Two years ago, I wrote a post on this blog entitled “Why we do our first filings outside of Israel”. I wrote it in response to the complaint of a high-level ILPTO official about the fact that so many Israeli entities file first elsewhere, principally at the USPTO, in the guise of a provisional application, but sometimes at the UKIPO. I set forth several reasons why entities might do this, including the relative high fee for filing first in Israel, and the lack of subsequent DAS access for applications.
On June 14 the ILPTO announced that it has drafted proposed Rules that would facilitate the filing of a “temporary” application in Israel, which would compete with the filing of US provisional applications. The ILPTO did not include a copy of the draft Rules; apparently this omission was deliberate. Instead, the ILPTO solicited input from the public on its proposal. Parties wishing to provide initial input can answer this online questionnaire. There will also be three public meetings, on June 28, July 14 and July 19, to discuss the proposal and, one hopes to solicit additional public input. As corona-virus related restrictions are still in place, presumably those meetings will be held via videoconference. Details of how to register for one of the meetings are contained in the announcement itself.
According to the announcement, what is being considered is a lower-fee application that would go abandoned after one year unless certain additional steps were taken to complete its filing as a regular patent application. Coupled with the fact that Israel joined the DAS system last year, this would be a significant inducement for Israeli entities to file first in Israel rather than first filing a US provisional application. A bonus is the fact that the ILPTO already accepts color drawings at no additional cost and without the need to request permission to submit color drawings, as is the case at the USPTO.
The announcement didn’t say what would happen with initial or 18-month publication. Per section 16 of the statute, the ILPTO presently publishes notice that an application has been filed shortly after the filing of the application, and although the details provided are minimal (title of application, applicant, and priority claims), that's still more than the USPTO publishes about a provisional. Indeed, the USPTO isn't supposed to publish anything about a provisional until that application serves as the basis of a priority/benefit claim for a non-provisional application that is published at 18 months from priority, so if the applicant does nothing with the provisional, its filing can remain a secret. Sometimes the USPTO goofs and publishes a provisional that the applicant decided should not see the light of day, but that's extremely rare, and is usually the result of a third party mistakenly claiming the benefit of the wrong provisional application. On the other hand, even if these “temporary” applications aren’t intended to be published if they don't serve as the basis for a priority claim or aren't converted to a regular application, we know that the ILPTO has published at least one application that was expressly abandoned, so a mechanism to ensure the maintenance of secrecy would be necessary.
If the ILPTO could at least also address the publication issue, in addition to the cost, that would probably push most Israeli entities that are simply looking to establish a filing date to file first in Israel rather than first file a US provisional.
Even if the ILPTO were adopt a mechanism for filing a “temporary” patent application, there are drawbacks that would still remain, although I think there would be only a handful of cases in which those drawbacks would mitigate against using the ILPTO as an office for initial filing. For example, the ILPTO’s electronic filing system for patents is as bad as it was two years ago (and indeed since its launch in December 2015): it still doesn’t provide a filing acknowledgment immediately after filing, and instead of giving filers immediate access to the online database to see what was filed (as registered USPTO users can do with private PAIR, or ePCT user can do with ePCT), it still sends back to the filer all of the pdf files that were submitted, invariably with about 2K of data added to each file. If you pay fees, it still kicks you out of the system to a separate payment system. And it still doesn’t allow the storage of payment methods, so that credit card data needs to be entered time a payment is made, and there’s no equivalent of the USPTO’s “Financial Manager” that allows users to see all their payments and organize them according to different criteria. But as noted, while it would be nice for the ILPTO to address these issues, in most cases they wouldn’t tilt the scales in favor of foreign initial filing. And on the plus side for the IL-EFS, I have NEVER seen the ILPTO mangle a document the way that the USPTO routinely does without warning, or the way WIPO does with warning.
If the ILPTO wants to make things really attractive versus a US provisional, then it will also simplify things for filers, so that pro se applicants will be less likely to mess things up for themselves. The ways in which pro se applicants can do themselves harm with the filing of a provisional – strictly from a formal ministerial aspect, without getting into potential substantive problems such as sufficiency of disclosure – is best left for a separate blog post, but suffice it to say I have billed many hours pulling a pro se applicant’s chestnuts from the fire due to problems arising from how it filed its provisional. If the ILPTO designs a system that mitigates the risks of that happening, that would be A Good Thing.
The bottom line is, I would love to have a reason to keep my clients’ money in Israel rather than give it to the USPTO, so the fact that the ILPTO is prospectively, proactively seeking public input, and seems committed to making this happen in a way that will help applicants, is commendable.
The foregoing discussion concerned applications filed to establish a filing date. I’m not sure if the ILPTO is as well-poised to deal with cases in which the applicant wants an early examination (in which case the application would be filed a priori as a regular application), but it has also taken steps in that direction. For example, it no longer requires a full declaration to expedite examination of an application that is first filed in Israel; it is sufficient for the applicant or practitioner to indicate at the time of the filing that the application is the first filing worldwide. However, it’s still necessary, after the application has been allocated an application number, to submit a separate request to expedite examination, and to separately pay an additional fee to expedite examination. In the UK that can be done at the time of filing. So the ILPTO will need to streamline this part of the process if it also wants to compete with the UK for this work.
Finally, while I can understand the ILPTO being reluctant to circulate a draft document that may yet undergo many changes, there is one legal aspect to the ILPTO’s proposal that I wonder about, which might have been addressed in a draft document. Specifically, I wonder how this change can be accomplished solely through Rules, without effecting a change in primary legislation. I’m sure that the people at the ILPTO working on this have given this question enough thought to be convinced that it can be done, and that their thoughts will be made public in due course.