In accordance with recently-adopted statutory amendments, next week the Israel PTO will begin publishing all pending patent applications that have passed the 18-months-from-earliest-priority date. This includes applications filed under the old law, under which applications were only published (actually, opened to the public) upon conclusion of substantive examination and payment of a publication fee. There is no opt-out provision for applicants who filed before the enactment of the amendments, so short of abandoning their applications a month or so in advance of early publication, applicants who filed under the old law have no way to stop such publication.
Because until now Israel did not have 18-month publication, it was possible to file in both Israel and the USA and to still make a non-publication request in the latter country. Which raises the question, if you’re an applicant who filed in Israel under the old law, and your only other corresponding application was filed in the U.S.A. with a non-publication request, will publication in Israel now subject you to the draconian penalty associated with making an improper non-publication request, viz. abandonment of the U.S. application? In other words, do you now have to inform the USPTO Director of the filing in Israel and/or rescind that non-publication request?
It’s not clear that either step is necessary. The relevant parts of the statute are 35 U.S.C. §122 (b)(2)(B) sub-sections (i), (ii) and (iii):
(B)(i) If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multi¬lateral international agreement, that requires publica¬tion of applications 18 months after filing, the application shall not be published as provided in para¬graph (1).
(ii) An applicant may rescind a request made under clause (i) at any time.
(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the notice was unintentional.
So per sub-section (i), for the non-publication request to have been proper, it needed to indicate that the invention disclosed in the US application was not the subject of an application in an 18-month publication country, and would not be the subject of such an application. Under our hypothetical, that statement was true at the time the US application was filed and the non-publication request was submitted: Israel was not an 18-month publication country, and since Israel was at the time and remained thereafter the only country apart from the US in which the application was filed, at the time the non-publication request was made there was no filing in an 18-month publication country nor any intent to file in an 18-month publication country. So the certification made along with the non-publication request was truthful, and the requirements of sub-section (i) were met.
The question then becomes, what does the statute say about the applicant’s obligations as a result of things that occur subsequent to the filing of the non-publication request? To the extent that the statute speaks to such situations, it does so in sub-section (iii). But that sub-section only addresses one such situation, namely the case in which, after filing in the US with a non-publication request, the applicant files in an 18-month publication country, in which case the applicant must inform the USPTO Director within 45 days of the foreign filing that such filing has been made. Failure to do so results in the application being regarded as abandoned. But sub-section (iii) is silent as to what happens if someone files in a non-publication country and that country later becomes a publication country – there is no mention of an obligation to report, let alone any penalty associated with a failure to report. That being the case, the logical conclusion is that in our hypothetical, there is no obligation to report to the Director the fact that the Israel application is now going to be published.
It could be argued that while the letter of the law doesn’t cover our hypothetical, the spirit of the law says that the applicant should now inform the Director of the changed situation, or simply rescind the non-publication request, in order to facilitate publication of the US application, since the idea was to enable non-publication in the USA only if there was no 18-month publication elsewhere. And undoubtedly, if the US application is not published until it issues as a patent, that argument will be made by the defense should an attempt to enforce such a patent be made. Nevertheless, that argument does not accord with the actual wording of the statute.
I have not undertaken a study of the legislative history of §122 to see if it sheds any light on the situation. Lawyers tending to be a risk-averse group, I’m guessing that attorneys counseling clients facing this situation would advise them to rescind the non-publication request, if only because, by virtue of market size, US patents tend to be more valuable than Israel patents, making the risk in maintaining non-publication unacceptable. But that’s merely a guess: fortunately for me, I don’t represent anyone whose US non-publication request may be affected by the change in Israel law.
Earlier discussion of the amendments:
On this blog: Israel PTO Issues Notice Concerning Implementation of Amendments to Statute, Israel Enacts Patent Statute Amendment Enabling Third Parties to Initiate Examination of Patent Applications
On PatentDocs: News from Abroad: Recent Amendments to the Israel Patent Statute