America-Israel Patent Law

MOJ and Israel PTO Ask for Suggestions for Amending the Regulations for Patent Oppositions

This morning the MOJ and Israel PTO posted a call for suggestions for changes to the regulations governing patent oppositions in Israel, and the ILPTO sent out an email notifying recipients of this fact.  The deadline for response is June 30, 2021.  A similar call for comments was published in 2016, and while many comments were elicited (posted here), no action resulted.  Apparently the powers-that-be now wish to move ahead with this.  

I've blogged about patent oppositions in Israel before, but for those who aren't familiar with the opposition procedure, it goes roughly like this: the examiner says the application is allowable, the applicant pays an "acceptance" fee, and a notice that the application has been "accepted" is published in the Patents Journal.  Any party then has three months to file an opposition to the grant of the patent, and then another three months to file its statement of case. The applicant then has three months to file its statement of case. Then the opposer has 3 months to file written evidence, the applicant has three months to file its evidence, and then the opposer can file further written evidence to address points raised in the applicant’s evidence.  Then there’s an oral hearing at which the parties cross-examine witness, followed by written summations (oral summations are common in the USA but rarely used in any litigation in Israel).  Eventually the Israel PTO issues a written decision, which is appealable to the district court.  The whole process, without appeal, usually takes a minimum of two years, and in practice longer, since parties (or more accurately, their lawyers or patent agents) often agree to extensions. If the applicant wishes to amend its claims during the opposition, this can further prolong the proceedings.  The applicant has no enforceable rights until it has a patent in hand, viz. until the ILPTO issues a decision upholding the grant of the patent.

One important point to note: the pre-grant oppositions are authorized by the statute, and thus can only be done away with, or modified to post-grant oppositions, by statutory amendment, which requires approval of the full Knesset.  The particular rules governing the opposition procedure are set by regulation, which requires only approval of the relevant Knesset Committee and the Justice Minister, and therefore are a bit easier to adopt.

I reproduce below my own comments from November 2016, which explain many of the problems with the current system.  My views haven’t changed in the interim, so I've yet to decide if I will change anything from what I wrote four-and-a-half years ago.    

Shalom Ayelet.

I write in response to the “קול קורה” asking for comments on the opposition procedure in Israel.  It’s not clear from the request itself if a change from pre-grant to post-grant opposition is going to be considered at this time, but I understand from other sources that the MOJ is interested in comments on making the existing opposition proceedings move along more quickly.  So I’m not going to discuss pre- vs. post-grant oppositions, despite the fact that I think Israel should transition exclusively to a post-grant proceeding, and that it’s inefficient to not discuss such a transition at this time.

By way of background: I’m not being paid by anyone to write these comments.  I deal primarily with helping inventive entities developing strategies for protecting their intellectual property, and I prepare and prosecute patent applications.  I also have a fair amount of experience with oppositions from the side of patent applicants, in several fields, and I’ve worked on behalf of local generic pharmaceutical companies in assessing their positions, or potential positions, in view of pending applications.  In short, I’ve seen the process from both sides, and I have no ulterior motive here: I call it like I see it, based on my experience.

A. It’s too easy to oppose

The single biggest problem I see with the existing opposition regime is that the barrier to entry for opponents is too low.  This leads to the filing of unjustified oppositions and unnecessary prolongation of the patent grant process.  To explain:

Presently, anyone has three months from the date of publication under section 26 to file a notice of opposition.  They then have a period of an additional three months to file their pleadings (כתב טענות).  Typically this document is a pro forma statement that “the claimed invention lacks utility under section 3, lack novelty under section 4 and lacks inventive step under section 5, the description is insufficient under section 12 and the claims do not reasonably arise from the specification under section 13”.  The אגרה for filing a notice of opposition isn’t particularly high, and the attorney fees for preparing a one-page notice of opposition and a one-page כתב טענות are pretty low as well. 

Thereafter, the applicant will file pro forma pleadings of its own within 3 months, denying the opponent’s contentions.  This is supposed to be followed by written evidence from the opponent within 3 months.  Often, however, at this stage, or sometimes even at the stage of the כתב טענות (!), the opponent will request an extension, and usually, the applicant will agree, because the applicant knows that it may later find itself in a situation in which it needs an extension, and therefore wants the opponent to be accommodating in the event that happens.  This is even more true in situations in which the same two parties, represented by the same counsel, have multiple oppositions pending simultaneously, since acquiescence to an extension in one case can be traded for acquiescence to an extension for the other side in a different case. 

