America-Israel Patent Law

You Can’t Make This Stuff Up, Part 253: Expedited Examination, Indian Style

One of the difficulties with patent examination is that it can take a long time.  If, as an applicant, you’re not in rush, that’s fine.  But sometimes you don’t want to wait.  For example, you may be poised to bring a product to market soon, and want patent protection as soon as possible.  Or you’ve gotten word that a competitor is about to launch a competing product.  Or you’re not so young, and you’d like to see the patent issue in your lifetime. 

Many patent jurisdictions enable one to cut to the front of the examination queue under certain conditions.  In the USA, among other things, you can “petition to make special” based on the inventor’s age, or you can pony up $4000 and file your application as a “track 1” application.  In Israel, you can file a petition to move the examination forward due to inventor age, impending launch of a competitor product, or other compelling reason, plus there’s a program for advancing examination of “green” patent applications.  And both jurisdictions have “patent prosecution highway” programs that will fast-track examination based on favorable search or examination results of corresponding applications in certain other jurisdictions.

We recently received word from several associates in India that amended rules have been ratified that will facilitate the fast-tracking of applications on another basis.  Specifically, if the applicant or applicants are all natural persons, and one of them is a woman, then you can fast track the application.  No explanation for the criteria to be used in determining an inventor's womanhood were provided.

Undoubtedly, if such a rule were proposed in USA, the resulting fireworks during the comment period would warrant a few bags of popcorn.

Israel Joins the Hague System for Designs

Last week, Israel deposited the instrument of accession to the Geneva Act (1999) of the Hague Agreement.  The Hague Agreement is to designs what the Madrid system is to trademarks: an international filing system that enables an applicant to obtain design protection in several countries at once.  This accession to the Hague Agreement means that as of January 3, 2020, Israelis will be able to file a single design application that covers over 50 countries, and applicants from those countries can include Israel in their Hague design applications.  Announcements of the event can be found in English on WIPO’s site and in Hebrew on the ILPTO site.

Israel’s accession to the Hague system is the culmination of many years of work, principally by Howard Poliner and his team at the Justice Ministry, which drafted the new Designs statute that came into effect last year (which contains the legislative provisions that enabled Israel’s accession to the agreement), as well as the implementing regulations.  The former legislation needed enactment by the entire Knesset, the latter legislation needed the approval of the Constitution, Statute and Law committee and the Justice Minister.  And the accession needed cabinet approval as well, which hasn’t been easy to come by in a year that has already seen two election cycles.

Related blog post: an ill-fated attempt by the ILPTO to facilitate partial use the Hague systems for designs in the absence of legislation permitting such use.

Express Abandonment of an Israel Patent Application – A(nother) Disconnect Between the Statute and the Electronic Filing System

This post arises from a question that was put to me by a colleague.  He wanted to expressly abandon an Israel Patent Application, but when he went into the electronic filing system to do so and chose “cancellation of patent” as his action, the system told him, “Nyeah nyeah nyeah, you can’t do that in this application”.  (Ok, the teasing was only implicit, but the result was the same.) 

It turns out the system wasn’t wrong.  Section 21B of the statute says in black and white that up until the time of grant, an applicant can cancel (לבטל) his patent application.  Section 73A says that a patentee may request that the Commissioner erase or cancel the patentee’s patent (בעל פטנט רשאי לבקש מהרשם למחוק או לבטל פטנט שניתן לו).

Before continuing, a few words about cancellation/erasure of a patent. 

First, the difference between cancellation (bitul) and erasure (mekhika) is the former has the effect that the patent was never granted (73A(a); it's like the annulment of a marriage), but erasure only takes effect from the day on which the request to erase was filed (73A(b)).  It’s not hard to envision situations in which a patentee would prefer one to the other. 

Second, third parties can oppose the cancellation or erasure of a patent.  I’ve never understood the rationale behind that provision, but I suppose it’s there to protect, say, someone who claims he’s the actual owner of the patent and will be harmed by the cancellation/erasure thereof.  And for those US practitioners who were apoplectic about last year’s SCOTUS decision in Oil States, which said that patents aren’t property but a franchise, the ability of a third party to object to a patentee disposing of its property suggests that a similar situation obtains in Israel.  But I don’t think that question has been tested yet.

Third, third parties can request cancellation (but not erasure) of a patent (73B), whereas they can't request cancellation (or erasure) of an application, presumably because they can oppose the grant of the patent, inter alia on grounds that they are the actual owner of the patent. 

Now back to our story.  Clearly, 21B controls in my colleague’s situation, and he should be able to cancel his patent application.  So what was the problem?  Well, let’s look at the choices listed in the electronic filing system.

The first choice is בקשה לביטול פטנט על ידי בעל הפטנט לפי סעיף 73א, request to cancel a patent by the patentee per section 73A.  This apparently is what my colleague chose, and since he was dealing with a patent application rather than a granted patent, the system didn’t let him choose this action for his patent application.  When properly selected, this action requires payment of a hefty fee (over 4000 NIS).  Notwithstanding the title, which refers only to cancellation, presumably this action covers both cancellation and erasure, and the patentee is expected to explain in its accompanying letter (which the EFS requires) which action it seeks. 

Curiously, there is no choice for the corresponding cancellation action by a third party per 73B.  So I’m not sure how, as a third party, one would file a cancellation request, since according to the regulations such requests must be filed via EFS.

The next action listed in the drop-down list is בקשה להזנחת בקשת פטנט, which can be translated as “request to abandon a patent application”.  This action can be selected for a patent application, and there's no fee associated with it.  Presumably this is how an applicant cancels his application per 21B.  But the description is confusing, because the word used in 21B is ביטול, “cancellation”, whereas the word used in the EFS description is להזניח, “to abandon”.  But neither the word להזניח nor any variations of it - no words with the root זנח - appear in the statute, and the EFS description doesn’t mention 21B.

This confusion is heightened by the next choice: בקשה לסגירת תיק לפני פרסום לפי 16א, “request to close a file before publication under 16A” (i.e. before 18-month publication).  As with the “Request to abandon a patent application”, no fee is required for this action either.  But what's the difference between a request to close a file before publication, and abandonment?  If one abandons the application before publication, then it shouldn’t publish, right?  Perhaps the ILPTO fast-tracks the “close file before publication” action.

Moreover, as with “abandonment”, the word סגור (“close”) and it variants only appear in the statute with respect to judicial-type proceedings that are conducted behind closed doors. (The word מסגרת, “framework”, which shares the same root, סגר, also appears a few times in the statute.) 

I also note that we blogged a few years about someone who closed his file before 18-month publication, and the ILPTO published it nevertheless.  So there’s no guarantee that closing a file before the 18-month publication date will keep the file out of the public eye.