America-Israel Patent Law

Does Anyone Know the Name of the Head of OPAP?

I posted the following earlier today on one of Carl Oppedahl's listserves - sort of a follow-on to this earlier post.  So far positive responses, but no one coming forward with the name of the individual I'm seeking.

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My question today is straightforward: who is the director of the Office of Patent Application Processing (OPAP)?  That's all the info I really need, and I can't find it on the PTO's web site.

You can stop reading now, but feel free to read the following exercise in venting, the substance of which I know many of you can relate to.

We have a patent that issued recently.  We filed a divisional a few weeks before issuance.

We have now received a notice from the Office of Patent Application Processing (OPAP): there's a problem with the drawings in the divisional.  

The letter from OPAP is (as usual) inscrutable.  All it says is that the drawings are unacceptable because "The drawings must be reasonably free from erasures and must be free from alterations, overwriting, interlineations, folds, and copy marks. See Figs. XX and YY."  When I look at those drawings, I don't see any of those defects.

More to the point, the drawings in this application are the exact same drawings that OPAP had no problem with when the parent case entered the national stage a few years ago. The exact same drawings that issued in the parent case today!  Is OPAP saying the issued patent is invalid?

My guess is that there are some dashed lines in the drawings that are related to in the specification, that the Examiner or anyone skilled in the art will understand when read in conjunction with the spec.  But that the geniuses in OPAP think constitute stray lines.  Because, you know, they know better than the inventors. Or the Examiner who examined and allowed the parent case.

OPAP-originating stupidity is a recurring theme in this forum. How many threads have there been about the idiocy associated with filing of new application data sheets?  I'm sick of this stupidity. If there really is a problem with the drawings in this case, or in any case, OPOP should provide a copy of the problematic drawings with colored markings showing exactly where in those drawings the alleged problems occur.  Or it can provide a phone number that connects to the person who issued the letter, so you can get real clarification. (There's no phone number on this particular notice, just an "e-signature" that says /fberhane/.  The employee locator on the PTO web site says the person is named Frehiwot Berhance, but calling that number, (703)756-1385, yields no human answer, just a 1-second unintelligible voice after several rings, followed by a beep to leave a message.)  Either of those alternatives would be infinitely more efficient than the present "guess what I'm thinking" game, in which you guess what's bothering OPAP and file new papers, only to be told by the OPAP, in yet another inscrutable letter, "nyeah nyeah, you guessed wrong, try again!".  

I heard recently about a case in which the application was assigned, and the assignment is on record, but the PTO refuses to recognize a power of attorney signed by the assignee of record because there's no application data sheet on file listing the assignee as a non-applicant assignee. Something's amiss when dumb PTO formalities trump the law to preclude the acceptance of a valid POA.

There's no excuse for the tremendous waste of time and money that OPAP forces applicants to spend on what can only charitably be described as pure b.s.

As I said at the outset, my question for the list is, who is the director of OPAP? The employee locator doesn't say. We want to speak directly with him to get this issue resolved. I'm not going to have anyone at our end waste time chasing after squirrels who are afraid of their own shadow (who probably won't want to talk to us anyway if we say we're the attorney and not the inventor, because we haven't filed a POA yet, because first we want to record the assignment from the parent case in this case, and then file a POA from the assignee). Nor will we waste time filing papers that don't need to be filed. I want to go straight to the top to resolve this.

Yes, Virginia, It Really IS Safe to Come To Israel (Or, Hey Virginia State Bar: Grow A Pair!)

I’m reasonably active in the American Intellectual Property Law Association.  Among other things, I’ve attended AIPLA meetings in Boston, New York, Philadelphia, Washington, Orlando, Chicago, Las Vegas, Seattle, San Francisco and San Diego, and I’m planning to attend the Spring Meeting next month in Los Angeles.  Invariably, when it comes up that I’m from Israel, I’m asked, “Is it safe there?”  And just as invariably, I find that question amusing, because while we’re conferencing in some fancy hotel, the city in which the conference is taking place has areas into which none of us really wants to venture, areas which often feature in the TV news for the wrong reasons.  In some cases those areas are walking distance from the hotel.  Yet none of us are dissuaded from attending, because we know a bad neighborhood or two isn’t emblematic of the city as a whole. 

