As has been discussed here before, the immediate past Commissioner was disposed to making policy in the form of “circular letters”. In some cases he issued such letters on matters about which he actually had jurisdiction, in other cases he overstepped his bounds. It is undisputed, however, that in comparison to his predecessors he was the king of circular letters, averaging about one a month over the course of his tenure.
Aside from the pace of the previous Commissioner’s policy-making, which was enough to give a person whiplash, one of the complaints about the issuance of the circulars was that often they seemed to come out of the blue. Apparently in an effort to make this policy-making process more transparent, in June the current Commissioner issued what can best be termed a “circular on circulars”, in which he explained that henceforth, before issuing new circulars, he will post them on the ILPTO web site and distribute them via the ILPTO’s email distribution list, to enable the solicitation of comments. [I have included a pdf version of this "circular on circulars"; I would have preferred to instead include a hyperlink to this file, but the ILPTO’s website presently does not enable people to view circular letters. Rather, the website includes two lists of circular letters, both in MS Word format, one arranged chronologically and one arranged by subject. Both lists are apparently supposed to include hyperlinks to the circulars themselves, but those hyperlinks don’t work, at least not for me. So to the extent I can presently access circular letters, these are pdf files that were either emailed to me or that for some reason I already had on my hard drive from an earlier time when one actually could download circulars from the ILPTO website.]
On July 25 the Commissioner distributed his first proposed circular for comment, dealing with the issue of extensions during patent prosecution. Prior to 2010, patent applicants had four months to respond to substantive official actions, with the ILPTO granting an additional four months, without show of cause, upon payment of a nominal fee. Extensions beyond those four months could be obtained upon a show of cause, and there was no limit to the total number of extensions available during the course of prosecution of any particular application. In addition, applicants could prospectively request suspension of examination; typically the ILPTO would grant suspensions for up to two years without any difficulty. During the tenure of the previous Commissioner, it became necessary to provide reasons for the suspension, and to pay a fee for each month of suspension.
In 2010, by way of a circular letter, the previous Commissioner changed the rules of the game regarding extensions, by limiting the total number of extensions during substantive prosecution to 15 months’ worth, with no extension for response to any single OA to exceed six months. That policy only applied to applications for which a substantive OA had not yet issued at the time the circular was distributed.
The present Commissioner’s draft circular seems to be an attempt to deal with the matter of extensions in a more comprehensive manner, and differs from the previous Commissioner’s circulars in a number of ways. First, it sets out the relevant statutory provisions under which the Commissioner has discretion to grant extensions in various instances. Second, it relates not only to extensions in response to substantive prosecution, reiterating the policy of the previous Commissioner in that regard, but also seeks to clarify that policy. In particular, it is now proposed that the 6-month maximum/15-month total limit on extensions during substantive prosecution will:
(a) apply retroactively to all pending applications, including those in which substantive OA’s have already issued; extensions already taken in applications in which substantive OA’s have already issued will not count against the 15-month limit;
(b) include all time between a refusal of an application under §21 of the statute and the submission of a request for reconsideration under §21A; and
(c) not include (i) suspensions of prosecution initiated by the ILPTO due to an earlier-filed application that claims part of what is claimed in the suspended application, or (ii) extensions for filing divisional applications in response to findings of disunity; the 6/15 limits will still apply with regard to the filing of a response to the disunity rejection in the parent case (and any other points raised alongside the disunity rejection).
Third, the draft circular attempts to be more thorough than circulars issued heretofore, in that it addresses other types of extensions as well:
1. Extensions for responding to notices under Regulations 30 and 31. For those familiar with U.S. prosecution, those are essentially the Israeli versions of notices to file missing parts. It is proposed to limit applicants to six months of extension beyond the three months established by the regulations).
2. Responses to §18 requests. Although Israel imposes a duty of disclosure on applicants similar to that in the USA, before beginning substantive examination the ILPTO, unlike the USPTO, sends a notice to the applicant under §18 of the statute, asking for a list of relevant art known to the applicant or cited elsewhere. It is proposed to limit the applicant to six months of extension beyond the four months to respond established by the regulations.
3. Suspension of examination. The draft circular would also limit an applicant’s ability to request suspension of examination to the period after (or, presumably, concurrently with) the filing of a response to a §18 notice and prior to the mailing of a first substantive OA; once substantive examination has begun, applicants would not be able to request suspension of examination. According to the draft, the suspension must be of at least 7 months’ duration. Somewhat strangely, the draft circular considers suspension of examination to be a form of extension.
