recite a category of statutorily patentable subject matter), and sua sponte the ILPTO stopped allowing them.

The letter went on to say that the application was being returned to the examination queue.  And there it waited. And waited.

And waited some more.

After two and a half years, my colleague submitted a letter requesting an interview with the examiner about the case.

It’s been more than a year since that request was submitted, and it’s still being ignored.  Wow.

My guess is that there’s a glitch in the ILPTO’s computer system, so that when a notice of allowance is mailed and then rescinded, the system doesn’t actually put the application back into the queue.  I base this on the fact that I had a similar occurrence with an application I was handling. 

Adding to the frustration is the fact that this could easily have been dealt with by telephone.  The examiner could have called my colleague and said, “Looks, claims m and n are not allowable because they’re in the wrong format, but if you let me do an examiner’s amendment, I’ll cancel them and allow the case under §17(c).”  Except that the Israel PTO doesn’t believe in Examiner’s amendments, God knows why not.  Note to Ophir Alon: please institute examiner’s amendment practice.  It will make life easier for all of us.  And fix the computer system so that an allowance is withdrawn, the application actually is thrown back into the examination queue.

But even without the examiner’s amendment tool available, the examiner could have phoned my colleague and proposed two possibilities.  The first is that the applicant send in a new set of claims with the offending claims cancelled.  Alternatively, since claims of the format “XXX according to claim 1 for use in doing YY” are deemed acceptable by the Israel PTO, the examiner could have asked the applicant to rewrite the offending claims in purpose-directed product format.  Although this would have taken the claims out of the framework of §17(c) (since each claim must be identically worded to one of the granted foreign claims), the examiner still could have examined the claims – and while not giving an official allowance under §17(c), could have effectively relied on the foreign grant to allow the set of claims in which the “Use of XXX” claims were replaced by “XXX for use…” claims.

But none of that transpired. In fact, the examiner didn't even send a letter spelling out these possibilities.  Instead, several years have gone by, and the patent application has languished because the ILPTO didn’t do what it’s supposed to do (and told the applicant it would do), viz. examine this patent application.

At least my colleague hadn’t paid the issue fee at the time the notice of allowance was withdrawn. If he’d done that, they wouldn’t have automatically refunded his money.  No, they would have insisted that he REQUEST the refund.  But that’s a blog post for another day.

Why Can't I File a Section 17(c) Request In This Application?

In my previous post I mentioned the lack of sufficient technical support for the Israel PTO's electronic filing system.  Case in point, a new one for me: the system won't let me file a request under section 17(c) of the statute, the section that says an application can be allowed on the basis of a corresponding patent in certain jurisdictions if each claim of the Israel patent is identical to one of the claims of the foreign patent.  But there's no apparent reason why this should be so in this case.

In greater detail: early this morning, before ILPTO opening hours, I responded to an office action, by relating to the prior art rejections raised by the examiner. In the response I also asked that the application be accepted under section 17(c) of the statute, since the claims are identical to those of a corresponding granted European patent. But the EFS is poorly designed in this regard.  When filing by Israel EFS, first one has to choose from a finite list the type of filing he wishes to submit (in this case, response to a form 26 office action), then one enters the relevant application number, then the system checks to make sure one is allowed to file such a response at this stage of the prosecution, and if the system says that such a response is permissible, then one is given a finite list of choices of types of documents to upload: response to OA, clean claims, marked claims, clean spec, marked spec, prior art documents, etc.  When making a 17(c) request, the applicant is supposed to provide the ILPTO with a copy of the foreign patent on which the request is based, but "corresponding foreign patent document" is not among the finite choices available when submitting a response to a form 26 office action.  Instead, what one has to do is upload the all the documents for the response, click on "create basket of documents to be file", and then start the whole operation again, this time choosing "17(c) request during substantive examination" (as opposed to "17(c) request during formal examination"), then entering the application number, then uploading the 17(c) request itself and the corresponding foreign patent, as well as the claims if the claims have not already been amended to correspond to the foreign patent claims.  Then one clicks "create basket", and then one submits the whole kit and kaboodle, two "baskets" at once for the same application. 

Except in my case, when I choose "17(c) request during substantive examination" and then enter the application number, the system says, "nyeah nyeah nyeah the system status doesn't allow you to file that now!"

So instead of uploading the foreign patent in the 17(c) request template, I went back to my original "basket", viz. the OA response, and uploaded it as a "citation".  I've no idea if the examiner will notice it, so I'll leave the examiner a voice message explaining the situation. 

Of course, why we should be required to upload the foreign patent at all is a bit of a mystery, seeing as how examiners routinely find and download foreign patents as prior art.

I'll also contact the new tech support person to explain the problem and find out why the system is screwy in this way.

Yet Another Attempt By the Israel PTO to Circumvent the Law: ILPTO Seeks to Expand Its Powers By Fiat, at the Expense of §17(c) of the Statute

I’ve blogged before about how a good thing became less good when it was codified in the statute, specifically §17(c) of the Israel Patent statute, enacted in 1995, which codified what had until then been an Israel PTO practice: you get a corresponding patent allowed in certain other jurisdictions, and if you amend the claims in Israel to correspond to the allowed foreign claims, you can piggy-back on that allowance to gain allowance in Israel. The policy was put in place at a time when the ILPTO was overloaded with work.  And while the ILPTO has in past 10 years significantly decreased its examination backlog, §17(c) remains on the books (at least for now), and for many applicants presents a way lowering their world-wide patent prosecution costs, by allowing them to leverage prosecution in larger, more important jurisdictions, such as the USA, Europe and Japan, to obtain a low-cost allowance in tiny Israel.

