In 1995, the USA moved to a 20-years-from-earliest-filing-date regime. A few years later, in response to complaints that this effectively foreshortened patent term from the previous 17-years-from-grant if the USPTO was slow in examining cases, Congress enacted provisions for patent term adjustment (PTA, not be confused with patent term extension – PTE – for drug patents under the 1984 Waxman-Hatch amendment). The formula for just how much adjustment a patentee is entitled to is a bit complicated, and there are pitfalls for the unwary, but the basic idea remains: examination shouldn’t take more than 3 years, and to the extent it does and that’s the fault of the USPTO, the term of the patent is adjusted accordingly to compensate.
There is no similar mechanism here in Israel, which is a pity. Particularly when the Israel PTO is as derelict in its duty as it was in a case I recently heard about from a colleague.
The application in question was filed more than 10 years ago as a national phase application. A few years later, responsibility for the case was transferred to my colleague, who amended the claims to correspond to those granted in a foreign patent and requested allowance per §17(c) of the statute. The PTO sent a notice of allowance. Two days later, it sent a letter withdrawing the notice of allowance. The letter stated that the allowance was being withdrawn because certain of the claims did not comply with a particular Registrar’s Circular letter.
And what was the issue with these claims? They were worded, “Use of an XXX according to claim 1 for [doing YY]”.
There is nothing in the statute per se that prevents the grant of claims worded that way. In fact, for many years, the Israel PTO granted such claims, many such claims were litigated over the years, and I am not aware of a single instance in which such a claim was found to be invalid on account of having been worded that way. Nevertheless, at some point someone in the ILPTO decided such claims were not acceptable (because, it is asserted, they don’t recite a process and therefore don’t recite a category of statutorily patentable subject matter), and sua sponte the ILPTO stopped allowing them.
The letter went on to say that the application was being returned to the examination queue. And there it waited. And waited.
And waited some more.
After two and a half years, my colleague submitted a letter requesting an interview with the examiner about the case.
It’s been more than a year since that request was submitted, and it’s still being ignored. Wow.
My guess is that there’s a glitch in the ILPTO’s computer system, so that when a notice of allowance is mailed and then rescinded, the system doesn’t actually put the application back into the queue. I base this on the fact that I had a similar occurrence with an application I was handling.
Adding to the frustration is the fact that this could easily have been dealt with by telephone. The examiner could have called my colleague and said, “Looks, claims m and n are not allowable because they’re in the wrong format, but if you let me do an examiner’s amendment, I’ll cancel them and allow the case under §17(c).” Except that the Israel PTO doesn’t believe in Examiner’s amendments, God knows why not. Note to Ophir Alon: please institute examiner’s amendment practice. It will make life easier for all of us. And fix the computer system so that an allowance is withdrawn, the application actually is thrown back into the examination queue.
But even without the examiner’s amendment tool available, the examiner could have phoned my colleague and proposed two possibilities. The first is that the applicant send in a new set of claims with the offending claims cancelled. Alternatively, since claims of the format “XXX according to claim 1 for use in doing YY” are deemed acceptable by the Israel PTO, the examiner could have asked the applicant to rewrite the offending claims in purpose-directed product format. Although this would have taken the claims out of the framework of §17(c) (since each claim must be identically worded to one of the granted foreign claims), the examiner still could have examined the claims – and while not giving an official allowance under §17(c), could have effectively relied on the foreign grant to allow the set of claims in which the “Use of XXX” claims were replaced by “XXX for use…” claims.
But none of that transpired. In fact, the examiner didn't even send a letter spelling out these possibilities. Instead, several years have gone by, and the patent application has languished because the ILPTO didn’t do what it’s supposed to do (and told the applicant it would do), viz. examine this patent application.
At least my colleague hadn’t paid the issue fee at the time the notice of allowance was withdrawn. If he’d done that, they wouldn’t have automatically refunded his money. No, they would have insisted that he REQUEST the refund. But that’s a blog post for another day.