In the previous post I discussed the Commissioner’s newly-announced policy of distributing draft circular letters for comment in general, and a proposed circular dealing with extensions and suspension of examination in particular, and I provided some specific criticisms of a proposed 15-month total limitation on extensions for responses in substantive patent prosecution. This post will focus on another criticism of the specific proposed circular dealing with extensions and suspensions, as well some questions about the comment process.
As mentioned previously, the draft circular proposes to limit an applicant’s ability to suspend examination to the period after the applicant has filed its initial §18 response (sort of like an initial IDS that the ILPTO must ask applicants to file before it may commence substantive examination) and the issuance of a substantive OA. Applicants will have to provide reasons for the suspension, and if the suspension is granted, applicants will have to pay for each month of suspension as if it were an extension.
The proposed policy in essence mimics the policy implemented by the previous Commissioner in his circular no. MN 59, which was issued on February 25, 2008, except that that while the earlier circular limited the applicant’s ability to request suspension until after the §18 was mailed by the ILPTO (before which, in any event, an applicant desiring suspension doesn’t need to do anything, since examination hasn’t begun), the earlier circular did not limit the applicant’s ability to request suspension to the period prior to the first substantive OA.
It’s not clear from the presently proposed circular why an applicant’s ability to request a suspension of examination should be limited to this small window of time, because the proposed circular doesn’t provide any explanation or reasoning with respect to this limitation. For that matter, the proposed circular doesn’t provide reasons for ANY of the policies proposed therein. Contrast that to rulemaking by the USPTO under the Administrative Procedures Act, under which rules proposed by the USPTO are accompanied by explanations of the rationale behind the proposed rules and the goals the rules are intended to meet. In present case, there may be good reasons for not allowing suspension of examination once examination has commenced, but the draft circular is silent as to any such reasons. I’ll return to the lack of reasoning in the draft circular later.
Comparison of the earlier MN 59 and the presently proposed circular raises some questions. For starters, both documents equate suspensions with extensions. But that’s wrong, because a suspension (the Hebrew could also be translated as “delay” or “stay”) may or may not act like an extension. An extension is additional time an applicant buys in order to gain more time to respond to the ILPTO – to file a list of prior art in response to request for such a list, to respond to a substantive rejection of the claims, to pay a publication fee. A suspension, in contrast, is a request that the office stop working on a file. Granted, there are circumstances in which a request for suspension may in effect be a request for a long extension, for example if in response to a substantive OA, an applicant asks that prosecution be suspended so that they can await the outcome of prosecution in the USA. But if no response is due from an applicant, there is no response period to be extended. In that case, a suspension is in effect a courtesy extended by the applicant to the patent office, telling the patent office to concentrate its resources on other applications for the time being.
In the Israel context, the distinction between a suspension and an extension is significant. §164 of the statute authorizes the Commissioner to grant extensions in many circumstances, but the only place where in the statute or regulations where a suspension is mentioned is in section 10 of the second sechedule of the regulations, with regard to the payment of the post-allowance publication fee. There the regulations establish that when requesting a delay in the publication of an application – in other words, an act to be carried out by the ILPTO – an applicant must pay for each month of delay. There is no mention anywhere of suspension before or during substantive prosecution.
Notwithstanding that fact, I don’t think anyone would assert that the Commissioner lacks to the power to suspend the examination of an application in response to an applicant’s request. While applications are normally examined roughly in order of filing, applicants may request that their recently-filed application be brought to the front of the line; by the same token, there’s no logical reason why an applicant shouldn’t be able to request delay of the examination of his application – in other words, to temporarily waive his right to have his application examined right now – or why the Commissioner shouldn’t be able to accede to that request, i.e. to accept the applicant’s temporary waiver of his right to have his application examined.
But with regard to fees, there’s a huge difference between an extension and suspension. The Commissioner is authorized to collect extension fees, but nowhere is he authorized to collect suspension fees (except per section 10 of the second schedule, as noted above). As will hopefully be explained in a future post, I’ve long suspected that the previous Commissioner’s imposition of a fee for suspending examination was merely a ploy to increase ILPTO revenues. That would certainly explain the strange statement in MN 59 that his statutory authority for suspending examination was §164, the section dealing with extensions but not suspensions. By equating suspensions and extensions, the previous Commissioner tried to shoehorn fees for suspension of examination under the extension provisions of §164, thereby giving him fee-collecting authority.
But as experience has taught, just because the previous Commissioner said he had the power to do something didn’t make it so – as illustrated by how he got himself and the ILPTO into hot water by stopping paper publication of the Patents Journal but continuing to collect the publication fee, as reported in an earlier post. There’s still an ongoing class action suit against the ILPTO as a result of the previous Commissioner’s actions, and those actions may yet cost the ILPTO several million shekels. §164 doesn’t mention anything about suspensions, and it’s not clear that it authorizes the Commissioner to collect fees for the voluntary suspension of an application by an applicant when no response to an OA is due; this may be yet another situation where the previous Commissioner’s willingness to flout the rules of the game end up costing the ILPTO.
The question this raises with regard to the current proposed circular is, does Mr. Kling, the current Commissioner, really want to follow in his predecessor’s footsteps in this regard? Because by maintaining the ruse that suspensions are a form of extension, and that the ILPTO is therefore empowered to collect fees for suspensions, he may well be setting up the office, and himself, for a fall like that of his predecessor, when a second class action suit is filed against the Commissioner for the unauthorized collection of suspension fees.
This brings me back to the matter of the lack of reasons being provided in the draft circular. If you’re planning to implement policy, and you want constructive input on your proposed policy, then it would make sense to explain what the policy is intended to do and why. That would give people the opportunity to assess both the worthiness of the goal, as well as the likely effectiveness of the proposed policy, and it would make it easier to identify ways to improve the policy to be implemented. (That’s the way draft statutes in Israel are generally presented – with explanatory language.) The lack of any such explanation in the present draft circular makes one wonder if the Commissioner is really interested in public comment, or if this is just a matter of perfunctorily going through the motions.
This doubt is magnified by the fact that following the issuance of the Commissioner’s “circular on circulars” in June, he proceeded to ignore that very document and in contradiction thereto, issued several circulars (see e.g. here and here) without first seeking public comment.
Furthermore, so far it’s unclear what will happen to the comments received in cases where public comment is solicited. At the USPTO, those comments are made public, and most are addressed in the final rulemaking statement. It remains to be seen if comments received by the ILPTO will be accorded similar treatment.
With regard to circulars pertaining to patent prosecution, one also has to ask who within the ILPTO has the Commissioner’s ear: his resume does not evince any personal experience with patent prosecution, in which case he in all likelihood relies on others within his office for advice. But the Commissioner’s name is the only one to appear on the draft circular.
Transparency from state bodies is a good thing. But based on the experience so far with the new policy of transparency regarding the issuance of new circulars, it’s not clear if this new policy really makes anything more transparent.