Israel does not require patent applicants to file first in Israel (unless their inventions concern certain defense or nuclear technologies). And as a result, more often than not the first application gets filed outside of Israel. In our office, that first filing is almost always made either at the USPTO (as a provisional application) or at the UK patent office. The choice between the two is based on whether or not the applicant wants an examination report (i.e. a search) before the end of the priority year.
The fact that most first filings for Israeli inventive entities are made outside Israel has not been lost on the ILPTO. Thus, in an attempt to compete with the UK for “quick examination” applications, a few years ago the ILPTO announced that Israeli applicants who first file in Israel can use that fact as a basis for expediting examination of their applications. But that hasn’t really resulted in much change in the pattern of first filings being made outside Israel. Neither has the introduction of a small entity fee reduction in Israel.
I recently heard a high-level ILPTO official voice some dissatisfaction with present state of affairs, wishing that more Israeli applicants would file first in Israel and utilize the expedited examination route. The following is my explanation for why those of us who counsel our clients to file abroad first do so, but it can be summed up in three words: ease of use. Or, more user-friendly.
- No declarations necessary
In order to avail oneself of the expedited examination program in Israel under section 19A(a) of the statute, one has to provide a declaration giving the reasons why expedited examination is being requested, such the fact that the filing is Israel is the first filing worldwide. In order to establish one’s entitlement to small entity status, one has to file a declaration certifying that the applicant meets the criteria for that status. Such declarations require signing before a lawyer or patent practitioner. The preparation of those declarations raises the cost of requesting expedited examination.
In contrast, to obtain a quick examination at the UKIPO, one need not provide a declaration of any sort, but merely to pay a search fee and optionally examination fee upon filing, and and voila! Within about six months, you’ve got an examination report. If you want it faster, tell them, and they’ll probably oblige.
Similarly, to obtain small entity status at the USPTO, one need file no special papers. You just pay the provisional filing fee at the small entity rate. The USPTO assumes that the potential penalties to the applicant and the individual practitioner for deliberately lying about small entity status (unenforceability of the patent, suspension from practice or disbarment) are a sufficient deterrent to false small entity claims.
- No extra fees
Expedited examination at the ILPTO also requires payment of an additional fee, beyond the regular filing fee, which is not refundable if the request to expedite is denied. And if the request to expedite is granted, there’s yet another to fee to pay. No such fees are required at the UKIPO – you just pay the various filing, search and examination fees, and the UKIPO will act quickly on its own.
- Lower fees
The current fee for a US provisional is $280, $140 for a small entity. The fee at the UKIPO, with a request for examination, is £385, or about $510; it’s only £285, or $380, if you only request a search, and a mere £60 if you’re just looking for a filing date without a search or examination. The fee for filing a new Israel patent application is 2014 shekels, about $560 (reduced by 40% to $336 if you’re a small entity), the fee for requesting expedited examination is 300 shekels, about $83 (no small entity discount), and the fee for instituting expedited examination is 699 shekels, about $195 (no small entity discount available). You do the math.
- Simpler process
To file a US provisional, you log in once, upload your materials, click “submit” and pay the fees.
To file a UK application with a search and optionally an examination request, you or your UK associate log in once, file your documents and pay your fees.
But to do an Israel request for expedited examination, even if you submit the request to expedite as part of the initial filing of the patent application, and you pay the request fee with the initial filing fees, you’ll still need to log in again, because if the request to expedite is granted, you have to pay another fee to actually cause the application to jump the front of the queue. That’s another round of things to docket and a fee to pay.
Note also that, unlike the USPTO, the ILPTO doesn’t provide the option of storing credit card data – you have to enter that data every time you pay by credit card.
- Lack of PDAS Accessibility
If you file a US provisional application, by default your application will be available via PDAS, so that when you later file a PCT claiming priority from the provisional, you can tell WIPO to obtain a copy of the priority application, which it will dutifully do. No mess, no fuss.
The UKIPO is also part of PDAS. Put in the right information on your PCT Request, and WIPO does the rest.
Not so the ILPTO. If you file first in Israel and later file outside Israel, or file a PCT application using any Receiving Office other than the Israel Receiving Office, you’ll need to order a certified copy of that first-filed Israel application and then provide it (probably via FedEx or DHL) to the relevant patent office. Another administrative task to worry about and additional expense to incur.
- Certainty of non-publication.
A US provisional application will never be open for public inspection unless a follow-on US or PCT application claims priority from that provisional. At the UKIPO, one can abandon the application and it will not publish. In contrast, while in principle one can tell the ILPTO to abandon an application so that it doesn’t publish, the ILPTO doesn’t always follow those instructions, as we reported here. So if you’re unsure about whether you want to proceed down the patent route or attempt to maintain a trade secret, or even just to reset the Paris Convention clock and re-file your application, you’re safer doing it with a US provisional or a UK application.
- More user-friendly electronic filing
Immediately upon filing, the USPTO’s electronic systems gives an e-filing receipt that shows the application number, the fees paid, and names and sizes of the documents filed. And normally within minutes, the newly-filed application is visible in private PAIR.
In the UK, you can print of screen of everything you’re filing, and you can tell the UKIPO to email you the filing particulars and copies of the documents, which it will do within minutes of filing.
Then there’s the Israel electronic filing system. If you don’t pay fees, you can ask the system to send a confirmation that something was submitted, but that confirmation won’t list the application number or the names or sizes of the documents filed. If you pay fees, you can’t even ask the system to email you a filing confirmation, because the system kicks the user out of the filing system into a separate payment system, which doesn’t allow the user to back to the filing system.
Whether one pays fees or not in Israel, one has to wait at least 10 minutes, usually at least an hour and in some cases considerably longer than that, to be emailed a filing confirmation. The confirmation document itself only lists the application number, not the documents submitted. Instead, the ILPTO emails those documents back to the user (or, if they’re particularly large, emails a link to a site to download the documents that the user recently uploaded).
And it can take over 48 hours for the materials to appear in the ILPTO’s database in the case of already-published application; but since there’s no private PAIR function at the ILPTO, one can’t even see one’s own new application in the database. That ability will only come when the application is published at 18 months and becomes visible only to everyone, not just the person who filed it.
So given all that, why would anyone want to file first in Israel?
There is one situation in which I can see an applicant regularly filing first in Israel in order to obtain an early examination report, and that is where the applicant is one of the universities (or the university tech transfer office). The universities qualify as small entities, and since they are repeat players in that regard, they can prepare a single declaration to that effect. Since they have in-house counsel, obtaining a declaration that a given filing is the first one worldwide doesn’t cost them additional money. And in many cases, they won’t file a PCT unless there’s a commercial partner who’s footing the bill for things like obtaining certified copies of the priority application. So for these and other reasons, it may make sense for the universities to file first in Israel.
As for the rest of us, though, until it becomes easier and less costly to get our applications examined quickly in Israel, filing first elsewhere will continue to be the norm.