4. Post-allowance publication fee. Applicants would likewise be limited to six months of extensions to pay the publication fee after an application has been allowed.
5. Pre-refusal warning letters: In addition, ILPTO practice regarding missed deadlines would change. Currently, if an applicant doesn’t respond to an OA within the theoretically extended deadline, the ILPTO will send out a letter sometime thereafter, to the effect of “You didn’t respond to the OA of date XXXX within the prescribed time and if you don’t tell us right now that you want to continue prosecution, we’re going to close the file.” A few months (or in some cases many months) later, the ILPTO issues a notice of refusal of the application (sort of akin to a Notice of Abandonment in the U.S.A.). It’s proposed that the ILPTO will instead send a notice at the end of nine months from the issuance of a substantive OA (four months + five extended months), or when 14 of 15 months of extensions have been used up, or, if no extensions remain, when one month remains to respond, in all warning the applicant that if they don’t respond by the 10-month deadline, the application will be deemed refused.
Comments on the draft circular are due today, August 8. In that vein, there are a few aspects of the draft circular I find lacking.
First, setting a hard-and-fast cap on the total number of extensions once substantive prosecution has begun can conceivably create unwarranted hardships in certain circumstances, and would seem to constitute an abrogation of the Commissioner’s discretion in each case. Having clear rules a priori regarding extensions is desirable; but inasmuch as the statute gives the Commissioner discretion to extend various deadlines, the Commissioner should leave open the possibility of further extending those deadlines in individual cases upon show of cause. To give an example, suppose that an applicant is a sole inventor. While preparing a response to an OA, he’s diagnosed with cancer and begins chemotherapy, missing the extended deadline to reply. Such a case would seem to warrant a further extension, but the draft circular doesn’t seem to entertain this possibility.
Second, limiting the total number of extensions during prosecution to 15 months is arbitrary and capricious – why specifically 15 months? Why not 12, or 16, or 24, or 36? It’s quite conceivable that in certain cases, more 15 months’ total extension will be needed. As far as I know, no other major patent office imposes such a restriction on the total number of extensions. The U.S.A., for example, allows a maximum of six months to respond per OA, but there is no formal limit on the total amount of extension time. The same is true of Europe.
Moreover, imposing such a limit is unnecessary, as applicants already have incentive to respond promptly, as any extensions merely eat into their 20-year patent term, and they have no enforceable rights until they actually have a patent in hand. If it’s desired to further encourage prompt responses, this can be addressed via the regulations, by imposing a progressive fee rate scale for extensions, as is done in the U.S.A.: instead of a flat 60-some shekels per month of extension, as is presently the case, the amounts could be geometric, and set higher: 100 shekels for the first month, 200 for the second (i.e. 300 total for two months), 300 for the third (i.e. 600 shekels for three months) and so on. Nothing spurs applicants to respond like the potential for high but avoidable official fees; and to the extent applicants aren’t motivated by this, the ILPTO will be able to increase its revenues. I’m sure the Commissioner can lobby the Justice Minister to amend the regulations accordingly, although if Knesset Member David Rotem is still being a sorehead about ILPTO fees – more on that in a future post – this may not presently be an option.
The 15-month total limit also imposes an additional calculation burden on applicants, their attorneys, and the ILPTO. Whereas an applicant before the USPTO or EPO knows exactly how much time he has to respond and the absolute deadline for response to any particular OA, under the system now being proposed in the draft circular, an applicant will have to keep track of how much extension time was already used up, as will the ILPTO. Not only will that unnecessarily demand the resources of applicants and the ILPTO to track the number of extensions remaining, it’s a situation rife with possibilities for mistakes. Aside from raising my malpractice premium, it’s sure to give rise to contentious situations that will demand the Commissioner’s time to resolve.
And what if, for example, an applicant pays for a 1-month extension but files the response with 29 days left in the month – will that applicant be assessed a full month out of his allotment of 15, or will he still have 14 months and 29 days left? The draft circular doesn’t address that question.
In short, regarding the 15-month limitation on extensions, if it ain’t broke, don’t fix it. The old 4/4 arrangement worked just fine.