So in answering my interlocutor, I always point to the incongruity of the question being asked in the location where it’s being asked.  I then add the observation that while we wouldn’t dream of letting our kids wander around the conference environs unsupervised, at home I don’t hesitate to give an eight- or nine-year-old child some change and send him to the corner grocery for some milk.  My biggest concern is his safety in crossing the street. 

Another topic that often comes up is airport security.  One of the good things about a country with only one major airport, a good sense of who the enemy is and how he looks and acts, and a lot less politically correct ballyhoo than the USA, means that instead of security looking for bombs and inconveniencing everyone, it can hire intelligent security staff and look for the bombers, i.e. it can profile.  (One visiting physicist on his way out of the country was asked by the security officer what he researched. “The quantum Hall effect”, he answered. “Integral or fractional?” the security person asked.  I don’t think you’ll hear that from TSA.  Which is why even 70-year-old grandmothers have to take off their shoes undergo full body scans when flying from Peoria to Reno.)

That Israel gets a wholly unjustified rap is a fact that appears not be lost on the AIPLA, which has several country-focused committees, among them an “Israel practice” committee.  And just as there are regular AIPLA-organized trips to the EPO and the JPO, in 2013 and 2014 the Israel practice committee organized trips to Israel.

I mention all this because a fellow American expat colleague here in Israel, Joe Felber, is a member of the Virginia State Bar, and this past weekend that organization (or at least its leaders) behaved in a way that would have led my high school band teacher to ask, “Young man, are you rude, or just stupid?” Or in the case of the VSB, perhaps both. 

It started last Wednesday, March 25, when a letter (Download VSB letter 1a) from Kevin Martingayle, president of the VSB, was sent by email.  In it, the VSB announced that it would be holding its Mid-Year Legal Seminar in Jerusalem on November 8-15.  

“Important information regarding the VSB Annual Meeting in Virginia Beach and Midyear Legal Seminar trip to Jerusalem 

“My Fellow Members of the Virginia State Bar,

“In the spirit of March Madness, I am calling “time out.” This time out is for you to consider some education, fun, and adventure.

“Please take a few minutes and take a look at the VSB website for information on:

  The Midyear Legal Seminar in Jerusalem November 8-15; and

  The Annual Meeting in Virginia Beach June 18-21.

“These VSB events provide terrific opportunities for lawyers and judges to learn, socialize, and network in beautiful, relaxing surroundings.

“To ensure that the Midyear Legal Seminar will be a “go,” please confirm your reservation and deposit by April 1. The Midyear Legal Seminars are paid for by the participants and not by bar dues.

“Registration for the Annual Meeting in Virginia Beach will be available online in early April, including online registration and hotel links. This year’s venues and programs are superb.

“A lot of care and effort has gone into planning both the Annual Meeting and Midyear Seminar, and I certainly hope you will join us. 

“As Helen Keller said, “Life is either a great adventure or nothing.”

“So let’s end the “time out” and get going.

“As always, thank you for allowing me to serve as VSB president.

“Best regards,” 

Two days later, on March 27, Mr. Martingayle sent another letter (Download VSB letter 2a), in which he wrote that the trip had been cancelled:

“Dear Fellow Members of the Virginia State Bar:

“Certain members of the Virginia State Bar and other individuals have expressed objections to the VSB’s plan to take the Midyear Legal Seminar Trip in November to Jerusalem.  It was stated that there are some unacceptable discriminatory policies and practices pertaining to border security that affect travelers to the nation.  Upon review of U.S. State Department advisories and other research, and after consultation with our leaders, it has been determined that there is enough legitimate concern to warrant cancellation of the Israel trip and exploration of alternative locations.”

