The ILPTO announced today that as of May 1, 2019, it will be a part of WIPO’s Digital Access Service. (An announcement to this effect appeared on WIPO’s site more than a week ago, on March 11.) This means that patent applicants who file in Israel who claim priority from applications on file with DAS will not need to provide the ILPTO with certified copies of those priority documents, but merely instruct the ILPTO to obtain such copies via DAS. Given that that vast majority of foreign-originating filings in Israel are national stage PCT filings, where WIPO is already in possession of the priority documents, this aspect of Israel’s DAS accession, while a welcome development, is not expected to have a significant impact.
Where Israel’s DAS accession will likely see more use – but not too much more, for reasons that will be explained shortly – is among applicants who file first in Israel. Previously, such applicants who were then planning to file applications outside Israel that claimed priority from the IL application needed to obtain physical, certified copies of their patent applications (for a fee of about $25), and send those to the foreign patent offices. This included applicants who filed their PCT applications at RO/IB. Now those applicants can just tick a box when they file their priority application at the ILPTO, pay the fee for the certified copy (at the same time they pay the filing fees), and voila, the ILPTO will give WIPO a copy of the priority application, which will then be available to other participating DAS offices.
It’s worth noting that for the last few years, Israel-first applicants who subsequently filed their PCTs at RO/IL did not need to order certified copies their priority applications, but had the option of merely paying the certified copy fee and having the ILPTO give itself a copy of the priority application, which RO/IL would then convey to the IB. So in this respect, Israel’s DAS accession hasn’t really changed anything.
In fact, now that applicants with Israel priority applications will be able to get their priority documents to the IB without having to go through the hassle of sending a physical copy to Geneva, I suspect there may be an uptick in the number of PCT applications filed by Israeli applicants at the IB. This is because one can file at the IB using ePCT, which both allows one to preview what the application documents will look like before filing, and to see them almost immediately thereafter in ePCT. Filing at RO/IL provides neither of these advantages.
As noted in a blog post last year, there are several reasons why many Israeli applicants file their priority applications elsewhere. Lack of availability through DAS was one of those shortcomings, so for people who would like to see more priority filings in Israel, Israel’s accession to DAS is a step in the right direction. However, the other reasons for initially filing outside Israel remain. For example, the fee for a US provisional application is still less than the fee for filing an Israel application, and since the ILPTO will charge to provide a copy of the priority document to DAS, whereas the USPTO doesn’t charge to make provisional applications available, the fee difference is now even greater.
Nevertheless, on the whole the ILPTO, and Commissioner Ophir Alon in particular, is to be commended for this development.
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