Following the adoption of significant amendments to the Israel patent statute on July 9 and their coming into force (mostly) on July 12, on July 25 the Israel PTO published a notice concerning the implementation of the amendments. Among other things, the ILPTO plans to make new file histories available online about once a month, coincident with the monthly online publication of the Patents Journal (the equivalent of the USPTO Gazette), as soon as possible after 18 months from an application’s earliest priority date have passed. File histories of already-filed applications will also be made available in this manner, although no more than 4500 old applications will be made available per Journal publication.
The plan is for the ILPTO to notify applicants or their legal representatives that the file history will be made public one month prior to this occurrence; if applicants do not wish for this to happen, they will have a week from notification to inform the ILPTO that the application has been abandoned, in which case the file will not be opened to the public. Realizing that one week to respond is short notice, the ILPTO has indicated that applicants may be informed of impending publication by e-mail and may respond to such notices by email. On the one hand, this represents a step forward for the ILPTO, which still is not set up for electronic filing of patent applications (more on this below); on the other hand, there was no notice or comment period for this new procedure, which undermines statements by the ILPTO that it wants its procedures to be transparent.
Interestingly, and commendably, the notice indicated that the ILPTO has adopted the suggestion made in the previous post on this blog, namely that the ILPTO will not open the files of PCT applications that enter the national phase until those applications have been published by WIPO, i.e. until 18 months from the earliest priority date have passed. (According to the amended statutory wording, the opening of the files in such cases should occur within 45 days of national phase entry, irrespective of the earliest priority date, so that early-entry national phase applications would be made public before 18 months had passed.)
The notice also indicates that, exercising powers conferred on the Registrar by the amended statute, patent applicants filing in Israel will be required to submit a copy of the application on CD-ROM or DVD; the CD or DVD will have to contain separate files for the specification, claims, drawings and sequence listings. Given that the notice shows that the ILPTO now understands that notices of abandonment can be filed electronically, why does it insist on requiring physical copies of patent applications to be delivered to the ILPTO? The practice is prejudicial to applicants and practitioners who live or work far from Jerusalem, since they need to send their applications for filing several hours before Jerusalemites do; it’s environmentally unfriendly because it requires delivery by automobile or motorbike; and it aids countries that aren’t friendly toward Israel that supply the gasoline that powers those vehicles. Why not just let people email in their applications, or set up a designated electronic filing portal?