If the opponent chooses not to file evidence, it can usually get the applicant to agree to have the opposition dismissed without a request for costs.  More on that below. 

The point here is that it is ridiculously easy for someone to oppose the grant of a patent application, and effectively delay the grant of the patent, at minimal cost to the opponent.  This has to end, and a few changes in the procedure would achieve this result.

1. Require submission of detailed pleadings, and only allow amendment of those pleadings by leave of the Rasham with good cause.

In the old days, when Israel patent applications were only opened to the public upon completion of ex parte examination, there was some sense in giving opponents 3 months to decide whether or not to oppose, 3 months to file pleadings, and additional time to file written evidence.  Not so anymore, with the examination file being open to the public 18 months after the priority date, or, more commonly, shortly after national phase entry.  (The vast majority of patent applications filed in Israel are PCT national phase entries, and I assume that most of the oppositions are filed against national phase applications; I’ve no doubt the ILPTO has statistics on that.) 

Today, interested parties can follow the examination for its duration.  This means they can be ready not only with detailed pleadings, but with written evidence, very soon after the application has published.  Under these circumstances, there is no reason to permit the submission of pro forma pleadings.  At a minimum, opponents should be required to present their detailed pleadings, including complete lists of prior publications upon which they will be relying, at the time the pleadings are due.  Frankly, I think they should be required to provide their evidence as well.  Perhaps, instead of a three-month window to oppose, a 6-month window could be put in place, concomitantly with the requirement that opponents file their detailed pleadings and evidence.  Note that this is similar to the existing rules governing cancellation actions (הליכי ביטול), in which the party seeking cancellation of a patent files pleadings at evidence at the same time.

Additionally, opponents should not be allowed to subsequently introduce or rely on publications or evidence that they could or should have known about at the time they filed their pleadings and evidence; when motioning to introduce new evidence, the opponent should need to show the rasham that the documents that the opponent seeks to introduce could not have been known to the opponent at the time it filed its pleadings and evidence.

The flip side of this, of course, is that the applicant would be required to file its response to the pleadings and evidence in a complete form within a similar, limited amount of time.

2. Require identification of the real party in interest, and introduce estoppel provisions

Currently, any party may oppose a patent application.  Moreover, if that party loses the opposition, and the patent is granted, there is nothing in the statute to prevent that party from raising the same arguments as invalidity contentions in litigation, should that party be sued for infringement by the patentee.  I don’t know if this has ever happened, and if it were to happen, there’s a chance the judge would agree with the patentee that the defendant is estopped from raising the same arguments after having lost at the PTO.  But the fact is that it’s not in the statute.  That’s unfortunate, because the risk of estoppel, when coupled with the requirement to submit complete pleadings and evidence at an early stage, would be one way to reduce the filing of frivolous oppositions. 

Moreover, estoppel normally doesn’t apply to ostensibly unrelated parties that were not part of the prior proceeding – in this case, that were not part of the opposition. 

What would be helpful, therefore, is to require identification of what in US law is called the real party in interest that is opposing the grant of the patent, and to statutorily introduce an estoppel against that party and any parties in privity with that party from raising in later court proceeding any arguments against the validity of the patent that could have been made (not just which were made, but could have been made) in the opposition proceeding.

3. Make it easier to reject oppositions out-of-hand (על הסף)

Opponents should be required to meet a minimum threshold, showing that the case they present goes beyond what was considered by the PTO during ex parte examination.  If an opponent merely cites publications that, taken together, teach no more than the publications considered by the examiner during ex parte examination, then there’s no reason to proceed with the opposition.  In such cases, the applicant should be able to have the opposition summarily dismissed.  The rasham has traditionally been reluctant to use סילוק על הסף as means of disposing of cases before him; perhaps the statute should be amended to make it clear that this is an acceptable remedy when the opponent’s contentions amount to the same contentions considered by the examiner.  This will also cause opponents to carefully consider the arguments to be made in an opposition.

4. Cap or eliminate cost awards

This is discussed in more detail below, but is mentioned here because this step would also reduce the likelihood of frivolous oppositions.