“Undoubtedly, this news will disappoint some VSB members. But we are a state agency that strives for maximum inclusion and equality, and that explains this action. Fortunately, we still anticipate being able to find a suitable location for the November seminar trip, and we will send out further news very soon.  

“Finally, we are pleased that our members and citizens feel able to express concerns and look to us to protect rights. In the end, we are all part of the same team, and the VSB will continue to stay focused on advancing its primary objectives—public protection, access to justice, and improvement of the profession.

“As always, I appreciate having the honor of serving as your president.”

Apparently this letter in turn elicited its own reactions, because yesterday – Sunday, March 29 – Mr. Martingayle sent a third letter (Download VSB letter 3a), co-signed by Edward Weiner, the president-elect of the VSB:

“Dear Fellow Members of the Virginia State Bar,

“On Friday March 27th, we canceled the Virginia State Bar's planned Midyear Legal Seminar trip to Israel. The decision was based primarily on a U.S. State Department advisory:  http://travel.state.gov/content/passports/english/country/israel.html, "Entry, Exit & Visa Requirements." We were forced to conclude there were potential difficulties some of our VSB members might face in obtaining entry to Israel. Additionally, we were well short of the required number of confirmed attendees necessary for the trip to proceed. 

“President-elect Edward L. Weiner, chair of the Midyear Legal Seminar Committee, communicated with the Israeli Embassy. An embassy official expressed a desire to facilitate the trip but acknowledged that security protocols are strict and could lead to exclusion or restriction of some VSB members.

“In the face of this information, we felt it necessary and appropriate to forego this trip. This was not a political decision and is not a "boycott." We are an inclusive organization and do not discriminate against any religion.

“Unfortunately, some mischaracterized this decision as anti-Israel and anti-Semitic, even going so far as to mislabel it as a "boycott." Although the message was sent over the president's signature, we jointly drafted and approved what was sent Friday night. Apparently we could have done a better job of explaining the situation and decision. We are writing now to provide further clarity.

“Our decision was not based on any political factors or influences. We understand that Israel is in a difficult position when it comes to security. We are not expressing opinions regarding Israel's border security measures. We are merely recognizing the reality that our very large and diverse membership, consisting of well over 40,000 members, includes individuals who may encounter lengthy examination and possible rejection in attempting to navigate the immigration security procedures in Israel. 

“You may recall that on March 25, 2015, we sent a message urging VSB members to sign up for both the Israel trip and the Annual Meeting in Virginia Beach. We very much wanted the Israel trip to be a success and were trying to reach the required number of participants for it to be a go. We deeply regret that a combination of circumstances led to the trip's cancellation, and we also regret that our good faith efforts and decisions may have been misinterpreted and misunderstood.

“We remain committed to the core objectives of the VSB:  public protection, access to justice and improvement of the legal profession. Thank you for reading and thank you for allowing us the privilege of serving.”

There are many things I could say about this, but as the saying goes, I have real work to do, so I’ll limit myself to just a few of the more salient points here:

First, the VSB’s turnabout was ostensibly based on statements on the U.S. State Department’s web site regarding entry and travel in Israel.  That site mentions various inconveniences that some people may encounter when visiting Israel, and some contingencies that need to be planned for if you’re a US citizen who meets certain criteria, e.g. you or your parents were born in Israel or in what is now designated the area of the Palestinian Authority, or if you have traveled extensively in Arab countries.  The inconveniences reported are true in much the same way that the warnings on a pamphlet accompanying medication are true: you may experience side-effects X, Y or Z, but the vast majority of people don’t encounter those.  Moreover, it’s clear from the warnings that if you’re planning to visit the PA, you should plan on entering from Jordan, via the Allenby Bridge.  As noted in the March 25 letter, the VSB trip was to Jerusalem, Israel.  So basically the only people who might be inconvenienced are VSB members having PA passports who were planning to use this trip as an excuse to visit Ramallah. That’s a reason to cancel the trip?  To rational folks, no, but evidently, in the Pollyanna, p.c.-world that’s the USA these days, it is. 

