America-Israel Patent Law

Israel PTO Fixes Glitch in Issue Notification (Follow-Up to Noah At the ILPTO)

Yesterday I wrote about an issue notification from the Israel PTO that didn't state when notice that the patent application had been accepted would be published in the Patents Journal. 

Subsequently, I contacted the head examiner at the Israel PTO to point out the problem, and made two additional suggestions: that they include a sentence reminding the applicant that a divisional application cannot be filed after acceptance of the application, a reminder not so important for licensed practitioners but possibly important for pro se applicants (h/t to Dan Swirsky); and that they list a contact person.  And voila!  Within a few hours I received a new letter, giving the publication date, as well as a new sentence regarding the deadline for filing a divisional application, and the name, telephone number and email of the contact person. 

So as they say in Hebrew, כל הכבוד to the ILPTO for addressing this in an expeditious manner.

Bill Cosby's Noah At the Israel PTO

Those of us old enough to remember Bill Cosby before he fell from grace will recall his famous bit about Noah. It actually appeared on an LP as three separate sketches, the second of which was "Noah and the Neighbor". Noah's neighbor complains to Noah about the ark-under-construction blocking the neighbor's driveway, and eventually the neighbor asks, "Why do you need to build this ark anyway?"  To which Noah replies, "I can't tell you, haaaa haaaa haaaa haaaa haaaa haaaa".

Last week I paid the "acceptance fee" (the equivalent of the USPTO issue fee) for an allowed Israel patent application. This morning I received the equivalent of a US "issue notification", namely a letter telling me when the application will be published in the Patents Journal for opposition purposes, which is what constitutes "acceptance" of the application.  A picture of the letter appears at the right.

For those who don't read Hebrew, I'll translate the relevant part:

"The date of acceptance of the application is

"The notice of acceptance of the application per section 26 of the statute will be published in the Patents Journal which will be available on the Patent Office web site on ."

Thank you Noah!

My working assumption is that when they switched from publication of the Patents on the last working day of the month to the first working day of the month, someone was supposed to reprogram the software that generates these letters, but screwed up.

While this seems funny, there's actually a serious side to the story: if an applicant wants to file a divisional application, he must do so BEFORE publication of the parent case in the Patents Journal.  So knowing the date of future publication can be important.  Especially since there's no case law in Israel akin to Immersion Corp. v HTC like there is in the USA: if you wake up one morning and find your application published in the Israel Patents Journal, the Israel PTO's e-filing system won't let you file a new divisional, and you'll need to go to court and hope that the court rules that a divisional can be filed on the same day that the parent case published under section 26.

I also like the fact that the letter is signed by "The Patent Office" (or more accurately, "The Patents Authority"), without any particularly individual's name on the bottom to contact about the fact that the letter is wholly uninformative.

 

Why Can't I File a Section 17(c) Request In This Application?

In my previous post I mentioned the lack of sufficient technical support for the Israel PTO's electronic filing system.  Case in point, a new one for me: the system won't let me file a request under section 17(c) of the statute, the section that says an application can be allowed on the basis of a corresponding patent in certain jurisdictions if each claim of the Israel patent is identical to one of the claims of the foreign patent.  But there's no apparent reason why this should be so in this case.

In greater detail: early this morning, before ILPTO opening hours, I responded to an office action, by relating to the prior art rejections raised by the examiner. In the response I also asked that the application be accepted under section 17(c) of the statute, since the claims are identical to those of a corresponding granted European patent. But the EFS is poorly designed in this regard.  When filing by Israel EFS, first one has to choose from a finite list the type of filing he wishes to submit (in this case, response to a form 26 office action), then one enters the relevant application number, then the system checks to make sure one is allowed to file such a response at this stage of the prosecution, and if the system says that such a response is permissible, then one is given a finite list of choices of types of documents to upload: response to OA, clean claims, marked claims, clean spec, marked spec, prior art documents, etc.  When making a 17(c) request, the applicant is supposed to provide the ILPTO with a copy of the foreign patent on which the request is based, but "corresponding foreign patent document" is not among the finite choices available when submitting a response to a form 26 office action.  Instead, what one has to do is upload the all the documents for the response, click on "create basket of documents to be file", and then start the whole operation again, this time choosing "17(c) request during substantive examination" (as opposed to "17(c) request during formal examination"), then entering the application number, then uploading the 17(c) request itself and the corresponding foreign patent, as well as the claims if the claims have not already been amended to correspond to the foreign patent claims.  Then one clicks "create basket", and then one submits the whole kit and kaboodle, two "baskets" at once for the same application. 

Except in my case, when I choose "17(c) request during substantive examination" and then enter the application number, the system says, "nyeah nyeah nyeah the system status doesn't allow you to file that now!"

So instead of uploading the foreign patent in the 17(c) request template, I went back to my original "basket", viz. the OA response, and uploaded it as a "citation".  I've no idea if the examiner will notice it, so I'll leave the examiner a voice message explaining the situation. 

Of course, why we should be required to upload the foreign patent at all is a bit of a mystery, seeing as how examiners routinely find and download foreign patents as prior art.

I'll also contact the new tech support person to explain the problem and find out why the system is screwy in this way.

When Is The Israel PTO Going to Provide Reliable Technical Assistance for Its Patent Electronic Filing System?

The Israel PTO’s patent electronic filing system went online in December 2015, and its use became mandatory for corporate applicants and legal representatives in June 2016.  It was a sub-optimal system at launch, and most of the shortcomings from 2015 remain in place today.

One such shortcoming was the lack of technical assistance.  Whereas the USPTO’s Electronic Business Center is open from 06:00-24:00 five days a week, and is staffed by multiple people, the Israel PTO has until now had exactly one person assigned to provide technical support. While she has been extremely helpful, if that person wasn’t available (e.g. if she was on vacation, or had just stepped out for coffee), you were out of luck.

And it goes without saying that that availability does not extend beyond normal working hours.  This of is of little help when one is facing a filing deadline after-hours as the clock approaches midnight. Which happens from time-to-time with non-Israeli applicants, most of whom are in time zones west of Israel.  

The Israel PTO announced today that the person who has been responsible for EFS technical support is moving back to full-time examiner duties, and that the responsibility for technical support is being transferred to the clerical staff.  This is potentially a slight improvement, in that theoretically there will be more people to field questions. But that assumes all of the clerical staff has been trained in the EFS. And even in such a best-case scenario, they don’t work late.

When, oh when, is the Israel PTO going to provide EFS technical support until midnight? Or alternatively, when will it drop the rule insisting on electronic filing?