1. I wrote last month about a glitch in the ILPTO’s online payment system that forces patentees’ agents to login and pay renewal fees in two stages, rather than do it at one go. A similar situation has now arisen, with an additional twist: the renewal fees for years 11-14 become due BEFORE the renewal fees for years 0-10.
How can this be, you ask? Simple: the patent was filed in December 2007, and granted in October 2017. So under the regulations, the renewal fees that accrued for years 0-10 during the prosecution of application (i.e. which otherwise would have been payable in December 2013) are due within three months of grant, viz. by January 1, 2018. But since the patent has already been granted, the renewal fee for years 11-14 is due in December 2017, i.e. by the end of 10 years from the filing date. As noted last month, the IL EFS won’t let us pay the fee due in December 2017 until we first pay the fees that are due in January 2018, so we’ll have to do two rounds of renewal fee payments. And if, as allowed by law, we extend the deadline for paying the fees for years 0-10 until July 1, 2018, we’ll find the patent has lapsed for non-payment of renewal fee for years 11-14, because the extended deadline for THAT payment falls in June 2018.
2. Another issue we’ve had recently: late or non-posting of items to the ILPTO database. In one instance, the ILPTO mailed a notice of allowance by snail mail, but the notice wasn’t simultaneously posted to the web site. This points to two problems. First, there’s no reason why the ILPTO can’t send by both snail mail AND by email. The postal service in Israel is notoriously bad, and on more than one occasion we’ve failed to receive letters sent by snail mail. Additionally, there’s no reason why, when the ILPTO does provide email notification, that it only sends to one email address. The USPTO allows notices to be sent to up to three email addresses; how hard would it be to do the same here in Israel?
Second, there’s no excuse for correspondence going out and not being immediately available on the ILPTO database, since it’s the online file that now constitutes the official file history. Indeed, periodic checks of the ILPTO database are one way we try to make sure that we haven’t missed something. That’s a futile effort if the ILPTO doesn’t ensure that correspondence is visible on the web site. (Although there are parts of the USPTO that also still insist on sending things by snail mail and not immediately posting them – petition decisions come to mind – those things do eventually make their way to PAIR.)
3. The ILPTO’s insistence on sending things by snail mail, the need to periodically check the database, and the lack of a private version of the database came to light in another case. A divisional application was filed. The ILPTO mailed a filing receipt the next day, and it mailed a pre-examination (section 18) letter a few days after that, but both letters were sent by post, not be email. But because notice of the filing of the application wasn’t published until later, and because the ILPTO only has a public database, the documents weren’t visible in the database until more than two months after they were mailed out by the ILPTO.
The problem was that we received the filing receipt but not the pre-examination letter, and although we’d docketed to look for the latter, by the time we were able to check the database, notify the client and receive instructions, the initial deadline for response had passed. In effect, the ILPTO foreshortened our client’s deadline by more than months, by failing to send us a copy of the pre-examination letter by email, and by not making its database accessible to us prior to publication of the application.
Clearly, what’s needed here, in addition to the ability to receive correspondence by both snail mail and email, is an Israeli version of private PAIR or ePCT, that allows practitioners to see their own cases online before the public can see them. As it is, even when the application is visible on the public database, submissions aren’t visible for at least a day after they’re made; but in the case of newly-filed applications, the submissions aren’t visible for at least month or two (in the case of most PCT national phase applications), and may not be visible for a long time (if the Israel application is a first filing worldwide, in which case it won’t be visible until it publishes at 18+ months). The ILPTO’s current solution to this is to email back to the applicant a copy of everything it submitted, which is hardly an efficient way to do things (not to mention clutters up my inbox). A form of private PAIR or ePCT would be a far better way to go.
4. Finally, to return to a point I discussed last year, why is the ILPTO allowed to send things by snail mail at all, when we practitioners are only allowed to file using the sub-optimal IL EFS? If the ILPTO is still allowed to send things via the unreliable system known as Israel Post, and to have deadlines count from the date on which they were given to the Postal Authority, we practitioners should be able to send things by Israel Post and have them count as received on the date on which they were actually mailed. As we say in English, What’s good for the goose is good for the gander. It’s time for the ILPTO to institute certificate of mailing practice like in the USA, or to add 30 days to any due date to compensate for delays in postal delivery.
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