On Saturday night, March 21, the Israel cabinet agreed to reduce the number of public sector employees still working. Yesterday, March 22, the Israel PTO published a four-page explanation of how it is implementing this decision, which remains in effect until May 1, 2020 or until the ILPTO publishes a new notice, whichever comes later. [Update, March 24: the ILPTO has now published its own English translation of the notice.] The main points are that:
- many employees were already working from home, and will continue to do so; registration certificates will continue to issue, and the Patents, Trademarks and Designs Journals will continue to publish at the end of each month;
- the ILPTO will strive to meet its obligations under treaties (e.g. providing PCT search reports on time), and to issue renewal certificates on time, but certain services (recording assignments, licensing new practitioners, notices of formal defects in PCT national stage applications, daily notices of outgoing correspondence) will be delayed at least until after Passover (April 15, 2020);
- the ILPTO will continue to accept submissions electronically and, for those parties permitted to do so, in person or by regular post, but in-person meetings and proceedings before the ILPTO, including hearings in adjudicatory proceedings, will remain in suspension;
- deadlines for filing new applications, responses to office actions and the like will not be held in abeyance, but non-statutory deadlines in adjudicatory proceedings will be suspended;
- applicants or other parties in proceedings before the ILPTO who are unable to timely make submissions as a result of coronavirus-related circumstances may request extensions or reinstatement based on those circumstances, which will be taken into account when deciding whether or not to grant the extension or reinstatement;
- in cases in which the ILPTO has an announced policy capping the number of extensions, that cap will be temporarily be waived, but statutory deadlines (e.g. for opposing a patent application or requesting a patent term extension) cannot be waived;
- in order to allow applicants/owners to file requests for extension/reinstatement, at least until May 1, 2020, no files will be closed for an applicant’s/owner’s failure to take an action, nor will the ILPTO send pre-file closure notices (which in many instances are a prerequisite for closing a file).
We elaborate on each of these below.
There are two ways in which the coronavirus outbreak affects the ILPTO: fewer people are physically in the ILPTO, and by order of the Cabinet, the ILPTO’s workforce needs to be reduced; and parties with matters before the ILPTO may be unable to meet deadlines. Yesterday’s letter clarifies how the ILPTO is dealing with both of these aspects.
In the main, the ILPTO is attempting to maintain a “business as usual” approach. Thus the ILPTO will still do intake on new patent, trademark and design applications; examiners will still examine cases, although the pace of examination will slowed; the Office will continue to publish the Patents, Trademarks and Designs Journals each month; and the Office will issue registration certificates, although the Notice recommends that, given possible disruptions in Israel Post, registrants download copies of the certificates. The ILPTO will likewise strive to meet its obligations under international treaties, such as PCT examination, and it will deal with requests for immediate processing of applications, e.g. due to the inventor’s age.
However, certain less-critical functions will be suspended altogether: the processing of changes in ownership or the name of the applicant/owner, recording of liens and the like (except for changes in local address for service, which will still be processed); the processing of registration of new practitioners and registration for practitioner examinations (except for complaints against practitioners); the sending of notices regarding formal defects in PCT national stage applications; and the emails that the ILPTO sends to practitioners, informing them of the cases in which correspondence issued, to enable practitioners to track that correspondence (in case a piece of correspondence wasn’t received).
For over a week the ILPTO has not been receiving the public, and this will continue, which means inter alia that there will be no in-person examiner interviews, nor will any hearings in adjudicatory matters take place. The notice states that there will, however, be someone answering the telephone during regular business hours. With most personnel remaining at home, it is unclear if callers will be able to obtain the clarifications they seek, even if they get through to the ILPTO.
Perhaps of greater to interest to parties with deadlines in matters before the ILPTO is the question, “Whither my deadline?”
The first thing to note is that the Commissioner has discretion about granting deadlines in many matters, but certain deadlines are set by statute and cannot be extended. Specifically, in patent matters, the following deadlines are not extendible:
- for third parties to request immediate examination of another’s patent application per §18(c);
- for filing an opposition to patent a application under §30,
- for payment of renewal fees per §56 and §57,
- for opposing the reinstatement of a patent under §61,
- for notifying the Commissioner of the granting of extension orders for reference patents in the USA and Europe under §64E(e)(2),
- for opposing the grant of a patent term extension (PTE) under §64F,
- for paying the fees to keep a PTE in force under §64M,
- for submitting a PTE application under §64O,
- to oppose under §73(c) the revocation or cancellation of a patent, and
- to oppose a change in the Register under §170(c).
Similarly, the deadlines for opposing a trademark registration and for paying trademark renewal fees per §24 and §33 of the Ordinance cannot be extended, and the deadlines for certain actions in design registrations are likewise not extendible. (From the wording of the Notice, it sounds like the Commissioner would like to have the authority to extend some of these deadlines, but knows that he doesn’t, and may seek a change in legislation at a later time to address this.)
Second, in all other cases the Commissioner has discretion to grant extensions. In some instances, though, he has published notices according to which, a priori, he has limited the number of extension available. Thus, for example, during the substantive examination phase of a patent application, the ILPTO’ stated policy is that it will grant extensions without a showing of cause upon the payment of a fee, but that it will not grant more than four months of extension at one time, and not more than 12 months’ extension total over the course of examination. The Notice says that at least until May 1, 2020, these caps will not be emplaced, and that extension periods falling within the period of March 22, 2020 through May 1, 2020 inclusive will not be included in capped period.
In some instances in which the Commissioner has discretion to grant an extension or to reinstate an application or registration, there is a criterion for granting the extension/reinstatement, either by dint of the statute or self-imposed by the ILPTO. Thus, for example, a patent applicant who fails to file an application within the priority year may request an extension for the priority claim, and per §164 the Commissioner may only grant such extension if he determines that the failure to timely file in Israel was due to circumstances over which the applicant had no control and that could not be prevented. In other instances, a showing of “reasonable cause” must be made. The Notice points out that inability to file a document or pay a fee on time due corona virus-related circumstances may constitute circumstances that amount to “reasonable cause” or circumstances over which the applicant had no control, but that each case will be judged on its own merits. Requests for extension on such basis may be made either before the initial deadline, or retroactively.
The Notice states that deadlines in adjudicatory proceedings are suspended at least until May 1, 2020 or further notice, whichever is later, but that the adjudicators will continue “to work as normal”, which we understand to mean that decisions in cases in which all hearings and submissions have concluded will continue to issue.
The Notice says that, in any event, in order to allow parties that have missed deadlines to make their case for extension/reinstatement, until May 1, 2020 or further notice, whichever is later, no files will be closed for failure to take a required action, nor will the ILPTO send pre-file closure notices, which in many instances are a prerequisite for closing a file.
Finally, it is to be noted that the ILPTO would have been closed anyway for Passover, from April 8 through April 15, 2020, inclusive. Hence any deadlines that fall on these dates would in any event have been statutorily deferred to April 16, 2020, and thus filings or payments due on these dates will be considered timely if made on or before April 16, 2020.
Update, March 27:
(a) the ILPTO published an English version of its March 22 announcement.
(b) on March 25 the ILPTO issued a further clarification in both Hebrew and English: since the statute imposes a 90-day limit to record a pledge against a patent, the ILPTO will continue to process the recording of such pledges. And if you're a patent practitioner trainee and you're now on unpaid leave, you should read the announcement