Frank is an Israeli citizen who has a science degree from an Israeli university. He’s trained for two years in a patent firm, and he wants to take the Israel patent practitioner qualifying exams and has paid the fee to take them, but the ILPTO won’t let him take the exams. Why not?
(a) Because the firm where he works refuses to provide a letter attesting to the fact that he trained there for two years.
(b) Because the ILPTO asked for samples of work he did and he refused to provide such.
(c) Because the previous commissioner introduced a new requirement regarding trainees that has no basis in law, namely that the trainer must report to the ILPTO regarding the commencement of training within one month thereof, and the firm where the person works failed to comply with this extra-legal requirement.
For readers who’ve followed this blog for a while, the answer is clear: it’s (c). But some explanation is in order.
As in the USA, to practice patent cases before the Israel PTO, one must (a) have a technical background, i.e. a university degree or the equivalent and (b) pass a set of exams.** Unlike in the USA, but as is the case for lawyers in Canada, England and elsewhere, one must also undergo a two year apprenticeship period. The statutory and regulatory framework is set forth in sections 142-145 of the statute and regulations 124-144 of the regulations (the latter being secondary legislation which is promulgated by the Justice Minister, with the approval of the relevant parliamentary committee).
The two-year training period is set forth in section 142(4) of the statute; regulation 136 says that proof of this service shall be provided in the way of certificate from the trainer that sets forth the type of work the trainee did, the number of hours worked per week, and additional work done by the trainee, if there was any. This regulation also empowers the Commissioner to require up to five examples of the trainee’s work in different areas of IP practice. So in principle, answers (a) and (b) above are correct answers. But that’s not what happened here: Frank’s firm provided such a letter, and the ILPTO didn’t ask for samples (and if it had, Frank would have complied).
No, Frank’s dilemma is a direct result of the previous Israel Patents Commissioner’s inability to usurp his urge toward the ultra vires. Although regulation 136 says that the number of hours worked per week must be stated, nowhere do the statute or regulations prescribe a minimum number of hours that must be worked. Desiring to bring clarity to this situation – and to end the hypothetical potential for abuse, whereby, for example, someone could work one day a week as a patent practitioner trainee over the course of two years, an abuse which I’m not aware has actually ever occurred – the previous Commissioner established a new practice, in accordance with which:
(1) the practitioner training the trainee must notify the ILPTO of the commencement of the training period within one month thereof, otherwise the ILPTO will not recognize the commencement of the training period until receiving actual notice from the practitioner;
(2) the trainee must serve the equivalent of two years of full-time employment, and
(3) anyone wishing to sit for the examinations must have completed at least one year of training.
There is no legal basis for at least two of these requirements, but as we know, the previous Commissioner had an uncanny ability to regard legal strictures as mere suggestions, to be followed only by mere mortals; this is but a minor example of that ability.
Let’s start with the easiest one, the second requirement. It’s sensible to want to ensure that patent practitioner trainees have trained full-time and not part-time. And given that, maybe one could make a statutory construction argument to support this requirement, using the “purposive construction” conceit that Aaron Barak brought into vogue in Israeli jurisprudence: since the purpose of this section of the statute is to ensure that licensed practitioners have a minimum level of competence, the “two years” of training referred to in 142(4) must necessarily mean the equivalent of two years of full-time employment. The requirement of regulation 136 to report the number of hours worked per week, it can be argued, reflects this understanding of the statute, at an essentially contemporaneous point in time (the regulations were made about a year after the statue was enacted): the point is to ensure that the person has trained for the equivalent of two years of full-time work. So requirement (2) may be defensible.
The third requirement, however, has no basis in the statute or the regulations, which do not condition sitting for the exam on a minimum training period prior thereto. To the contrary, the exams are mentioned as a separate, independent requirement, the express purpose of which “is to prove that [the candidate] has sufficient knowledge in the laws of patents, designs, and trademarks in Israel and abroad and in other relevant laws, as will be established [in regulations to be promulgated later], and that has command of Hebrew and another language necessary for his work, as will be established.” So while it may be more prudent to put off the exams until after one has gained some experience, the statute enables anyone who desires to do so to sit for the exams.
The extra-legal one-year-before-exam requirement is even more absurd considering that the ILPTO calculates the one-year on the basis of the pre-training notification requirement, which itself is the most difficult of these three requirements. The notification requirement is legally problematic because it imposes an additional condition not set forth in the statute or regulations. Regulation 136 doesn’t say anything about notifying the ILPTO before the start of training – it just says that the trainer must provide a certificate attesting to what the trainee did and, by implication, when he did it. Given that the trainer may himself be subject to discipline if he lies to the ILPTO, it’s unlikely that a practitioner is going to lie about having trained someone he didn’t train.
To be sure, a practitioner’s providing a statement to the ILPTO about the commencement of training can help protect a trainee, for example if during the training period the two have a falling out and the practitioner later refuses to confirm the length of the trainee’s employment or what he did (and unlike the hypothetical abuse that concerned the ex-Commish, I am aware of these kinds of cases having occurred). But the submission of such a pre-training statement should be left as something voluntary. That’s because – and here we come to the practical difficulty with this requirement – the imposition of the extra-legal requirement to report the start of training can come back to adversely affect the blameless, as in Frank’s case. Frank is being penalized because the trainer didn’t notify the ILPTO of start of the training period. Assuming the practitioner-trainer had good intentions toward the trainee, it’s a shanda that the ILPTO now penalizes the trainee for the actions of a third party, actions over which the trainee had no control.
The ILPTO should follow regulation 136 as set forth: a letter from the practitioner attesting to the trainee’s training should be all that is necessary. Where the ILPTO would be wise to change things is to allow trainees themselves to provide proof of their employment and work on patent matters, such as salary stubs and billing records, in lieu of such a letter, in cases in which practitioners refuse to sign such a letter. A voluntarily-submitted statement from the practitioner at the outset of the training period could also be used to this end, in conjunction with other forms of proof. But the current situation, in which the ILPTO penalizes trainees for the failure of their employer-practitioners to comply with an extra-legal requirement, is unacceptable.
If I were advising Frank, I would tell him to seek an audience with the new Commissioner to convince him that Frank has met the legal requirements to take the exams and to receive his license if he passes those exams. The additional requirements imposed by the Commissioner’s predecessor are ultra vires and go well beyond what is necessary to ensure the integrity of the licensing process. I suspect that if challenged in court, the additional requirements will be struck down on those grounds – and I suspect that the present Commissioner, who worked in both a general commercial law firm as well as an IP litigation boutique before becoming Commissioner, will be sensitive to that and therefore receptive to entreaties to make the ILPTO’s position more reasonable.
Then again, I personally think the whole licensing process is in need of repair – such as getting rid of an oral exam, which is a capricious way to test people. But that’s for a different post.
**Strictly speaking, that statement isn’t correct: by law, anyone who is licensed as a lawyer may also practice patent cases before the ILPTO, notwithstanding their complete lack of technical training, but for the most part lawyers practicing patent cases before the ILPTO restrict their representation in patent cases to oppositions and cancellation actions, not substantive prosecution. However, there is at least one rogue lawyer of which I’m aware who files incredibly poorly written patent applications at the ILPTO. Even more incredibly, after several years of doing this he still has a law license.