On July 9, the Knesset (Israel’s parliament) passed an amendment to the patent statute that institutes three major changes from current practice: early (18-month) publication of patent applications; third-party requests for expedited examination of patent applications (TPREEs); and third-party submissions of prior art. This post discusses the changes per se; subsequent posts will discuss inter alia issues of statutory construction that may arise, possible legal challenges to the amendments, and an assessment of the amendments’ hits and misses.
18-month publication
The move to 18-month publication was expected and long overdue. There has been consensus for some time that Israel become an 18-month publication country, inter alia because Israel has been a member of PCT since 1996, creating the strange situation in which the national phase file history of a previously-published PCT application remained closed to the public (a situation which also existed in US practice but has largely disappeared since 2001). Moreover, the Israel Trade Minister and the US Secretary of Commerce had agreed to such a change in February 2009. Thus the legislation as adopted (new statutory section 16A) says that 18 months from the earliest priority date, the ILPTO will publish on its web site a list of applications, the file histories of which are available for inspection online. Applications which have been refused or withdrawn before the 18-month date will not be listed and not opened for inspection; applications that have already been accepted (and which therefore have already been opened for public inspection) will not be subject to re-publication under new section 16A.
National phase filings of PCT applications are to be published within 45 days of national phase entry, but curiously, in establishing this timeframe the amendment does not account for the priority date(s) or publication date of the PCT application. Thus, per the wording of the statute as adopted, an application that enters the national phase in Israel at, say, 13 months from the priority date will be published by 14.5 months from the priority date, rather than at 18 months. Strictly speaking, this is something that needs fixing through further statutory amendment, although if the powers-that-be at the ILPTO were to act sensibly until such corrective legislation is enacted, and were to see to it that as a practical matter, in such cases publication does not occur before 18 months from the priority date, it’s doubtful that anyone would complain.
Additionally, section 179 of the statute has been amended so that, to the extent that granted patent claims are “substantially identical” to form in which they are published at 18 months, the patentee will be entitled to a reasonably royalty for infringement of such claims that occurs between 18-month publication and grant.
Third-Party Prior Art Submissions
The provisions for third-party submission of prior art were hotly debated during Knesset committee hearings, and were no doubt the subject of behind-the-scenes lobbying efforts. While the amendment as adopted is milder in at least one way than what lobbyists in favor of the change (primarily the local generic drug industry) would have preferred – the time frame in which such third-party submissions may be made is relatively short – it still marks a significant departure from present practice. Hitherto the statute stated that examiners could ask applicants to provide lists of publications cited against corresponding applications elsewhere, or known to the applicant or its attorneys to be relevant to patentability; under the statute they MUST ask applicants to provide such. In practice this is distinction without a difference, as presently the ILPTO always asks applicants to provide such lists. Furthermore, under the amendment, the power of examiners to ask applicants to provide copies of such documents remains discretionary; in the age of free online access to many publications, such requests are less common today than they were say, 10 years ago.
The significant change wrought by the amendment is the ability of third parties to provide examiners with copies of documents, although the amendment does this in a backhanded way, with the following wording:
18(b) In order to fulfill the dictates of subsection (a)…
(3) The examiner may utilize documents listed in subsections (a)(1)-(4) [i.e. publications relied upon by other patent authorities in examining corresponding applications or other relevant prior art, or lists of such - DJF], even if presented to him by someone who is not the applicant, and for purposes of subsection (a)(2) [relevant prior art not necessarily cited elsewhere but known to the applicant – DJF] even if they were not known to the applicant; said documents will be submitted by a person who is not the applicant if two months from the date on which the applicant responded to a demand per paragraph (1) [viz. a demand for publications relied upon by other patent authorities in examining corresponding applications or other relevant prior art, or lists of such - DJF] have not elapsed.