5. Increase the fee for filing oppositions

The usefulness of this step would seem to be self-evident, although if the changes outlined above are adopted, it might not be necessary.

B. Adopt an EPO-like procedure with respect to amendments

I once heard the late Eli Hurwitz say that there’s no patent that can’t be gotten around.  It’s a well-taken point: no matter how worthy of patent protection an invention may be, it’s much more difficult to draft a good patent application than it is to invalidate a patent or oppose its grant.  Moreover, the statute does not impose upon patent applicants a duty to search the prior art themselves before drafting their patent applications; rather, it assigns to the ILPTO the duty to determine the allowability of each of the claims of the patent application.  It’s therefore not surprising that adverse parties will sometimes raise points that were not taken into consideration during ex parte examination. 

In view of this asymmetry, if the application discloses something patentable but the claims do not define that something patentable sufficiently well, the applicant should be given the opportunity to amend its claims to a form in which the claims do define the invention so as to meet the requirements of the statute. 

The present legal framework seeks to allow this, but is deficient in that it treats such amendments as separate proceedings in and of themselves.  Moreover, while it correctly allows applicants to make such amendments as of right, if applicants find themselves having made one set of amendments, then find those amendments opposed by the opponent in the substantive opposition to the grant of the patent, the applicant may need to do another round of amendments.  This obviously slows resolution of the opposition.

A more efficient route would be to adopt the type of approach taken by the EPO: after the parties have presented their arguments and evidence, when it comes time for the oral portion of the proceedings the applicant should be able to present a reasonable number of sets of claims, in its order of preference.  Each set can then be considered by the PTO, with the opponent able to raise its objections, so that if there’s a set of claims that’s acceptable to the applicant and meets the statutory requirements, that fact will be discovered quickly.

C. Treat oppositions as private litigation

An irritating aspect of oppositions is that although they are designed as adversarial proceedings, the ILPTO often views its role as that of an inquisitor, whose job is to protect some amorphous, unidentified “public” from an invalid claims in patents.  That view, which is biased against patent applicants, evinces a misunderstanding of the ILPTO’s role.  The ILPTO’s role is to examine patent applications, to refuse to allow claims that are not new or are obvious over prior publications, or are insufficiently supported by the specification – i.e. that don’t meet the requirements of sections 4, 5, 12 and 13 of the statute – and to allow claims that do meet those requirements.  That’s how innovation is encouraged. 

To the extent that pre-grant opposition is viewed as an extension of patent prosecution, the scales should not be tipped against applicants whose applications happen to have been opposed by third parties, as is presently the case, with the ILPTO assuming a quasi-inquisitorial stance.  Rather, the opposition should be treated as private litigation.  If the opponent has not raised an argument, then it’s not for the patent office to raise that argument for the opponent.  Similarly, if the parties submit a mutually-agreed upon request to an extension for one of the sides to file some paper, this should be granted by the rasham.

D. Eliminate failure to cite prior publications as a ground for oppositions

The statute rightly imposes on applicants a duty to assist the PTO by informing the PTO of publications cited against corresponding applications elsewhere or that are otherwise known to the applicant to be relevant.  However, failure to cite a reference should not per se be grounds for invalidating a patent; such failure should only matter when (a) but for (אלמלא) the omission, the examiner would not have allowed the claims in the form in which they were allowed, and (b) the omission was deliberate, with an intent to deceive the PTO.  While the PTO can readily determine (a), it is in a poor position to determine (b), a task more suited to the courts.  Consequently, failure to comply with section 18 should be removed as a grounds for opposition.  

E. Cap or eliminate cost awards

In the last several years the PTO has gone absolutely berserk in its awards of costs to the prevailing party in inter partes proceedings, granting awards that are far beyond what a party could obtain from a judge in a regular court proceeding.  Applicants for patents should not be punished for unsuccessfully seeking patent protection, and opponents should not enjoy a windfall for convincing the rasham to sustain an opposition; in most instances, if an opponent is successful, the opposition has paved the way to commercial success that will far exceed what it spent on the opposition. 

Since the PTO seems to be unable to restrain its predilection for cost awards out of proportion to cost awards in litigation before the courts, it’s time to statutorily reign in such costs.  Or to do away with them altogether, since for most opponents the cost of the opposition is merely part of the cost of doing business – many of the same parties that regularly file oppositions today were filing them regularly 20 years ago as well, before the PTO starting enriching those parties for having filed those oppositions, which means in the past they really did view it as part of the cost of doing business.  Granting windfalls in the form of cost awards distorts the system.