Second, according to the initial letter announcing the trip, “A lot of care and effort has gone into planning both the Annual Meeting and Midyear Seminar, and I certainly hope you will join us.”  Presumably, someone doing careful planning would look into the visa requirements for the country in question, and rule out a priori countries where obtaining visas or entry into the country will be a problem. The State Department’s web site has been up for a long time; the fact that Israel was initially chosen as the venue implies that this information was considered and not considered germane. Which leads to the question: was Mr. Martingayle lying in his first letter? Or had the visa information actually been researched at the time the first letter was sent, but not considered a hot-potato until later, i.e. was he lying when he later said that this information was new to him?

Third, who exactly were these “Certain members of the Virginia State Bar and other individuals” who expressed “objections” to the trip?  What was the nature of those objections?  What “other research” besides looking at the State Department website was conducted?  And which “leaders” were consulted?  Inasmuch as the VSB is not a private body but a state-run organization, why weren’t those “objections” considered in the open?  The decision could have been reached after open deliberation, without adverse consequence.  That it wasn’t suggests an ulterior motive behind the decision.

Finally, it’s ironic that Americans would get worked up over the fact that Israel profiles visitors, let alone that they take State Department statements at face value.  Black men constitute 6% of the US adult population, but over 50% of its prison population. And how many unarmed black men, young and not-so-much, have been killed by cops in the USA? (Cop-induced fatalities in Israel are exceedingly rare.) Perhaps there should be a travel advisory to warn potential visitors to the USA about this: “If you have dark skin, there’s a good chance you’ll end up dead or in jail.”

I don't think the AIPLA is any less diverse than the VSB, which is why I would urge Mr. Martingayle and Mr. Weiner to contact Jeff Lewis, the former AIPLA president on whose watch the first AIPLA Israel trip took place, or Rivka Jungreis, the current chair of the Israel Practice committee, to find out how unrealistic the VSB's approach is.  It might allow these VSB officials to save face, instead of looking like fools who don’t know how to plan.  Or, worse, as Robert Shaw’s character in The Sting might have put it: “Not only are you a liar, but you’re a gutless liar as well.”

(Post-script: after posting the above entry, I found this excellent piece by Michael Krauss in Forbes.) (Further p.s.: now he's got another one.)

 

Update on a "Copyright CrISIS?"

Now that we're into the post-ballot-casting, horse-trading-wheeling-dealing part of the Israeli election process, I went back and checked on the Likud video that I wrote about here.  It's no longer on Youtube: the Jordanian band whose music it used without permission made a copyright claim.  No idea if, as I predicted would happen, it's been re-posted.  No idea either if they sent the copyright complaint to Youtube after reading the post here, but if so, I won't be seeking payment for legal advice.

Israel PTO Sponsors WIPO "Roving Seminars"

While everyone else was focused on election results, yesterday the ILPTO announced via its email list that next month, in conjunction with WIPO, it will be sponsoring "Roving Seminars" in Beer Sheva and Haifa.  A detailed program is to follow, but the list of topics in the announcement was as follows: introduction to global systems for registration of patent, trademark and design rights; the WIPO center for mediation of IP disputes; cooperation between WIPO and the ILPTO; digital developments in copyright.

Typically these types of events are held at the PTO in Jerusalem or at ZOA house in Tel-Aviv, so it's nice to see that someone recognizes that there's life outside of those two cities.  Hopefully this is a harbinger of other improvements on that score.  

The original announcement, posted on the ILPTO's web site on March 12, can be seen here.