As an ILPTO policy, the office had some flexibility in its implementation of this practice. But now that it’s a statutory provision, the office, at least for the past 15 years or so, feels it no longer has such flexibility.  Hence, since the statute says you can piggy-back on a granted patent, but not an allowance, the ILPTO now makes applicants wait for the grant of the foreign patent. Similarly, because of poor statutory drafting, the ILPTO won’t let applicants springboard from a corresponding patent that constitutes a corresponding national phase PCT filing if the PCT application doesn’t claim priority from an earlier application. And whereas in the past you could convert US method-of-treatment claims to Swiss-type or purpose-directed-product claims and still get those claims allowed on basis of the granted US method-of-treatment claims, in the early 2000’s the ILPTO decided it was precluded by the language of §17(c) from doing so.

Now the ILPTO wants to restrict §17(c) even more, but in a way that I don’t think the statute authorizes it to do.  But first some background. 

In Israel, when prosecution on the merits concludes, there are two important dates to keep in mind: the date of acceptance of the application, and the date of grant of the patent.  “Acceptance” occurs after the acceptance fee is paid, when notice that the application has been allowed is published in the Patents Journal under §26.  This begins a three-month period to oppose the grant of the patent.  If an opposition is filed, pre-grant opposition proceedings ensue.  If no opposition is filed (or if the opposition is rejected and no appeal of the decision filed with the district court), the patent automatically grants (§35). So if the acceptance occurs upon publication per §26 on December 31, and no opposition is filed by the end of the day on the following March 31, on April 1 the patent automatically grants.

When §17(c) was enacted, the statute was also amended to include §17(e), which says that up until the time of the grant of the patent, the applicant must inform the ILPTO if opposition or cancellation proceedings were instituted against the foreign patent which served as the basis for the §17(c) request.  §17(e) does not state that the ILPTO may take any steps as a result of being so informed.  Recently, though – viz., November 2020 – someone at the ILPTO decided that if opposition or cancellation proceedings are instituted against the foreign patent prior to the acceptance of the application, that’s sufficient reason to withdraw the allowance, and it wrote this into Commissioner’s Circular notice no. 035/2017. Curiously, when this Circular was first published in early 2017, it didn’t say anything about returning §17(c)-allowed applications to examination.

I’m not sure of the ILPTO’s legal justification for this practice – I don’t recall seeing reasons for the change to this language when it was proposed just two months ago, and no reasons seems to be given on the ILPTO’s web site. I suspect, however, that that justification (and I use the term loosely) resides in §17(d), which says that the Commissioner, his deputy or the chief examiner may refuse to accept an application for which a §17(c) request was made if the application doesn’t meet the requirements of §17(c), or if there is “another special reason not to accept the application”.  The former condition seems obvious: if an application doesn’t meet the requirements of §17(c), then it’s not allowable under §17(c) (duh!), and if an examiner mistakenly concluded that the application met the requirements of §17(c) and so informed the applicant, but it was later discovered (prior to acceptance) that the requirements of §17(c) weren’t fulfilled, the Commissioner has the authority under §17(d) to revoke the allowance per §17(c), and to return the application to regular examination. 

If that was the ILPTO’s rationale or amended Circular 035/2017 in November, then it was flawed reasoning: the filing of an opposition to the foreign patent is irrelevant to the question of whether or not the dictates of §17(c) were fulfilled. 

Alternatively, maybe the Office thinks that the filing of an opposition against the foreign patent constitutes “another special reason not to accept the application”. To the best of my knowledge that phrase has never been clearly defined, and maybe the Office feels it’s free to shoehorn this situation into that rubric.

Whatever the ILPTO’s rationale for the November revision of the Circular, I don’t think anyone would contest that up until the actual publication under §26, viz. until the “acceptance” of the application, the Commissioner has the authority to rescind the notice of allowance (whether allowed under §17(c) or under regular examination) if there is justified cause to do so, even though the statute doesn’t explicitly provide for this.  If it becomes clear, for example, that the claims in fact recite something that defies the laws of physics, that might constitute justified cause to rescind the allowance and return the application to ex parte examination.  During the re-opened prosecution of the application, the applicant will be able to present its case and, if necessary, freely amend the claims.

Having said that, I’m not convinced that the fact per se of the filing of an opposition to a corresponding patent upon which a §17(c) request was based constitutes justified cause to withdraw an allowance.  The opposition might be frivolous. More importantly, if there are third parties that wish to oppose the grant of the patent in Israel, they have a three month window in which to do so following “acceptance” of the application. And they can file for cancellation of the patent after grant, and of course can avail themselves of an invalidity defense in infringement proceedings. If the Commissioner were to examine the prior art cited in the foreign opposition, and on that basis determine that there’s a genuine question of the allowability of one or more claims, that might justify withdrawing the allowance and reverting to examination.  But not the mere filing per se of the opposition.

If that’s the case for withdrawal of an allowance before §26 publication and “acceptance”, it’s all the more so with regard to the period of time after that: the statute simply does not authorize the Commissioner to take any steps against a patent application once that publication occurs, unless a third party files an opposition. 

[The fact that the period after “acceptance” is different than the period before “acceptance” is reflected in the in fact that, prior to “acceptance”, the applicant can amend its application pretty much as it sees fit, even introducing new matter (albeit usually being required to post-date that new matter, per §23), whereas after “acceptance”, amendment to the application is quite circumscribed, permitted on per §29 and §65.] 

And yet, on January 19 – less than two months after aforesaid amendment of Circular 035/2017, the Commissioner published yet another proposed change to that very same newly-introduced sentence of that same Circular, according to which applications which are allowed under §17(c) will be returned to regular examination if after “acceptance” but prior to the grant of the patent, notice is filed with the ILPTO that opposition or cancellation proceedings have commenced against the foreign patent on which the §17(c) is based. 

