As I mentioned in an earlier post, the above statement is how a colleague of mine characterizes Israel. A few years ago I discussed one case in point, in which a colleague used the ILPTO’s online payment system to pay the fee for recording a change in the patents register. You would think that the existence of an online payment system is the hallmark of a modern PTO, but here it’s a case of “necessary but not sufficient”, i.e. it’s true that to be a modern PTO you need to allow online payments, but that’s not enough. In this instance, the ILPTO still requires you to physically deliver the payment receipt to the PTO. Because my colleague’s receipt arrived one day after there was a fee increase, the office ruled that the fee he had paid was a shekel short; the ILPTO demanded the difference before it would record the change.
Ostensibly, the legal source for the delivery requirement is Rule 8 of the Patents Regulations. That rule says that ILPTO shall be paid at the Postal Bank and that the receipt of payment, along with an explanation of what the fee is for and the relevant file number shall be delivered to the Commissioner. But there’s no mention of payment via the internet, which isn’t surprising when one considers that Rule 8 was last updated in 1988, back when dinosaurs roamed the earth, terrorists were still called terrorists rather than “partners for peace”, and only the military and computer jocks used the internet. So theoretically one could argue that we’re not even allowed to pay ILPTO fees over the internet, since the Regs don’t provide for it. But far be it for the ILPTO to refuse to accept money, so internet payments are here to stay. (Internet payments also happen to be a good idea, but that’s rarely been a basis for progress in the public sector.)
The requirement that you furnish the ILPTO with the payment
receipt, the file number and an explanation of the purpose of the fee made
sense in 1988, as there was no way for the ILPTO to verify that that the
payment had been made, let alone its purpose, until applicants/patentees notified
it accordingly.
But there’s no logic in
imposing the same requirement on internet payments: when paying over the
internet, one has to identify the file number (patent, design or TM app or
registration number), one chooses from a list of things for which payments can
be made, and of course the fact that one’s credit card was charged is also
recorded. (See the example at right). No less importantly, the ILPTO can see that
information in its computer system, along with the fact the payment was made and
when it was made. (I’ve personally
exploited the latter fact in cases in which I want to be sure that the ILPTO
records the payment, by calling the relevant person at the ILPTO, giving them
the receipt number and having them confirm that the payment is shown in their
system.)
By way of comparison, no separate notice of payment of a fee need be sent to the USPTO for payments made by the USPTO’s EFS system. (That system also facilitates filing of applications, responses, and other papers in applications and patents, something that doesn’t seem to be on the horizon at the ILPTO.)
A recent decision of the Deputy Commissioner highlights the inanity of the ILPTO’s policy as regards internet payments. Payment of a renewal fee for patent no. 128935 was timely made over the internet in February 2009 by the managing director of the company that owns the patent, but no copy of the receipt of payment was sent to the ILPTO. As a result, the office recorded the patent as having lapsed for non-payment of the renewal fee. That fact only came to the patentee’s attention a few years later, when it came time to pay the next renewal fee and the patentee was told that the patent had lapsed. Rather than request reinstatement of the patent – an act which would result in rights for third parties that had begun to exploit the patent during its period of lapse – the patentee, this time via counsel rather than pro se, requested correction of a mistake in the Register, viz. the recording of the lapse of the patent when none had occurred.
The Deputy Commissioner would have none of it: citing Rule 8, she said that the patentee had to deliver a physical copy of the receipt to the ILPTO, and failing to do that, the ILPTO had acted properly in recording the lapse of the patent. Ironically, in support of this decision she quoted from an earlier decision she had given in similar circumstances (in patent 169590, in which the receipt for payment of a fee arrived at the ILPTO after the deadline for payment of the fee had passed):
“It is clear that in the absence of a notice regarding the purpose of the fee and receipt of its payment, the Commissioner does not know which payment to associate with which matter. Thus at the time a patent renewal fee is paid, the Office does not know for which patent the fee was paid, until the patentee informs the Office of the number of the patent for which the payment was made. Therefore, if the notice does not arrive at its destination before the last day for payment of the fee, the fact of payment of the renewal fee cannot be recorded in the Register and the patent lapses.”
That statement makes no sense in the context of internet payments, in which, as noted above, the ILPTO has all the relevant information at its fingertips.
No word on whether or not the patentee plans to appeal (the deadline hasn’t passed); according to the ILPTO web site, a request for reinstatement was filed on June 17, but as of this writing the document itself isn’t visible on the site. No word either as to whether the ILPTO offered to refund to fee it received but refuses to give credit for.