It will be observed that nothing is stated about whether or not third parties may (or are required) to provide comments with their submissions, or if the third parties need to identify themselves. It is fair to assume that absent an explicit prohibition, third-party submittors of prior art will submit comments in addition to the publications per se, and absent an explicit requirement, they will do so anonymously; it is also fair to assume that applicants will vigorously protest. Applicants’ arguments against anonymous submissions that include comments will be based inter alia on the fact that such practice will effectively give adverse parties two chances to attack applications before grant, once while the application is before the examiner and again after allowance during the pre-grant opposition phase. That goes against the basic notion of fair play that adverse parties get one bite at the apple per dispute. Thus it is anticipated that regulations from the Justice Ministry or internal ILPTO guidelines will eventually be issued that explicitly point one way or the other on these issues, although there’s a non-negligible chance that the matter may end up before the so-called High Court of Justice (a possibility to be discussed in a subsequent post).
Putting the Pace of Examination in the Hands of Your Competitors: Third Party Requests for Expedited Examination
Of the three principal changes enacted last week, it is the enabling of third-party requests for expedited examination (TPREE) that is likely to have the most far-reaching effect. In Israel there is no need to file a request for examination; once a patent application has been filed and the fees paid, it will wait in line for examination, generally on the order of 2-4 years, depending on the field of technology. Nevertheless, until now, in a process similar to the old “petition to make special” practice before the USPTO, applicants were able to expedite the examination of their applications, by attesting to reasons justifying out-of-turn examination, such as imminent launch of a commercial product by the applicant, suspected infringement, or the applicant’s advanced age or poor health. This practice was based in the regulations rather than the statute. The new amendments write this practice into new section 19A of the statute, including explicit establishment of the ILPTO’s longstanding practice of requiring a sworn declaration in support of the request. New section 19A includes an open-ended lists of reasons that justify expediting the examination, among them those mentioned above.
Where the amendments diverge from previous Israel practice (and, to the best of this author’s knowledge, practice anywhere in the world) is that they facilitate TPREEs, as set forth in new subsection 19A(c), which translates as follows:
(c) A person who is not the applicant, is not connected to the applicant does not act on his behalf, may submit to the Registrar a reasoned request, accompanied by a declaration to support the facts, for expedited examination of an application that has been published under section 16A [i.e. 18-month publication – DJF], if one of the following conditions is fulfilled:
(1) There is a basis for a suspicion that examination of the patent application in accordance with the order in which it was filed will cause the applicant for expedited examination in accordance with this sub-section, who deals in the field of the invention, to defer development or production of a product or process that is claimed in the patent application;
(2) the time that has passed since the submission of the patent application to the PTO under section 15 or its entry into the national phase under section 48D is unreasonably long, and included in this is significantly longer in comparison to the time that has transpired until the commencement of examination of other applications of the same class;
(3) the public good;
(4) there are special circumstances that justify it.
Notably, nothing in new section 19A, or any other part of the new amendments, require the third party requestor to notify the applicant of the request to expedite the examination, let alone provide for the applicant to respond to the third-party’s request (although, as will be discussed in a later post, it can be argued that the right to respond exists by virtue of section 159 of the statute).
Moreover, whereas hitherto applicants have been able to obtain extensions of time to respond to office actions without a show of cause, or even to request suspension of the examination with a show of cause (such as the desire to wait for the outcome of prosecution in corresponding cases in the US, the EPO or Japan), the new amendments turn this practice on its head. New subsection 19A(e) establishes that once a TPREE has been granted, the applicant will not be allowed to request suspension of the examination, period; and a showing of a particular type of cause will be required for extensions of time to respond to office actions, because such extensions will not be granted “unless the Registrar found that the extension was necessary for reasons that neither the applicant nor his attorney had control over or the ability to prevent”.
New subsection 19A(d) says that requests for expedited examination (whether by the applicant or a third party) must be accompanied by the appropriate fee, “should one be established”. As will be discussed in a subsequent post, that wording is strange and possibly problematic.
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