Two years ago, I blogged about how something that started out as a good idea of the Israel PTO was eventually written into the statute and then interpreted by the ILPTO in too limiting a way. As I wrote then:
“The story begins in the late 1980’s, when the Israel PTO had a significant backlog in the examination of patent applications. The Commissioner at the time had (or had suggested to him) a bright idea: why carry the load all by yourselves when there are other patent offices examining related applications?
"Thus was born Commissioner’s Circular no. 9, which said that if applicants for Israel patents amended their claims to correspond to claims granted in corresponding patents in certain other jurisdictions, notably the USA and the EPO, then the ILPTO would view those claims as meeting local criteria for novelty, inventive step, unity of invention, sufficiency of description and clarity of the claims.
"The idea proved to be so good that in 1995, during a major round of statutory amendments, this policy was written into the statute as §17(c).”
The previous blog post pointed out that although the ILPTO was once liberal about allowing applicants to change method of treatment claims to Swiss-style claims and still allow the application under 17(c), it subsequently changed its view, allowing the statute to destroy the very flexibility and creativity that gave rise to the statutory amendment in the first place.
Today I heard about another case in which the ILPTO is being short-sighted about the application of §17(c). This time, it has to do with the interpretation of what constitutes a “corresponding patent”.
The relevant wording of §17(c) says, in English translation (adapted by me from the WIPO Lex text, which contained a mistake), that one of the following must be true of the foreign patent and the Israel patent application:
* * *
(a) priority was lawfully claimed for the patent application in Israel under section 10 [Paris Convention priority – DJF], from the corresponding application;
(b) priority was claimed from the patent application in Israel for the corresponding application under the Law applicable thereto;
(c) priority was lawfully claimed for the patent application in Israel from another patent application submitted in a Member State, and such application is the basis for a priority claim for the corresponding application under the Law applicable thereto * * *
Simply put, the Israel application and the foreign patent must share a priority claim: either the IL application claims priority from the foreign patent, or vice versa, or the two of them claim priority from a common third application. Do you notice something missing from that?
Suppose one files a PCT application directly as the first filing, then enters the national phase in Israel and another jurisdiction that can in principle serve as a basis for a §17(c) request, say, Japan. The ILPTO evidently has taken the view that in that situation, if the JP case is granted, it can’t serve as a basis for the §17(c) request, because, strictly speaking, the IL and JP cases don’t share a Paris Convention priority claim, since no such claim was made in the PCT application.
That position is conceptually absurd. The whole point of §17(c) practice was to enable allowance in Israel based on an allowance abroad, provided there is a nexus between the Israel and foreign application. There can be no greater nexus than if the two cases are both national phase filings of the same PCT application. The fact that the PCT application does not itself claim Paris Convention priority should be of no moment, and should not preclude examination of the Israel case under §17(c). But someone at the ILPTO has evidently decided to be hyper-textual about this, and has told an applicant in this situation that their §17(c) request is a no-go.
This isn’t just a pity in that pre-1995 (or even up around 2008 or so), the ILPTO wouldn’t have batted an eyelash about this, and would have realized that the situation I just described deserves the same treatment as if the two applications shared a common Paris Convention priority claim. It’s that the ILPTO could be more cooperative about this if it wanted to be.
For example, it appears that in order to implement provisional application filings in Israel, the ILPTO plans to take a slightly liberal view of what §11 of the statute says, and to split the filing fee into two parts. (In a previous post, I recommended splitting the filing fee in a different context, and I’ll discuss the ILPTO’s proposal regarding provisionals in a subsequent post.) Because §11 delegates the fee authority to the ILPTO, the ILPTO will be able to implement provisional filings, without necessitating a change in the statute, but merely a change in the Rules, which are easier to amend. But the whole thing is still predicated on a particular reading of the statute.
In the case of a first-filed PCT application, the ILPTO could say that the two applications DO claim a common priority, viz. the PCT filing itself. Or, it could do an updated version of the old Circular no. 9, for example saying that it regards an application in the situation described above as fulfilling the requirements of §17 and §18 of the statute. Its decision to be hyper-textual and deny eligibility for examination per §17(c) evinces a particular sort of small-mindedness, the basis of which is difficult to fathom.