I’d be happy to discuss these matters, and other points related to oppositions, with you or members of the MOJ staff.

Dan Feigelson

November 15, 2016

Incorrect Mailing Date on Correspondence from Israel PTO

I recently encountered a bug in the Israel PTO’s system for sending notices to applicants and practitioners. 

Once upon a time, the Israel PTO sent practitioners paper copies of correspondence. That’s mostly gone by the wayside (patent certificates are the notable exception that still sent by snail mail).  But the question is, what’s the date from which deadlines are calculated – the date on which the ILPTO puts the notice in the hopper, or the date on which it’s actually sent?

Normally there’s no difference – an office action, for example, is sent by email on the same date that the examiner puts it into the system to be sent.  So a copy goes to the practitioner on that date, and a copy is uploaded to the public database as well, showing the same date.  The copy of the OA received by the practitioner, which is attached to the email as a pdf file, is automatically given a file name that includes the application number and the date on which the file was sent to the applicant, as well as some other information that means something to the patent office but not to the rest of us.

But what happens when there’s a delay between when the examiner loads the office action into the system, and when the OA is actually sent? 

It turns out that if an examiner loads an OA into the system on, say, Wednesday evening, and the OA isn’t sent by email until Thursday morning, the pdf file sent to the practitioner shows the Thursday date, but the database records the OA as having been sent on Wednesday.  Obviously, this has implications for how the system calculates deadlines: if the official deadline falls on a Friday, when the ILPTO is closed, the deadline for response is automatically pushed off until Sunday, whereas if the deadline falls on a Thursday, then that’s the deadline.

Legally, of course, it’s the date that the notice was actually sent, not the date it was uploaded to sent, that’s controlling, but if you’re in a situation where the full response period, and not a one-day foreshortened period, is needed, then you’ve got two choices: file on the actual deadline date – the one that the ILPTO’s system says is on the first day of the extension period – pay for the extension, and then request a refund with an explanation why the response wasn’t late; or don’t pay the extension fee, hope the system records the response as being filed and puts it on the examiner’s docket, and if you eventually get a notice that an extension fee is due, call or write the ILPTO to fix the issue. 

I discovered this recently when preparing an OA response: based on the mailing date of the email and the date in the filename of the pdf file of the OA, I had informed the client that the deadline was on date X.  While preparing the response, I discovered that the database listed the deadline as X-1.  In my case it didn’t matter, as the client had provided instructions ahead of date X-1, but I nevertheless called this to the attention of the senior person at the ILPTO responsible for the system.  To that person’s credit, the person looked into the matter and I got response later that day.  The response itself, however, wasn’t wholly satisfying; here’s my translation from Hebrew:

“The matter was investigated. In accordance with the logic set [i.e. programmed - DJF] in the system, the system sends the letter [by email] within several minutes of its creation.  From the investigation that was carried out, the phenomenon of a delay of several hours between creation of the document and its being sent by email is exceedingly rare. We will take into account the extra day required because receipt of the notice with several hours’ delay.”

In other words, they’re not going to fix the system, so it’s on us practitioners to check the dates on these things.  It’s worth noting that files don’t appear in the database until after the nightly update, and sometimes not for several days after being sent, so now there’s another thing to docket to check for: make sure the date in the database matches the date on the pdf file.  Thanks, ILPTO.

Of course, as a colleague noted, getting an OA by email one day later than one should have received it is still an improvement over waiting for letters to arrive by snail mail.

A Good Explanation of the Problem with "Progressive" Views of Big Pharma

James Meigs has a piece in the newest edition of Commentary entitled "Thank God For Big Pharma".  It doesn't say anything that's not already familiar to people involved in the pharmaceutical development process, but it's still a good read.  My only criticism: he doesn't mention Bayh-Dole, but he does discuss what would happen if the private sector were taken out of the drug development process, which is what some politicians seem to be angling for (by depriving drug companies of profits).  As I've said more than once before, I'd rather someone make huge profits and there be new drugs (or in the past year, new coronavirus vaccines) than no one make huge profits and there be no new drugs; and I'm glad there's a generic drug industry to make sure that, in nearly all cases, those drugs eventually become generic, at which point their prices drop precipitously. Together those two things drive new drug development.

