There’s a deadline approaching in a case I filed in Israel for a US colleague. Over the years I’ve handled a number of Israel filings for this person, and although we’ve taken extensions for this practitioner’s cases several times in the past, in view of the impending deadline he asked me to confirm something: “You don’t typically file a request for extension prior to each month’s due date, right? You do it as we do in the US, wherein you pay the required extension fees when you actually file the response, no?”
I confirmed that in Israel, as in the USA, there’s no need to obtain extensions prospectively, but that, as in the US, the extension may be obtained at the time the response is filed. And that, in our office, that’s our normal practice. That way, if no response is filed, no extensions are taken and no unnecessary expenses incurred. But I added, “It probably won't surprise you to hear that there are offices in Israel that request another month extension each time a deadline comes up, and bill accordingly.”
My colleague responded that he wasn’t surprised, but then went on to surprise me: “we had another firm [in Israel] tell us that it can be seen as a ‘lack of diligence’ if you don’t” obtain an extension prospectively.
Wow. “Lack of diligence”? Balderdash. Not only is there nothing in the statute or regulations that says extensions must be obtained prospectively, not only has the practice of the ILPTO for at least as long as I’ve been doing this (23 years and counting) been to grant extensions at the time the response is filed, and not only is there no case law that says that this practice is evidence of a “lack of diligence”, but the statute itself says that extensions may be obtained retroactively. There’s no mention of the word “laches” in the case law either; to the extent the case law uses the Hebrew term שיהוי, which translates as “delay”, with respect to the patent statute, it’s in reference to delay in bringing suit, not delays in prosecution. Besides, if delay or laches was an issue, why would it matter whether the extension was obtained prospectively or retroactively? Either way, it would be asserted that the applicant failed to engage in diligent prosecution.
Unfortunately, telling clients that kind of baloney is a great way to milk them for more money. And in most cases they’ll never be the wiser. Which is why the other firm my colleague engaged told them they need to obtain extensions prospectively.
A related bit of taking liberty with the truth, in which some offices apparently engage, is telling clients that they must pay excess claim fees for each claim over 50. Fees for claims 51 and up aren’t due upon filing, they’re due at a later stage, and the need to pay them can be obviated by reducing the number of claims to 50 or fewer. But if you charge your clients for the extra claims and for attending to payment of the extra claim fees, why would you suggest reducing the number of claims?
This is actually an issue that I often see in the other direction: US associates who pay for all claims over 20 in PCT US national phase filings, even if it’s clear that many of those claims will be restricted out and not examined. Paying those fees and charging for it is good for the firm’s profits, but often not in the client’s interest.
The situation reminds me of this Dilbert cartoon.