As reported previously here, here and here, late last spring the ILPTO proposed instituting a mechanism for the filing of provisional applications in Israel. In an effort to ostensibly gather input from the public, the ILPTO held two Zoom meetings, one in June in one in July. I say “ostensibly” because in one of the meetings, the Commissioner, Ofir Alon, effectively admitted that he was going to move ahead with this, an admission which prompted a senior partner from one of the larger firms, who was opposed to instituting such a mechanism, to express some dismay at having wasted his time at the meeting.
I’ll note at the outset that at the time, the ILPTO did not put forward any concrete proposals for how a provisional filing scheme might work. However, after initially wondering if this could be accomplished solely via regulation, my own view on the matter was that it would be easier to do this via regulation (which only requires approval from the Justice Minister and Constitution & Law Committee of the Knesset) rather than by statutory amendment (which requires approval of the full Knesset). And while initially I was unsure that this was possible solely via regulation (as expressed in my initial blog post), I subsequently came to conclude that, unlike many things the ILPTO does that are ultra vires, here it would be possible to legally effect the change via regulation.
In particular, the statute says that the fees for filing are set via regulation. Presently, the relevant regulation sets a single fee for filing a patent application, which covers filing, search and examination. There’s no reason this couldn’t be broken into two different fees (filing (small), search + examination (large)), or three different fees (filing (small), search (larger), and examination (also larger)), with the filing fee being due upon filing or shortly thereafter, and the other fee(s) being due within a year of filing. If you don’t pay the other fee(s), your application goes abandoned. [In one of the Zoom calls, I pointed out that many applicants would prefer the option of only getting a search report, without an examination report, and that England gives the latter option, but Commissioner Alon indicated his preference for the former...but either way would create a provisional filing mechanism.]
Last week the ILPTO published draft regulations for comment that are intended to establish what is effectively a filing scheme for a provisional patent application. I have not yet looked at them; the second post of this series will include my comments once I’ve digested the proposed regulations. Comments are due by February 23.
Even if the proposed changes in the regulations follow the path outlined above, there is at least one aspect of an ideal provisional filing regime requiring a statutory amendment. Presently, section 16 of the statute requires that the title and name of applicant be published shortly after filing. Inasmuch as a US provisional is not published unless it serves as the basis for a US benefit claim/Paris Convention priority claim in an application that publishes at 18 months, section 16 would need to be rescinded to make Israel provisional filings as attractive as US provisional filings. This may happen in any event: since most patent filings in Israel are PCT national phase filings that are published soon thereafter under section 16A (18 month publication), the Israel PTO is pushing to rescind section 16, since it in effect doubles the ILPTO’s work, by forcing the ILPTO to publish notice of the filing of a national phase application twice, once under section 16 and then again under section 16A.
There is one other aspect of last summer’s Zoom meetings that bears mention, but it has nothing to do with the technical aspects of implementing a provisional filing scheme. What amazed me was that one of the large firms had several senior people in the first meeting, all of whom raised specious arguments against implementing such a system, e.g. asserting that filing provisional applications can be deleterious to applicants’ rights, and given the low cost, many applicants think they can do it on their own but stand to inflict harm upon themselves. Well, yes, there’s always a risk to anyone acting pro se vis-à-vis the legal system and/or the administrative state that they’ll mess themselves up, but that’s not unique to patents. That’s why people like me hire a lawyer who knows something about property transfers when buying or selling homes, even though I have the right to represent myself. But the right to act pro se is always there, and unless the litigant is shown to be mentally incompetent, we don’t take that right away. Same thing for patents. Paternalism is not an argument against implementing a provisional filing system. In fact, one of my old bosses, whose views I don’t always share, made exactly that point early in the first Zoom call: the institution of US provisionals exists, not implementing a provisional filing scheme in Israel is not going to make US provisional go away, so why not do it?
Clearly the partners at the firm in question had spent not a small amount of time devising their cockamamie arguments, and divided up the presentation of the various points among themselves. This is the same firm that in the Zoom call with the Israel PTO last March dealing with possible extensions of deadlines argued positions that were in the firm’s interest but not in its clients’ interest, as reported here. But whereas in that case, the firm’s financial incentives were clear, here I didn’t see how facilitating provisional filings in Israel would be inimical to their business interests. The best explanation for their take was provided by a colleague who has been involved in the patent scene in Israel longer than I have, who quipped to me, “Historically, [firm X] doesn’t like change until they are certain they can monetize the change.” Apparently the partners at this firm didn’t think they stood to gain enough from Israel provisional filings. Since over 6 months have passed since those Zoom meetings, maybe now those same partners have figured out to monetize Israel provisional filings, and won’t spend significant time and money lobbying against the adoption of the proposed provisional filing regime.