Both the United States and Israel publish notices of patent applications that have been allowed by their respective patent offices. In the United States, this happens every Tuesday in the form of the USPTO Gazette. (See the 12:01 Tuesday blog for more info.) In Israel this occurs about once a month. Both publications contain bibliographic data about the allowed applications, including an abstract.
In the USA, the abstract is submitted by the applicant. The requirement to do so is not found in the statute, but in Rule 1.72(b). As anyone who has practiced in the USA knows, anything an applicant says before the USPTO can and will be used against the applicant during subsequent litigation to limit the scope of the claims, literally and/or under the doctrine of equivalents. Hence, notwithstanding the statement in Rule 1.72(b) that “The purpose of the abstract is to enable the United States Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure” – thus implying that the abstract will not be used for purposes of claim construction – the Federal Circuit has on occasion used the abstract in construing the claims. See, e.g. Revolution Eyewear v. Aspex Eyewear, 563 F.3d 1358 (Fed. Cir. 2009). As a result, Irving Kayton and others have urged applicants to be as careful writing their abstracts as in writing the rest of the application, avoiding the use of expressions such as “The invention is” or “An object of the invention is to provide…”.
In Israel, the situation has hitherto been somewhat different. Section 26 of the patent statute states that the Commissioner will publish notice of acceptance of the application, including “what in the Commissioner’s view is a description of the essence of the invention”. Traditionally this has meant that the ILPTO simply takes claim 1 and, if appropriate, a relevant drawing, and publishes this as the “essence of the invention”. Furthermore, section 27 of the statute explicitly states that this description “shall not serve the court or the Commissioner as evidentiary material in interpreting the specification [which includes the claims – DJF] in any judicial proceeding.”
The situation in Israel changed last week, with the issuance of Commissioner’s Circular No. 73. (Commissioner’s Circulars are public notices in which the Commissioner announces new ILPTO administrative policies.) In it, the Commissioner explained that hitherto, it has been the Government Printing Office that typed up the information regarding the “essence of the invention” for publication. Now, with newly-emplaced technology, it is possible to spare the GPO the work of typing in this information itself, as the information can be taken directly from the ILPTO’s own electronic files.
So far, so good. The rub is that in order to take advantage of the new technology, it will be necessary for applicants to supply in electronic form a statement as to what constitutes “the essence of the invention”. Hence, effective as of the publication of Circular No. 73, all applicants, except for applicants whose applications are PCT national phase applications, are required to submit to the ILPTO a statement of the essence of the invention as an .rtf file of no more than 2 megabytes. (In the case of national phase applications, the abstract submitted to as part of the PCT filing will be used.) A request for applicants to provide this statement will included in the Notice of Allowance; according to the Circular, the deadline for submitting the statement of the “essence of the invention” will be the deadline for paying the Issue Fee.
At first blush, the new policy regarding abstracts seems unremarkable. Administratively, the burden imposed upon applicant by the new policy is minor, as by the time most Israel patent applications are allowed, corresponding PCT and/or US applications, including an abstract, have already been filed, and the .rtf file of the abstract can be submitted by email to the ILPTO. And substantively, §27 would appear to insulate applicants from their self-authored abstracts coming back to bite them.
Nevertheless, upon reflection, it would seem that risk-averse applicants would do well to adopt a Kayton-like approach in submitting their abstracts. The expression “essence of the invention”, which appears in §§26-27 of the statute, also appears in §49, which is the section that establishes that the patentee has the right to prevent others from exploiting an invention for which a patent has been granted, “whether in the manner defined in the claims or in a similar manner that includes, in view of what is defined in the claims, the essence of the invention that is the subject of the patent”. Thus, in cases where literal infringement cannot be shown, the patentee needs to demonstrate infringement of “the essence of the invention”, so the applicant would be remiss to put statements into the record that could be used to restrict the scope of this “essence of the invention”.
Furthermore, with respect to the shield provided by §27, it could be argued that a distinction should be made between an abstract provided by the Commissioner versus an abstract provided by the applicant itself. The former does not necessarily reflect the applicant’s views as to what constitutes the “essence of the invention”, and indeed is usually made without thought on the part of the ILPTO by simply reprinting claim 1, and without seeking the applicant’s input. The latter, however surely does reflect the applicant’s view. It could be argued that §27 is only meant to provide a shield for the patentee from the ILPTO’s possibly haphazard, one-sided characterization of “the essence of the invention”, not from the patentee’s own such characterization, and thus §27 does not apply to the applicant’s abstract.
Fortunately, it is relatively easy to write and an abstract that is non-committal, e.g. “There are disclosed compounds of the general formula X; other embodiments are also disclosed”. Even if the ILPTO notice explicitly asks the applicant to provide a statement describing “the essence of the invention”, the applicant could simply respond that “The enclosed text is claim 1 of the application; the applicant does not take a position as to what constitutes ‘the essence of the invention’ ”.
Finally, while it is admirable that the Commissioner is attempting to make ILPTO and GPO operations more efficient, he appears to have exceeded his authority with Circular No. 73. Neither the statute nor the implementing regulations require the applicant to provide an abstract, let alone a description of the “essence of the invention”. In contrast, the statute specifically requires that the Commissioner publish what he considers to be the essence of the invention. There is no statutory basis for the Commissioner to require an applicant to provide him with a statement as to what the applicant considers to be “the essence of the invention”, let alone to publicly declare such a position.
It is unclear what will happen to applicants who fail to provide the required statement in time, even if they timely pay the issue fee. Will publication of the application be delayed until the applicant provides the statement? Will the application be considered abandoned? Will the applicant have to pay an extension fee for the overdue abstract? Since damages for patent infringement in Israel can only be accrue from the time the application is published, such delay or abandonment would deprive the applicant of effective patent term or even patent protection, without any legal basis for such deprivation.