It seems a little odd that this proposed change is coming so soon on the heels of the previous change.  Be that as it may, I can think of reasons why the ILPTO might want to institute such practice, but the statute simply doesn’t allow it: as explained above, once the application is “accepted”, the patent grants automatically after three months if no opposition is filed.  Nothing in §17(e) abrogates that, or gives the Commissioner the power to withdraw the “acceptance”.   

If the ILPTO wants to change the policy concerning §17(c) practice, then it needs seek that change via amendment of the statute, not by asserting it has powers that it doesn’t have. 

Comments on the draft change to the Circular are due at that ILPTO by February 2 ([email protected]).

Israel PTO and EPO Extend Patent Prosecution Highway Program

The Israel PTO announced last week that its PPH and PCT-PPH agreements with the European Patent Office, which were due to expire in January 2021, have been extended indefinitely.  These programs allow applicants to expedite the examination of an application in one of these jurisdictions based on a positive examination report or PCT Written Opinion prepared in the other jurisdiction, without the payment of an additional fee to the relevant patent office.  Download PPH & PCT-PPH ilpto epo 2020-10-29

The ILPTO has PPH and PCT-PPH agreements with the USA, EPO, Japan, and several other countries, as explained here. 

Sadly, as explained in a previous blog post, PPH can be used to expedite examination, but the ILPTO has in recent years taken the (unnecessarily) stringent view that allowance of claims in Israel under section 17(c) of the statute may only be obtain on the basis of granted claims in an approved foreign jurisdiction, not on the basis of an allowance or an indication in a PCT WOISA that claims are allowable.

Hyper-Textualism at the Israel PTO: Parallel National Phase Applications Aren't "Corresponding Applications"

Two years ago, I blogged about how something that started out as a good idea of the Israel PTO was eventually written into the statute and then interpreted by the ILPTO in too limiting a way.  As I wrote then:

“The story begins in the late 1980’s, when the Israel PTO had a significant backlog in the examination of patent applications.  The Commissioner at the time had (or had suggested to him) a bright idea: why carry the load all by yourselves when there are other patent offices examining related applications? 

"Thus was born Commissioner’s Circular no. 9, which said that if applicants for Israel patents amended their claims to correspond to claims granted in corresponding patents in certain other jurisdictions, notably the USA and the EPO, then the ILPTO would view those claims as meeting local criteria for novelty, inventive step, unity of invention, sufficiency of description and clarity of the claims.

"The idea proved to be so good that in 1995, during a major round of statutory amendments, this policy was written into the statute as §17(c).”

The previous blog post pointed out that although the ILPTO was once liberal about allowing applicants to change method of treatment claims to Swiss-style claims and still allow the application under 17(c), it subsequently changed its view, allowing the statute to destroy the very flexibility and creativity that gave rise to the statutory amendment in the first place.

Today I heard about another case in which the ILPTO is being short-sighted about the application of §17(c).  This time, it has to do with the interpretation of what constitutes a “corresponding patent”.

The relevant wording of §17(c) says, in English translation (adapted by me from the WIPO Lex text, which contained a mistake), that one of the following must be true of the foreign patent and the Israel patent application:

* * *

(a) priority was lawfully claimed for the patent application in Israel under section 10 [Paris Convention priority – DJF], from the corresponding application;

(b) priority was claimed from the patent application in Israel for the corresponding application under the Law applicable thereto;

(c) priority was lawfully claimed for the patent application in Israel from another patent application submitted in a Member State, and such application is the basis for a priority claim for the corresponding application under the Law applicable thereto  * * *

Simply put, the Israel application and the foreign patent must share a priority claim: either the IL application claims priority from the foreign patent, or vice versa, or the two of them claim priority from a common third application.  Do you notice something missing from that?

Suppose one files a PCT application directly as the first filing, then enters the national phase in Israel and another jurisdiction that can in principle serve as a basis for a §17(c) request, say, Japan.  The ILPTO evidently has taken the view that in that situation, if the JP case is granted, it can’t serve as a basis for the §17(c) request, because, strictly speaking, the IL and JP cases don’t share a Paris Convention priority claim, since no such claim was made in the PCT application.

That position is conceptually absurd.  The whole point of §17(c) practice was to enable allowance in Israel based on an allowance abroad, provided there is a nexus between the Israel and foreign application.  There can be no greater nexus than if the two cases are both national phase filings of the same PCT application.  The fact that the PCT application does not itself claim Paris Convention priority should be of no moment, and should not preclude examination of the Israel case under §17(c).  But someone at the ILPTO has evidently decided to be hyper-textual about this, and has told an applicant in this situation that their §17(c) request is a no-go.

This isn’t just a pity in that pre-1995 (or even up around 2008 or so), the ILPTO wouldn’t have batted an eyelash about this, and would have realized that the situation I just described deserves the same treatment as if the two applications shared a common Paris Convention priority claim.  It’s that the ILPTO could be more cooperative about this if it wanted to be. 

For example, it appears that in order to implement provisional application filings in Israel, the ILPTO plans to take a slightly liberal view of what §11 of the statute says, and to split the filing fee into two parts.  (In a previous post, I recommended splitting the filing fee in a different context, and I’ll discuss the ILPTO’s proposal regarding provisionals in a subsequent post.)  Because §11 delegates the fee authority to the ILPTO, the ILPTO will be able to implement provisional filings, without necessitating a change in the statute, but merely a change in the Rules, which are easier to amend.  But the whole thing is still predicated on a particular reading of the statute. 

