At some point, when things are little less hectic, we’re going to write a dissertation on the problems with the Israel PTO’s electronic patent filing system (henceforth “ILEFS”), in the hope that some of the many problems with the system eventually get fixed. For now we share this little gem.
Under the local statute and rules, when examination is completed, the ILPTO sends the applicant a letter, called a “PK 13”, giving the applicant three months to pay the acceptance fee. Following receipt of the fee, the ILPTO sends the applicant a letter informing the applicant when publication of notice of acceptance of the application in the Patents Journal will take place. It is that publication itself that constitutes “acceptance” of the application.
Why is the official date of “acceptance” of the application important? For starters, that is the date that opens the three-month period for the filing of pre-grant oppositions. That three month period is not extendable, so if you’re going to oppose someone’s application, you want get the date right.
The date of “acceptance” is also important for applicants who may want to make further amendments to their claims. Per sections 29 and 65 of the statute, after acceptance, applicants can only amend their claims to restrict the claims’ scope, and they can’t add new claims. But before acceptance, they can make all manner of amendments, including adding new claims and/or broadening claims. Thus says Section 22 of the statute: “At any time before acceptance of the application the applicant may amend the specification, whether as a result of a notice under section 20 [i.e. an office action – DJF] of his own volition.”
It appears that the ILPTO is unfamiliar with Section 22, or at least the persons involved in designing the ILEFS were unfamiliar with that section. If one wishes to amend an application after receipt of the PK 13 letter, the ILEFS allows this, as “amendment after PK 13” is one of the defined tasks in the list of tasks in the system. But once the acceptance fee has been paid, the system will not allow applicants to file such amendments, even if publication – and thus the official acceptance per se – has not yet occurred. The ILPTO thus denies applicants a right that the statute guarantees them.
Additionally, as noted, sections 29 and 65 of the statute give the applicant the right to amend the claims after acceptance in order to reduce the scope of the claims. But the ILEFS won’t let an applicant do that either. When we tried to file such amendments in an accepted-but-not-yet-granted application, the system gave us the message that “the status of this application is not appropriate for this action”. So here too, the ILPTO denies applicants a right that the statute guarantees them.
But what’s a statute for if not to be ignored, right?
One bit of commentary: clearly, if publication of the acceptance is imminent, then there’s an administrative problem of giving examiners sufficient time to examine the proposed amendments – there needs to be cut-off. At the USPTO, for example, amendments after a notice of allowance has been mailed must be submitted no later than the time of payment of the issue fee. Similarly, in order for Article 19 amendments to PCT applications to be published with the application at 18 months, they must be received by WIPO several weeks ahead of publication. The adoption of a similar statutory scheme in Israel is certainly warranted. But until then, it’s not for the ILPTO to ignore the statute and make up rules as it goes along.