America-Israel Patent Law

Why It Still Makes Sense for Israelis to First File Their Patent Applications as a US Provisional (and Not at the Israel PTO)

Suppose you’re an Israeli company with a newly-drafted patent application.  You think it’s got an enabling disclosure and clear claims, and it’s not something likely to get flagged as defense-related (which would preclude foreign filing).  Where should you file first?

Before the enactment of the AIA, the answer was a no brainer: you file first in the USA, to take advantage of 35 U.S.C. §102(e) during US domestic prosecution.  And if getting a quick allowance isn’t critical, you file your application as a provisional rather than a non-provisional, because:

1. It’s cheap - $130 filing fee for a small entity, versus over $500 to file in Israel (over $300 if you qualify as a small entity under Israel law, but the cost of proving small entity status eats into the savings).  In fact, you don't even need to pay the fee to get a filing date for your provisional application - for small surcharge you can pay the fee later.  So if you decide not to proceed with the application, you can just not pay the fee.
2. You get an extra year of patent protection, since the one year that the provisional is alive doesn’t count against the 20-year patent term.  True, if you file first in Israel you can re-file the within a year and claim priority from your original Israel filing, but most people don’t do that; and you still wind up paying more than you need to in order to gain the year, see (a) above.
3. You can file electronically, something you still can’t do in Israel, and if you’re a registered filer you can see your filing on PAIR almost instantly, something you can’t do in Israel either.
4. When you go to file your PCT application at the end of the priority year, if you file at the International Bureau, WIPO can electronically pick up the priority document, thus precluding the need for you to provide a certified copy yourself.  In contrast, if you file first at the Israel PTO, you’ll need to order a certified copy of the priority application and provide that to the PCT Receiving Office when the time comes – even if that PCT RO is the Israel PTO itself.  
5. Filing first in Israel precludes the filing of a non-publication request when you eventually file in the USA. 

(Amazingly, these advantages were lost on some local practitioners, who wrote about the benefits of filing first in Israel.)

Post-AIA, with the elimination of §102(e), the first advantage is gone: now under US law, a first filing in any Paris Convention country is equally good for purposes of US prosecution.  But I still think that in most cases, it makes sense for Israeli entities to make their first filing a US provisional application, because reasons 1-5 above still apply. 

All this assumes, of course, that you file yourself, or with a licensed US practitioner who charges a reasonable fee for this (like yours truly).  If you file through a US-based firm that takes $1500 just to file the provisional – and apparently there are such firms – then you’re getting taken to the cleaner’s.

What Do You Do While Waiting For EFS To Let You Log In?

God bless the people at the USPTO who set up the Electronic Filing System (EFS).  In addition to randomly revoking login privileges without warning, there are at least two delays every time someone logs in: when they get to the initial registered user screen, and then while the system authenticates the user after he's gone through the login procedure.  

I asked some colleagues what they do during those delays.  Here are some of the answers:

1. Pick the lint from their navel.

2. Pick their nose

3. Log into ePCT and check the status of their applications

4. Watch an episode of Star Trek TNG

5. Prepare a complete appeal brief

6. Go the post office, the bank and the supermarket, where they pay by check

7. Hike up Half Dome and back

You get the idea…