In the case of a first-filed PCT application, the ILPTO could say that the two applications DO claim a common priority, viz. the PCT filing itself.  Or, it could do an updated version of the old Circular no. 9, for example saying that it regards an application in the situation described above as fulfilling the requirements of §17 and §18 of the statute.  Its decision to be hyper-textual and deny eligibility for examination per §17(c) evinces a particular sort of small-mindedness, the basis of which is difficult to fathom.

Examination under Section 17(c): Be Careful What Statutes You Wish For

This is a story about how a good idea that originated in the Israel PTO tripped over its own shoelaces (in a manner of speaking) when it was eventually enacted into law.

The story begins in the late 1980’s, when the Israel PTO had a significant backlog in the examination of patent applications.  The Commissioner at the time had (or had suggested to him) a bright idea: why carry the load all by yourselves when there are other patent offices examining related applications? 

Thus was born Commissioner’s Circular no. 9, which said that if applicants for Israel patents amended their claims to correspond to claims granted in corresponding patents in certain other jurisdictions, notably the USA and the EPO, then the ILPTO would view those claims as meeting local criteria for novelty, inventive step, unity of invention, sufficiency of description and clarity of the claims.

The idea proved to be so good that in 1995, during major round of statutory amendments, this policy was written into the statute as §17(c). 

Neither Circular no. 9, nor §17(c) after it, solved all of an applicant’s problems, however.  In particular, section 7 of the Israel statute forbids the patenting of methods of treatment of the human body.  So those granted US claims reciting “A method of treating X, comprising administering to a patient in need thereof drug Y…” can’t be granted in Israel.

Under Circular no. 9, the ILPTO was willing to allow applicants to convert such method of treatment claims to “Swiss” style claims or purpose-directed product claims, and to proceed in accordance with the Circular.  This was true as well for many years under §17(c). 

More recently, however – perhaps as a result of the ILPTO’s effort to draft written examination guidelines, perhaps due to changes over time in senior ILPTO personnel, perhaps owing to both – the ILPTO has taken a stricter view of the application of §17(c) with respect to method of treatment claims.  In particular, sub-section 4 of §17(c) states that one of the requirements is that:

“(4) the claim or claims in the application are identical to the claims in the parallel patent, but the application can include fewer claims that those in the parallel patent;”

In recent years, the ILPTO has taken this literally, and will not allow applicants seeking to invoke §17(c) to amend method of treatment claims to “Swiss” or purpose-directed product format.  If such method of treatment claims appear alongside claims on compounds and/or pharmaceutical compositions, the method of treatment claims will need to be cancelled if §17(c) is to be used, and a divisional with the claims rewritten in an acceptable format filed.  The divisional will not be able to benefit from §17(c). 

When this practice was initiated by the ILPTO, the Office maintained flexibility in the application of the practice with respect to method of treatment claims – Circular no. 9 was simply a way for the Office to say, “We’ll accept the word of the USPTO or the EPO regarding these claims and this application if you, the applicant, want us to. To the extent this may call the validity of the patent into question, caveat emptor.”  And that was the way the statutory provisions were viewed by the PTO in the years after their enactment, likely because the same Commissioner who issued Circular no. 9 was in office for several years after §17(c) was enacted. 

It’s ironic that the ILPTO now views itself as constrained by a statutory provision that was intended to enshrine in the statute the practice that the ILPTO itself initiated and applied with a greater measure of flexibility than is presently the case.

So when making statutory amendments, as in many other things, be careful what you wish for.

A Few Words on Modified Examination in Israel Under Section 17(c) of the Statute

We’ve blogged before about modified examination in Israel under section 17(c) of the statute. Per §17(c), if a corresponding patent is granted in certain other jurisdictions, one can gain a quick allowance in Israel by amending the claims so that they’re identical to the ones granted elsewhere, and requesting allowance under §17(c).  This provision was added to the statute in 1995, following several years as policy adopted by the ILPTO to reduce its backlog. 

Usually, implementation of §17(c) is straightforward: the Israel application and the foreign patent share all priority claims in common.  But from time to time, the question arises, what constitutes a corresponding patent (or in the words of the statute, a parallel patent/application)?  Here are the relevant parts of the statute, translated into English:

17. * * * (c) An application meeting the following conditions shall be deemed to comply with sections 4, 5, 8, 12 and 13 of the statute [novelty, inventiveness, unity of invention, sufficiency of disclosure, clear and supported claims – DJF] –

(1) the applicant filed a patent application for the same invention (herein – “parallel application”) and was granted the patent, in a country whose name the Commissioner has officially published (herein – “parallel patent”), and one of the following conditions is met:

(a) a legally valid priority claim was made in Israel on the basis of the parallel application, per section 10 of the statute;

(b) a legally valid priority claim was made for the parallel application from the Israel patent application;

(c) a legally valid priority claim for the Israel application was made from an application filed in a WTO country, and from that WTO-country application a legally proper priority claim was made for the parallel application; * * *

§17(c)(1)(a) and §17(c)(1)(b) are easy enough to understand: the IL application claims priority directly from the parallel application, or vice versa. Probably the most common situation, however, is that of §17(c)(1)(c), where the IL application and the parallel patent share a common priority claim. For example, the Applicant files a US provisional, then files a PCT claiming priority from the provisional, then enters the national phase in Israel and the USA (or Europe).  The US (or EPO) patent is granted.  Since both the IL and US (or EPO) cases claim priority from a common predecessor application (the provisional) filed in a WTO country (the USA), the condition of §17(c)(1)(c) is met.  So if the claims in Israel are amended to be identical to those of the US (or EPO) patent, allowance under §17(c) can be requested. 