The Demise of SAWS: PTO Admits No Wrong, And You Still Can’t Connect The Dots

A few months ago, a story broke about a secret program at the USPTO, the “Sensitive Application Warning System”.  The upshot was that the USPTO had a program under which patent applications could, unbeknownst to the applicant, be flagged for heightened scrutiny, leading to delays in prosecution.  The reasons for such flagging of the application were diverse, including reasons like issuance of the patent might cause embarrassment to the PTO.  Remember the patent on “Method of Exercising a Cat”?

After being both criticized (think IRS and Lois Lerner) and ridiculed, as well as being subjected to a Freedom of Information Act request from Dennis Crouch at Patentlyo, yesterday the USPTO relented.  See the announcement here.

I think we’re all glad to see SAWS going by the wayside. But would it have been so hard for the PTO to show just a modicum of contrition in announcing SAWS' demise?  The announcement makes it sound like the program is being discontinued because it's now obsolete, with no acknowledgement that maybe, just maybe, the PTO was out of line in having a secret program, even back in the days before early publication of patent applications.

There's another aspect of the announcement that I found slightly off-putting, but maybe I'm overly sensitive about this topic.  From the announcement:

"And today, unlike when the SAWS program was created, most applications are published eighteen months after submission, exposing them to public scrutiny and the potential for third-party submissions of prior art."

That statement is technically correct but, to the extent that it implies that third parties can now be watchdogs over the prosecution process, a bit misleading:

When the American Inventors Protection Act was adopted in 1999, facilitating 18-month publication, it included a caveat (codified as 35 USC 122(c)) that the Director "shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant."  It also fixed a narrow time window (in 35 USC §122(e)) for third parties to submit printed prior art.  The idea was to keep the PTO from being inundated with third-party prior art submissions. Because, you know, over at the EPO, they were just swamped with those third-party submissions, to the point that the EPO couldn't function.  (Wait, they weren't? How 'bout that!)

When the obscenely misnamed “America Invents Act” was enacted in 2011, it created a mechanism for third party submission of prior art - see 35 USC §301 - but kept the language of 35 USC §122 quoted above. There's an obvious tension between these two statutory provisions, the one trying to limit the window in which prior art publications can be submitted and forbidding pre-issuance protests or oppositions, the other intending to facilitate prior art submissions, including statements regarding the relevance of the prior art to the claims.

This tension forced the USPTO into Wise Men of Chelm mode, leading to what I call the USPTO's "You-can-lead-a-horse-to water-but-you-can't-make-him-drink" approach to third-party prior art submissions: you can now provide the PTO with a prior art publication under section §301, outside the time frame listed in §122(e), and you can explain why it's relevant to a particular claim or claims. But if you include the phrase "and therefore what is claimed in claim X lacks novelty/is obvious" or a variation thereof, the PTO will bounce your section §301 submission because it contravenes §122(c). 

The inability to connect all the dots for the USPTO in these §301 requests is a weakness in the system. True, there are now several types of post-grant proceedings available, and they do allow third parties to make substantive arguments about the non-patentability of particular claims in view of particular prior art publications, but those proceedings are expensive.  If the claims aren’t allowable to begin with, it would be most efficient for the USPTO to never issue those claims in the first place. Third party prior submissions, including explanation and arguments, can assist in that process.  (If you’re concerned about abuse of the system, there are solutions, for example limiting the number of bites at the apple, or restricting the temporal window in which such submissions may be made.)

So yes, the dead-SAWS announcement is correct that nowadays third parties can submit printed prior art, or even statements of the applicant made in a Federal Court or before the PTO.  That’s an advance over the situation that prevailed when SAWS was supposedly initiated in 1994. But it’s not the case that those third parties can provide the PTO with what they believe to be the conclusions to be drawn from that prior art with respect to the claims at issue. Repeal of 35 USC §122(c) would seem to be necessary to enable that step.  And given the rate at which USPTO examiners ignore the publications found in PCT searches, it’s clear that it will take a change in the examination culture at the USPTO for examiners en masse to utilize prior art publications found by others.