Surprise! Israel PTO Messes Up, Er, Redesigns Web Site Without Warning

Thank God for bureaucrats – where would we citizens of the modern state be without them?

Nearly five-and-a-half years after rolling out its less-than-stellar electronic filing system for patents without significant beta-testing or public input, the Israel PTO has now re-done its website, apparently without warning – and, evidently, again without beta-testing. Those of us on the ILPTO’s mailing list received word of the change last night, in the form of the following email:

"To the public of applicants, attorneys-at-law and patent agents, greetings.

"We wish to inform you that the Patent Office web site has moved to the GOV.IL platform, which is the government platform that government offices are obligated to use. The GOV.IL platform is very different from the old site, and therefore we estimate that you will need a period of time to transition to the new site.

"For any comment, question or assistance, you may contact Ms. Shirley Cohen, the Office’s contact person for the web site, at [email protected] or at 073-392-7167."

What fun.

From the letter it sounds like this was something forced upon the ILPTO, but even if that’s the case, it was clearly in the works for a while, so why not give advance warning? (In the interest of fairness, I’ll note that it’s possible there was advanced that I missed…but I don’t think so, as none of the colleagues with whom I’ve spoken recall seeing advance warning of the change.) If you recognize that a transition period is necessary, why not have the two systems run in parallel for a period of time to allow people to compare (or, in a pinch, use the old system), instead of forcing everyone onto the new site without warning? And why not solicit public input so as to improve the system before you launch?

I have not had much time to play with the new site and figure it out. Maybe it’s substantively better than the old site, but I don’t see how a one-size-fits-all formula for all state web sites is necessarily an improvement.  Certainly, the time that will have to be invested by veteran users of the old site to familiarize themselves with the new site will be considerable. That loss of productive, tax-generating hours is obviously not a consideration for the bureaucrats.

Nor have I had a chance to see if the English version of the site is complete. The English version of the old site lacked much of the information of the Hebrew site, so perhaps in this regard the new site is an improvement.

One thing that I find annoying is that the top bar on every screen is the bar for the entire gov.il site. So if I click on, say, the “information” tab, and select “legal information”, the next screen lets me search the entirety of what is classified as “legal information” on ALL the Israel government sites.  All 14,128 pages, in fact, as of today.  Just what I need when I’m looking for info specifically from the Patent Office.

 

Sigh.

At least the IDF and home-grown Israeli technology provides me with the luxury of ruminating on stupidities like this even as our friendly neighbors send heavy projectiles our way.  More on that in a subsequent post.

Online Session re: Provisional Patent Applications In Israel

On Thursday, May 20 at noon eastern time, the AIPLA Israel Practice Committee, in conjunction with the Israel Patent Attorneys Association, will be putting conducting an online session about provisional patent applications in Israel and some related matters.  Yours truly will be one of the speakers.  There is no cost, but registration at https://www.fee.co.il/aipla/0/en is required.

Dr. Judith Abrahams z”l

Today marks the end of the shloshim period following the passing of Judith Abrahams.  Although I spoke with her a few times over the years, I don’t think I ever met her personally, which is remarkable considering that we ran in similar circles: we lived in the same city for the last 29 years; we worked in the same field; we’re both native English speakers; and we had many acquaintances in common.

Judith Abrahams was born in Glasgow, the oldest of four children.  She earned a PhD in biochemistry, and then in 1977 moved to Israel with her husband and several young children, following in the footsteps of her younger sister, who had come a few years earlier at age 18.  In the late 1980’s, after the children were a bit older, she wanted to get back into the working outside of the house, but she didn’t enjoy the laboratory. Thus has been launched the career of many a patent attorney. 

Things for patent practitioners in Israel were different then: most Israelis were still unfamiliar with the term “patent attorney”, and there were significantly fewer practitioners, so that nearly everyone in the field knew or knew of one another.  Case in point: Judith trained with Yehuda Livneh at Biotechnology General, and after getting her license (no. 74; today we’re somewhere north of 500), replaced him as the in-house patent counsel there when he took a job a Teva, which was just beginning to become a global player.  

Later in life, she got involved in an activity with a different bent: about 15 years ago she donated a kidney, and from that point on was active in promoting kidney donation. 

יהי זכרה ברוך