Now let’s complicate things a bit.  Suppose that there are two US provisionals, and the PCT claims priority from both provisionals, as do the national phase applications in the EPO and in Israel.  Does this make a difference?  As a practical matter, no: the ILPTO will normally grant the §17(c) request on the basis of the granted EP.  And this seems eminently reasonable: since the two cases both derived from the same PCT, and share the same priority claims, they should be regarded as corresponding (or “parallel”) applications. 

Nevertheless, it’s worth noting that nothing in §17(c)(1)(c) says that all the priority claims between the parallel application and the Israel application must be held in common. It merely says that there needs to be a common priority claim.  Let’s suppose, therefore that in the case of the two provisionals serving as priority applications, the parallel patent is a US patent that was filed as a national phase of the PCT. But let’s also suppose that, for some reason, in the US the applicant decided to forego the priority/benefit claim to the earlier provisional.  Should that change the calculus for §17(c) in Israel?  I would think not, since it means the US application was actually exposed to a larger group of prior publications than if the claim to the earlier provisional had been maintained, and, strictly speaking, the condition of §17(c)(1)(c) has been fulfilled.  Would it matter if it was the second provisional the benefit of which was waived in the US national phase case? Again, presumably not, since here too the US application would have potentially subject to a larger group of prior publications than if the claim to the later provisional had been maintained, and, strictly speaking, the condition of §17(c)(1)(c) has been fulfilled – there’s a common priority claim between the US and Israel cases. 

But now let’s suppose that it’s the Israel application that forswears one of the priority claims. Now what? Logic would suggest that, in the absence of one of the common priority claims, it’s now the Israel application that’s potentially exposed to a larger group of prior publications, and therefore the grant of a US (or EP) patent that includes two priority claims cannot presumptively mean that the IL claims are also allowable.  But that’s not what the statute actually says: all that’s required, per the statute, is one common, valid priority claim.

Another question arises with respect to the situation where both §17(c)(1)(a) and §17(c)(1)(c) are applicable.  Suppose that a US provisional is filed, then six months later a US non-provisional is filed claiming the benefit of the provisional, and within a year of the provisional filing an IL application is filed claiming priority from both.  The US case is granted.  Whither the IL case under §17(c)?  The two applications share a common priority per §17(c)(1)(c) (viz., the provisional), and the IL case claims priority directly from the US case that’s now been granted, in accordance with 17(c)(1)(a). 

The ILPTO’s view, as set forth in its examination guidelines, is that it’s not necessary for the Israel application and the foreign patent to share ALL priority claims, but the claimed invention must be supported by the disclosure of the common priority document.   So in the situation where both §17(c)(1)(a) and §17(c)(1)(c) are applicable , the ILPTO will probably grant the §17(c) request.  Although I suppose that if one wishes to split hairs, it could be argued that, by the letter of the statute, this wouldn’t be an acceptable application of §17(c)…but I’m not going to explain here why that might be so. 

 

One can imagine even more complicated fact patterns in which questions about the applicability of §17(c) may arise. Suppose, for example, that Applicant files provisional 1, then a PCT claiming priority from that provisional, then a US national phase application from the PCT, then a second provisional, then both a US CIP that claims the benefit of everything that went before it, and an Israel application that claims priority from prov 2 and the CIP.  The CIP is granted, and the claims in Israel are amended to correspond to those of the granted CIP. The chart below shows the relationships.  The question is, Can §17(c) be invoked here?

USA	P1	→	PCT	→	US NP	→	→	CIP
						P2	→	CIP
						↓		↓
IL						priority claimed		priority claimed

Seems to me that the answer is a definite “Maybe” - it depends on the particular facts.  But the good news is that, per the ILPTO’s examination guidelines, the situation does not per se preclude §17(c) treatment.

Israel PTO electronic filing system: "Don't Give Us Your Prior Art Until We've Asked For It"!

I feel like every time I use the ILPTO's electronic filing system, I discover another bug...and another potential work-around. The latest? Read on. 

We've got a national phase application that's been sitting at the ILPTO for several years. They still haven't published it under 16A (18-month publication or soon-thereafter-for-national-phase-filings). Needless to say, they haven't issued a pre-examination (S18) letter either, in which they ask for submission of an IDS-like document and some other information.

But corresponding patents have been issued in several countries, including some from which we can do a 17(c) request (amend the claims in Israel to correspond to the claims granted elsewhere and piggyback on those). So I went into the system to see if we could first file a S18 response.  As expected, the answer is, "NO. YOU CAN'T FILE A S18 RESPONSE BECAUSE WE HAVEN'T SENT YOU A S18 LETTER, YOU NINNY!"  Well, it wasn't quite in those words, but you get the idea.  The system's fascist tendencies preclude us from filing a S18 response until we have been summoned to file such a response.  Even though we're ready to go with it.

Realizing that "no" is not the right answer, on a hunch I poked around and found that we CAN file a supplemental S18 response (השלמת תשובה לסעיף 18).

Even though the system won't let us file, and therefore we haven't filed, an initial S18 response.

As the late Anna Russell would say, "I'm not making this up, you know!"

At least the system will let us file the 17(c) request.

Patent Eligibility of Computer-Implemented Inventions at the ILPTO

Earlier today, the U.S. Supreme Court heard oral arguments in Alice Corporation v CLS Bank.  The question before the court is whether or not an otherwise patent-eligible invention becomes patent-ineligible if the claim recites that the invention is implemented on a computer.  There's plenty of coverage of that case elsewhere.  Of interest to applicants in Israel is a recent decision of the Israel Commissioner of patents in which this same question was addressed.

