Yesterday, as part of its initiative to institute a provisional Israel patent application, the ILPTO held a Zoom chat. I’ll report on the parts of that chat that pertain to the creation of a provisional application filing track in a subsequent post. Today I want to discuss a tangential point that came up briefly, during the initial remarks of the Commissioner, Mr. Ofir Alon.
Mr. Alon noted that about 900 patent applications are filed per year at the Israel PTO as priority applications, i.e. as the first filing anywhere. Under one of Mr. Alon’s predecessors, a program was instituted to allow applicants to fast-track such applications, but it involved submitting a declaration averring that this was the first filing worldwide, and that the applicant intended to claim priority from the newly-filed Israel application. Mr. Alon changed that, so that now it’s sufficient at the time of filing to check a box indicating that this is a first filing. And yet, in only about 250 of those 900 applications are requests for fast-track examination filed. Mr. Alon wondered why.
While I can’t speak for all applicants, one thing I can say is that many applicants are not interested in a full-blown examination report at such an early stage of the patenting process. At that stage of the patenting process, smaller applicants may be seeking funding from investors, or attempting to make a deal with a potential strategic partner. Such applicants may want to show that one or more patent applications have been filed. They may also want search results from a good patent searching authority to assess where their technology stands against the prior art, how they might need to modify their invention or what additional research they might want to conduct, and how the application might need to be substantively improved during the priority year. There’s a good chance they’ll want to show such search results to the potential investor or strategic partner.
What they may not want at that stage, though, is a negative examination report. Search results that show X- and Y-level references can easily be explained to third parties. Explaining a negative examination report, particularly if the examiner hasn’t really understood the invention, takes more effort, and such a report can be more prejudicial than a mere search report that lists references.
Unfortunately, what the Israel PTO presently offers to fast-track applicants is an all-or-nothing product: a quick search and examination report. There’s no middle ground offering a quickly-generated search report only. In contrast, the UK, for example, allows applicants to file their applications and to pay only a search fee or both a search and examination fee at the time of filing. If they pay only the search fee, then they usually get a search report within a few months. This approach also has the attraction of somewhat reducing the up-front fee to be paid at the time of filing.
If Mr. Alon wants more use to be made of first filings in Israel and the search capabilities of the ILPTO examination corps, he should consider offering the expedited issuance of a search report only, without an examination report. This could be done, for example, by splitting the patent filing fees. Presently, applicants pay a single fee that covers filing, search and examination. This could be split into three separate fees, covering each of those tasks. Applicants who file first in Israel and are interested in quickly receiving only an examination report would then be able to indicate that that is what they want by paying only the filing and search fees, and indicating they want expedited treatment. If desired, they could then pay the examination fee at a later date.
As I’ll explain in a subsequent post, splitting the fees this way could also help facilitate the creation of a provisional application filing mechanism in Israel.
Addendum - June 30:
In yesterday's post I neglected one other important point: cost. The cost of fast-tracking an application in Israel is the filing fee (2047 shekels, small entities can get a 40% reduction), plus a fee for requesting the fast track (304 shekels); if the ILPTO says yes, then a further fee is due (710 shekels). Altogether that's 3061 shekels, or about 720 pounds, or 2242, about 530 pounds, for a small entity. The filing fee for a GB application, if paid at the time of filing is 60 pounds, the search fee for 25 or fewer claims is 150 pounds and the examination fee, if there are no excess pages, is 100 pounds. And those fees can be paid in one go, rather than in stages as is required in Israel.