America-Israel Patent Law

Address for Renewal Fee Service: Another Suggestion for the Israel PTO

Patent renewal fees, also sometimes called maintenance fees or annuities, are a feature of most patent systems.  Readers can look at economic-analysis-of-law textbooks for an explanation of the economic rationale for these fees, but from the standpoint of most patent offices they’re just another form of income.  In the US, renewal fees are due 3.5, 7.5 and 11.5 years after patent grant; in Israel they’re due within three months of grant and thereafter at 6, 10, 14 and 18 years from the filing date.

Although the renewal fees themselves can get hefty, particularly toward the end of the life of a patent, administratively it doesn’t take much to pay the fee, especially now that most patent office accept online payments.  It should therefore come as no surprise that there are several companies that in essence function as renewal fee payment aggregators: they have managed to get lots of customers to pay them to manage renewal fee payments, and as a result they’re usually able to negotiate bulk discounts with a local service provider that takes care of the actual payment.  (I say “usually” because it's not always the case that the cost when working through one of these providers is cheaper.) For patentees, especially patentees with large portfolios, this can be a good deal, since the renewal fee company keeps track of the deadlines and the costs, for less than it would cost having a law firm track this information.

The USPTO recognizes the fact that paying a renewal fee is a purely ministerial act, and allows a patentee to maintain one address for service for correspondence for substantive matters (like patent term extensions), while maintaining a separate address for correspondence pertaining to renewal fees. This way, if the patentee chooses to use a renewal fee service, and there’s a power of attorney on file, the attorney of record is off the hook for renewal fees.

Sadly, while the Israel PTO recognizes that paying renewal fees is purely ministerial and therefore will accept a renewal fee payment from anyone, the Israel PTO does not recognize that it’s possible to have separate correspondence addresses for renewal fees and for other matters. This oversight creates unnecessary work for local practitioners, particularly since the Israel PTO usually requires – unjustifiably, in my view, but that’s a topic for another blog post – that patent applicants submit a power of attorney.  The way it works is that the Israel practitioner will generally prosecute a case through to grant, and then pay the first renewal fee due within 3 months of grant.  Thereafter, though, the patentee often uses a renewal fee service, which contracts with one of the large Israel patent firms to take care of its renewal fees.

That in and of itself wouldn’t matter, but (a) the Israel PTO sends renewal fee reminders* to the address for service on record, and that’s usually the address of the practitioner to whom the POA was given, and (b) the renewal fee certificates that are issued once the fee has been paid are sent to that same address for service. 

The result is that a practitioner who has been told by the client that he is not responsible for renewal fees in a particular case continues to receive notices about renewal fees for that case, something that may necessitate checking the docket system to confirm that he is not responsible for renewal fee in question.

While a practitioner could in principle withdraw from representation once the patent issues, that’s overkill, since the patentee may want the practitioner to continue to be responsible, e.g. should the patent be subject to a cancellation action of if it’s desired to obtain an extension of a pharmaceutical patent.

There is no reason the Israel PTO can’t do like the USPTO does, and enable the recording of a separate address for renewal fee correspondence. It would make life easier for everyone involved.

*The fact that the Israel PTO sends renewal reminders BEFORE the fees are due is a nice service. The USPTO, by contrast, only sends out a reminder once the initial deadline has been missed, as if to say, “Oops, you missed your deadline and now you can still pay, but with a 10% penalty.”

USPTO Moving to Electronic Issuance of Patents

In a press release from today and a Federal Register Notice that will be published tomorrow, the USPTO announces that in April it will be moving to electronically issued patents, rather than continuing to publish paper copies. This will come as a relief to some, but will be disappointing for those who like those paper copies.

However, the main practical difference for applicants will be that the window to file continuation applications (or to withdraw the application from issue, for example to file an information disclosure statement) will be much smaller.  At present, once the issue fee is paid, it takes the USPTO several weeks (usually six to eight) to issue the patent, an act that always occurs on a Tuesday. About three weeks before the patent is issued, the USPTO mails an "issue notification", telling the applicant when the patent will issue, and effectively informing the applicant of the deadline to file a continuation application or withdraw from issue.  Under the new scheme, the patent will issue shortly after the issue fee is paid, still on a Tuesday, but the applicant will only get warning of the impending issuance 5 or 6 days beforehand.  "Therefore", says the USPTO, "the best practice would be for applicants to file these submissions as early as possible. Preferably, continuing applications should be filed before the payment of the issue fee."  This may be the first time that I will recommend that clients follow legal advice given by the USPTO

When 1+1 Does Not Equal 2: Israel PTO Filing System Gags on Merged PDF File

I had a strange experience this morning when filing something at the Israel PTO via the ILPTO EFS.  I had merged two pdf documents into a single pdf document, and when I tried to upload the merged document to the Israel PTO filing system, it gave me an error message - something about a problem with the fonts.  But when I uploaded up each pdf document separately, I received no such message.  Thinking that the problem might be with the pdf editing program I was using to merge the files, I merged the two files using a different pdf editor, but the same thing happened when I tried to upload the merged file.  Printing the merged file as a new pdf document using cutepdf didn't help either.  Ultimately I uploaded the two documents separately (listing one as the specification and one as a sequence listing, which it's not, but it's clearly labeled "appendix"; I was concerned that the EFS would only accept text files as sequence listings, but it was fine with my pdf).  

Are there any hardcore pdf mavens out there who can explain what the glitch in the ILPTO's filing system might be?

Mea Culpa, and Check Your Israel PTO Email Subscription

In a previous post I stated that the Israel PTO did not use its regular email subscription list to inform people about its recently-held "roundtable" on possible "ethics rules" for patent practitioners.  Turns out I was wrong on that score, and I apologize for that.  I discovered last night that the email account I usually use stopped receiving emails via the ILPTO subscription list about two months ago.  (There's another account I have to which those emails are also sent, which is how I discovered the source of the problem, but I check that account infrequently.)  I'm not sure why I stopped getting the emails at my regular account, but I promptly re-subscribed.  If you're supposed to get emails from the Israel PTO but haven't received any lately, maybe you should re-subscribe.

FWIW, I still smell a rat with the process for adopting these "ethics rules", but that's for a future post.

Israel Reaches 300,000 Patent Applications

I didn't see anything about this on the Israel PTO's web site, but from the Patents Journal that published on February 1, I see that Israel hit patent application no. 300,000 on January 16, 17 or 18.  Patent applications in Israel are numbered sequentially and stay the same once a patent is granted, and since not all applications proceed to grant, this means that we're still at fewer than 300K granted patents.  Still, 300,000 applications is a respectable milestone.

To get a sense of timing, application no. 75,100 was filed in May 1985 (before Israel joined the PCT), no. 100,000 was filed in November 1991, no. 125,000 in June 1998 (after Israel joined the PCT), no. 150,000 in June 2002, no. 175,000 in April 2006, no. 200,000 in July 2009, no. 225,000 in September 2011, no. 250,000 in January 2017, and no. 275,000 in May 2020.  Most of those applications were all filed as national phase applications of PCT filings, and consequently in the ILPTO's database their filing dates are listed as the PCT filing date rather than the national phase date, but the application number accords with the date of national phase entry.