The case concerned Israel Patent Application No. 190125, the national phase of PCT/IL2006/000921 (WO 2007/03198).  (Theoretically, the Israel application has been published online and its file history visible over the internet, but the ILPTO still hasn't gotten around to posting any of the documents online.)  After several rounds of prosecution during which the examiner refused to allow the application, the applicant amended the claims to match those of the corresponding US 8199935, and asked that the application be allowed pursuant to Section 17(c) of the statute.  

As has been discussed on this blog before, 17(c) is meant to reduce the ILPTO's workload, by allowing it to piggyback on the work of other offices it respects with regard to novelty, inventive step, sufficiency of disclosure and unity of invention.  17(c) does not overcome patent-eligibility issues, and the statute reserves to the Commissioner and the head examiner the ability to refuse a 17(c) request if the Commissioner finds an undefined "special reason" not to grant the request.   

In the present case, Examiner said that the new claims (below) were not directed to a patent-eligible invention, being directed "entirely to the field of software...and therefore being no more than an abstract application of a pure thought process and/or a business method..."   

1. A system for facilitating access to multiple audio layer items over a communication network comprising:

a network accessible media database, connected to a communication network, which stores multiple audio layer items each having a plurality of separate and different audio layers which are independently accessible; and

at least one subscriber application for receiving a user selection of at least some of said multiple audio layer items, connecting to said media database, and receiving at least some of said plurality of audio layers;

 

wherein said at least one subscriber application having a mixing module which digitally synchronizes and mixes said at least some audio layers to create an audio remix representing a mixed digital audio signal.

16. A subscriber application for facilitating access to multiple audio layer items via a communication network, comprising:

a port for communicating with a media database via a communication network; and

an interface configured to allow a user to select a multiple audio layer item from a plurality of multiple audio layer items each having a plurality of separate and different audio layers and to address separately at least some of said plurality of separate and different audio layers of said selected multiple audio layer item; and

a mixing module configured for digitally synchronizing and mixing at least some of said plurality of audio layers to create locally, in the memory of a computing unit, a remix representing a mixed digital audio signal.

19. A remote sale system for facilitating access to layered media items, said remote sale system comprising:

a connecting device for connecting a plurality of customer computers located at remote sites to a central computer associated with a database of a plurality of layered audio items each comprising a plurality of separate and different audio layers;

a management device for receiving, via a network from a plurality of remote client terminals of a plurality of potential customers, a plurality of requests each to separately access at least one of a plurality of audio layers of a selected layered audio item of said plurality of layered audio items and providing, in response to each said request, a separate access to respective said at least one audio layer of said selected layered audio item, each said audio layer is associated with a price; and

a purchasing device for debiting said plurality of potential customers according to said separate access and respective said price.

23. A system for facilitating access to multiple audio layer items over a communication network comprising:

a network accessible media database, connected to a communication network, which stores a plurality of multiple audio layer items such that each layer of each said audio layer item is independently accessible; and

at least one subscriber application for receiving a user selection of at least one of said multiple audio layer items, connecting to said media database, and receiving said first multiple audio layer item, said at least one subscriber application having a mixing module configured for digitally synchronizing and mixing at least one selected audio layer of said selected multiple audio layer item to create locally an audio remix representing a mixed digital audio signal.

In deciding the matter, the Commissioner first dispensed with the notion that there might be a "special reason" to refuse the 17(c) request.  He reasoned that the claims had been so significantly changed during the course of prosecution that there was no basis to think that the prior art cited against the first two vesions of the claims was still relevant to the newest version sumitted as the basis for the 17(c) request. 

This left open the question of whether or not the claims defined a patent-eligible invention.  The Examiner had asserted that the addition of the recitation "a mixing module" in the claims did not render them patent-eligible, since this was just a standard operation for a computer, and there was no new "reciprocity" between the various components of the system.  The Commissioner disagreed, saying that the end result of the operation of the system was to create a new audio file made partially from layers of the original audio files via a system that facilitated remote access and work.  Thus, he concluded, the final result was achieved through the creation of new reciprocal connections between the physical components of the system, and the invention was patent-eligible.  

While it's good that the Commissioner sided with the view that just because something is done on computer, that doesn't make that something patent-ineligible, he reasoning is still faulty in that at points he mixes what are properly questions of novelty and inventive step into the patent-eligibility analysis.

It's not clear from the Commissioner's decision how this matter came before him in a way that necessitated a written decision, and as noted, none of the documents in this case that might shed light on the matter have been posted online.  Nevertheless, it's clear that  Because only the Commissioner and the head examiner can refuse a 17(c) request, and because 

More Monty Python at the Israel Patent Office (or is it Mel Brooks?)

Israel has three different procedures for expediting the examination of patent applications. 

One of these procedures, section 17(c) of the statute, concerns substantive examination of the application.  Under 17(c), the Commissioner from time to time publishes a list of recognized patent-granting jurisdictions.  The grant of a corresponding patent in one of these recognized jurisdictions can then be used as basis for allowance of the Israel application (fulfilment of the requirements for unity of invention, novelty, inventive step, sufficiency of description, and basis for and clarity of the claims), if the Israel claims are amended to be substantially identical to the foreign claims and the Israel application shares priority with the foreign patent.   This procedure is only useful once substantive examination of an application has begun; the fact that a corresponding foreign patent has been granted can’t be used to induce the ILPTO to actually examine the application.

The upshot of 17(c) practice is that it frees up examiners to spend their time examining other cases, without duplicating the efforts of examiners in other countries.

In this context, it’s worth mentioning that during his tenure from 2003 through 2010, the previous Commissioner expanded 17(c) practice in two ways.  First, rather than making applicants wait for the ministerial act of the granting of the foreign patent, he deemed a notice of allowance sufficient to invoke 17(c).  Second, he stated that a positive PCT examination report could be used to establish the novelty, inventive step and unity of invention of the claims of an Israel national phase application (or an Israel application which was later filed as the PCT that received the positive examination report).   In this way, he further reduced the ILPTO’s workload.

