Continuing with discussion of the first of two recent draft circulars, “Draft Circular 34/2016”, Part C pertains the order of examination of “Green” patent applications, viz. “those patent applications that the invention described therein assists in improving the environment, inter alia by preventing causes of global warming, reduce pollution of the atmosphere or water, advance non-polluting agriculture etc.” The idea is straightforward: examination of applications that the ILPTO classifies as “green” per Regulation 34(a) [which says that applications will be examined in the order in which they were submitted] will begin within three months of being so classified. Applicants wishing to have their applications deemed “green” will send a letter to the ILPTO, briefly explaining the reasons why the application should be considered a “green” application. Unlike a request to examine an application out of turn, requests to be considered “green” will not involve payment of a fee.
Part D relates to the use of the phrase “incorporated by reference” to refer to outside material.
“17. Sometimes applicants refer in the specification to outside documents, such as prior publications and the priority document upon which the application is based, using the expression “incorporated by reference”, as part of the background, or as part of the description of the invention or ways of practicing the invention.
“18. With respect to reference to prior publications for purposes of describing the invention or ways of practicing the invention, the applicant will be required, at the examiner’s discretion, to amend the specification to include the relevant portion of the document referred to. The examiner will require such amendment if he believes the reference to the prior publications makes it difficult to understand how to practice the invention, inter alia in cases in which reference is made to many publications. Generally, such an amendment will constitute an amendment under section 22 of the statute [which says that an applicant may amend its application, sua sponte or in response to an office action, at any time before the acceptance of the application, which occurs upon publication under section 26]
“19. In cases in which the reference to prior publications is made using the expression “incorporated by reference” in the background section, the applicant will be requested to delete the expression, in accordance with Regulation 20(a)(1) [which says that the application shall contain a background section setting forth the purpose of the invention and brief description of the state of knowledge against which the invention was made]
“20. Regarding reference to the priority document, the applicant will be requested to delete the expression “incorporated by reference”. If the applicant wishes to amend the specification to include the relevant portion of the priority document referred to, such an amendment will be considered an amendment of substantive character under section 23 of the statute [which says that an applicant may make amendments “of a substantive nature” to the application, but that the ILPTO may require that the amended passages be post-dated to the date of their inclusion in the application].
“21. No reference to unpublished documents will be permitted.”
Incorporation by reference is an accepted technique in Israeli law, and for over 40 years the ILPTO had no problem with the expression “incorporated by reference” in patent applications. Indeed, the Patent Statute itself incorporates portions of other statutes by reference. Apparently taking its cue from the EPO, a few years ago the ILPTO began waging a war on incorporation by reference, asserting that i-b-r rendered the disclosure indefinite and unclear, and therefore contravened the statute and regulations. Thus, in a circular published on November 8, 2010 (MN 85), the commissioner said that incorporation by reference was verboten, but that the relevant parts of the documents referred to, whether prior art documents or the priority document(s), could be copied into the specification and would not be considered new matter. The proposed wording continues in this vein, but seeks to break new ground in stating that copying parts of a priority document, previously incorporated by reference, into the specification, will constitute the addition of new matter.
I thought the ILPTO was substantively wrong when it first started complaining about “incorporation by reference”, and that it overstepped its authority in deciding sui generis to completely ban the use of incorporation by reference. The new proposals only confirm my views.
On the substantive side, the question of whether not the incorporation by reference of another document renders a disclosure unclear is something that should be decided on a case-by-case basis, not as a hard and fast rule. Yes, it’s possible that the incorporation by reference of a 1000-page book in order to explain how one might, for example, form a circuit board or formulate a tablet of aspirin could create some confusion; but by the same token, it may be abundantly to clear persons skilled in that area of technology just which passages from this book are relevant to the discussion at hand. Additionally, in many instances, reference is made to an industry standard published by standard-setting organization, as a criterion by which the inclusion or exclusion of a particular product or process within the scope of a claim is decided. There’s nothing confusing about that. And with respect to priority documents, these are present in the application file anyway, which means that people wishing to view them don’t even need to avail themselves of a library.
It’s also absurd to say that copying a document incorporated by reference, viz. the priority document, into the specification, constitutes addition of new matter. That document is already present in the application by way of the incorporation by reference, which, as noted, is an accepted mechanism in Israel law, so the explicit copying of portions of that document into the specification cannot constitute the addition of new matter. Indeed, the ILPTO itself set forth this very view in its previous circular regarding incorporations by reference, and that remains the practice today. Much as someone in the ILPTO would now like to pretend otherwise, the ILPTO cannot change the meaning of the substantive law because doing so suits the (unstated) agenda of the Commissioner.
Because, in many if not most instances, incorporation by reference doesn’t lead to confusion, and should be judged on an individual case, the ILPTO acts beyond its authority in creating a non-rebuttable presumption that all incorporations by reference are improper, in that it fails to exercise the discretion which it is charged to exercise.
The statutory requirements for the application are that it set forth the invention in a manner that enables a professional in the field to practice the invention, and that the claims defining the scope of exclusivity “reasonably arise” from the specification. Thus the fact that it might be absolutely clear what parts of a document that is incorporated by reference are germane to the application is not necessarily a fatal flaw in a patent application. Consequently, a better approach than the one now proposed by the ILPTO would be to allow incorporations by reference, regarding them as presumptively ok, and allowing for challenges to the propriety of any particular after the conclusion of ex parte prosecution. Applicants who do not want to risk such challenges will remove the incorporations at an appropriate time.
Finally, with regard to the incorporation of unpublished documents, in such cases the applicant should be given the opportunity to provide a copy of the unpublished document, to become a part of the file history. Only if the applicant fails to do so should it be required to remove the incorporation by reference.
I would also recommend that the ILPTO familiarize itself with 37 C.F.R. 1.57, which deals with incorporation by reference of material in US patent applications. Among other things, while the USPTO is liberal with allowing incorporations by reference, even going so far as to recognize priority claims as incorporations by reference for purposes of completing an application if material was inadvertently omitted from a new patent application (1.57(b)). Also, the USPTO distinguishes between incorporation of “essential” material, which can only be made by reference to a granted US patent or published US patent application, and incorporation of non-essential material, which can be made by reference to any publication (1.57(d) and (e), respectively).