The other two procedures are not directed to substantive examination but to the order of examination, and enable an applicant to have its application moved to the front of the examination queue.   The first of these is the patent prosecution highway.  Israel has bilateral PPH agreements with the USA, Denmark, Japan, Finland and Canada, and PPH-PCT agreements with all these countries except Denmark.  (And I noted yesterday, in a display of multiple personality disorder it also has a PPH-PCT agreement with itself.  Really, I can’t make this stuff up.)  Per the PPH, an applicant can ask to have his application examined out of turn based on a positive PCT WOISA or IPRP from a country with which Israel has a PCT-PPH agreement.

The second procedure for getting one’s application moved to the front of the line is similar to the old “petition to make special” practice in the USA: you ask the ILPTO to move your application to the front of the line.  Historically this was set out in Rule 35, which stated that an applicant could ask that his patent application be examined immediately on the basis of “reasonable grounds”; these were typically the advanced age of the inventor, imminent launch of a product to be protected by the patent, or concern about possible infringement. 

In July 2012 a new statutory section, 19A, was introduced, in which subsection (a) codified, clarified and replaced the prior Rule 35 practice.  Section 19A(a) provides six different reasons one can give for advancing the examination of one’s patent application, but it is the second one listed that is of interest here: “A notice of the Commissioner regarding the possibility of advancing the examination on the basis of examination of a corresponding application under the conditions and in the countries indicated by the Commissioner”.[1]

To date, the Commissioner hasn’t published a list of countries under 19A(a)(2).  However, in a notice published at the beginning of October, the Commissioner said that a PCT-PPH request would be viewed as a request under 19A(a)(2) to begin the examination of a national phase application in Israel.  It’s not clear why the need was felt to explicitly tie PCT-PPH to the new statutory provision.  The Commissioner could have let things stand as they were. 

But at least the October announcement does no harm to the PCT-PPH program.  Where the October announcement took a bizarre turn was when it concluded with the statement that the Commissioner was rescinding the policy of allowing partial substantive examination on the basis of a positive PCT work product, which was published in circular MN 71 of the previous Commissioner.  That’s a non-sequitur: PCT-PPH and 19A(a) concern the order of examination, not substantive examination – a fact the Commissioner himself pointed out in the October announcement!  Why rescind the existing policy regarding partial substantive examination, and force examiners to do examination work concerning industrial applicability, novelty, inventive step and unity of invention, when someone in another respected patent office has already done so?  Unfortunately, no reason was given for this change in policy, which seems to be a case of shooting oneself in the foot. 

If the Commissioner was already going to make an announcement, he could have taken the opportunity to publish a comprehensive list of countries that can be used to invoke the 19A(a) procedure, and on that list he could have included the ISAs of the countries with which Israel has PCT-PPH agreements.  Or even more easily: he could have just said that any country already recognized for purposes of 17(c) substantive examination (including its PCT ISA or IPEA, if it has one) will henceforth also be recognized for purposes of 19A(a).  Which would allow applicants with patents granted in certain other countries to quickly gain allowance of their applications here, and get more pending applications out of the examination queue more quickly.

I’m not sure if the rescinding of the is more reminiscent of the Monty Python sketch in which Graham Chapman wrestles himself and wins in a knock-out, or of Cleavon Little kidnapping himself in Blazing Saddles.   It’s certainly a step in the wrong direction.

---

[1]  The other five grounds for advancing the case out of turn are (1) the advanced aged or poor health of the inventor; (3) knowledge or a well-founded suspicion of infringement of a claim of the application; (4) unreasonable delay in the commencement of examination of the application (which may be determined inter alia by comparison to the time from filing to first office action for applications in the same class); (5) the public interest; and (6) special reasons justifying such examination out of turn.

Monkey See, Monkey Do - Will Israel Do Something Dumb Just Because the US Supreme Court Did? (Or, Wither DNA Patents In Israel in the Wake of Myriad?)

Lots of verbiage was spent in the run-up to the U.S. Supreme Court’s Myriad Genetics decision last week, lots has already been spent since the decision, and lots more will be spent in the coming weeks.  To call the decision “reasoned” or “logical” is kind of like Vezzini’s use of the word “inconceivable” in the Princess Bride. 

But my intent here isn’t to rant on the SCOTUS, although I may do that in a separate post.  Rather, one of the things that interests me is the potential impact of the Myriad decision on patents in Israel, in two respects.

The first thing I wonder about is its impact on gene patents generally.  Hitherto, Israel has subscribed to the notion that isolated DNA is not a product of nature and is therefore patent-eligible.  One wonders to what extent, if any, the ILPTO or courts here will be influenced by the SCOTUS decision, and if Israel will reverse course with respect to isolated DNA.  

If the patent system here were to change tack, the mechanism by which it would have to do so would need to be slightly different than that enunciated so obfuscatorily by SCOTUS.  That’s because there is no patent-eligibility bar to products of nature per se (except for plants and animals, which are barred from patent eligibility under section 7 on moral grounds).  Rather, section 3 of the Israel statute, which defines patentable (and by extension, patent-eligible) inventions, simply says “An invention, whether a product or process in any technical field, which is new, useful, susceptible of industrial use and inventive – is a patentable invention.”  Israel law thus generally denies patentability to products of nature on lack of novelty grounds.   And asserting that isolated DNA already exists in nature is something I don’t foresee the examining corps at the ILPTO doing – as scientists they’re too sophisticated to be duped by PUBPAT-type hand-waving into buying into that.

On a more immediate, practical level, I wonder about the impact of this decision on already-granted gene patents in Israel that were granted under the section 17(c) procedure, on the basis of a grant of a corresponding patent in the USA.  17(c) is a real work-saver for the ILPTO, since it allows one to piggyback the Israel application on an allowed corresponding application in the USA, the EPO, the JPO, and certain other jurisdictions.  But what happens when that corresponding foreign patent is invalidated – and not on substantive lack of novelty or obviousness grounds, but patent-eligibility grounds?  The statute is silent on that point.  It does include sections 17(d) and 17(e), which place some limits on the use of 17(c), but only in the context of still-pending applications:

17(d):    The Commissioner, as well as the Chief Examiner and his Deputy, are at liberty not to accept the application [for which allowance under 17(c) has been sought], if they determined on the basis of material at their disposal or which was brought to their attention during the course of examination, that the application does not fulfill the requirements detailed in subsection (c) [viz. 17(c)] or if there is another special reason not to accept the application.

17(e): If proceedings for the cancellation of the corresponding foreign patent or opposing the grant of the corresponding foreign patent are ongoing, the applicant shall notify the Commissioner, no later than the date of the grant of the patent in Israel.

These sections are somewhat murky anyway – as I’ve mentioned in earlier posts, what constitutes “special circumstances” in 17(d), and the effect of reporting under 17(e) as well the penalty for non-reporting under 17(e), are unclear – and prima facie they have no effect on issued patents.  17(e), for example, only imposes a requirement to report proceedings against the corresponding foreign patent up until the grant of the Israel patent, not after grant in Israel.  On the other hand, logic dictates that if the corresponding patent on which a 17(c) request was granted was itself invalidated on substantive grounds, at the very least the Israel court or the ILPTO during cancellation proceedings would need to revisit the question of substantive patentability of the Israel patent.

Regarding 17(d), it’s worth mentioning that the ILPTO’s examination guidelines (last updated December 9, 2012) state that if the corresponding foreign application is from a country that has a grace period – e.g. the USA prior to the Asinine Inventorship Assault – then the Israel examiner must look to see if the invention was published during the grace period, since such publication would not have been cited abroad but is citable in Israel; and if such publication took place, the Office applies 17(d) to refuse the 17(c) request and raise a novelty and/or inventive step rejection.  But no word on what might constitute “another special reason” to refuse the 17(c) request.  Would withdrawal from issue by the USPTO following the Myriad decision constitute such a “special reason”? 

As to 17(e), the statute doesn’t say what happens to the Israel application if opposition or cancellation proceedings against the foreign patent are reported, but the examination guidelines instruct examiners to look for such proceedings (even though it is the applicant’s duty to report such) and if such proceedings are found, to move the application from 17(c) examination to regular examination and examine the application for novelty, inventive step etc.    

The Myriad decision effectively means that all claims in US patents to DNA sequences isolated from natural sources are invalid and thus unenforceable.  But in the Israel context, two things should be noted.  First, those US claims were examined and found to be novel and non-obvious.  If one is willing to accept – as Israel law presently does – that isolated DNA, as opposed to cellular DNA, is not found in nature, then under Israel law that isolated DNA needs to be examined for novelty (did someone else isolate it first?) and inventive step, which in the case of 17(c)-allowed Israel patents already occurred abroad.  So the effective invalidation of the US patent upon which an isolated DNA claim in Israel was allowed should not impugn the 17(c) allowance retroactively. 

Second, it should be stressed that the US claims are effectively invalidated, but not formally invalidated.  As a formal matter, by statute those US claims are still presumed valid until challenged.  Following Myriad, we won’t be seeing attempts to enforce those claims, because that would open the door to such challenges being made by defendants, and such challenges are now trivial to make; but technically every one of those claims is valid until a court points to a specific claim and says it’s not valid because it’s directed to patent-ineligible subject matter.  In which case there’s even less basis for asserting the claims in Israel should be shot down because of the Myriad decision, since at present there are no isolated DNA claims granted under 17(c) in Israel whose corresponding US claims have been invalidated per Myriad.  

It's Nice to Be Appreciated

On October 31, it was announced that the Israel PTO and the Canadian Intellectual Property Office (CIPO) had entered into a pilot PPH program.  That's probably not so relevant for Canadian applicants filing in Israel: for years applicants have been able to gain allowance of their Israeli applications on the basis of the allowance of a corresponding case in Canada, in accordance with Section 17(c) of the Israel patents statute.  While that's not quite the same as having an application jump to the front of the line, which is what the PPH does, it's almost as good, since a 17(c) request can reduce the period of substantive examination in Isarel to almost nothing.  

For Israelis filing in Canada, though, the PPH procedure may be worthwhile.  If your first filing worldwide is in Israel, the ILPTO will examine your application quickly, so you can get your case allowed early; and since you can delay national phase entry in Canada to 42 months, it's entirely conceivable that an Israeli applicant could file in Canada with the corresponding Israel patent application having been allowed.

What I found intriguing was that I only learned of this pilot PPH program via a Canadian associate.  It seems that this news was posted clearly on the front page of CIPO's website on October 31 (see snapshot taken today).   

The ILPTO's website, on the other hand, doesn't even list the new PPH program under its "news" headings: the most recent item on the "news" banner on the front page is from October 28 and concerns changes in US patent law:

When one clicks on the "news" tab on the front page, a list having a most recent entry of October 17 is what appears.  

Playing with the search engine on the website, I eventually found this announcement regarding the new pilot PPH program.

It's nice to know that the Canadians appreciate Israel, even if the official Israeli response amounts to, "Take off, eh!"