America-Israel Patent Law

Would You File Your Patent Application Through These Guys?

Maybe it’s just me, but I’ve noticed a proliferation in the number of solicitations I’m receiving from outfits offering national phase filing services.  Most of these solicitations come from India. Here’s an example of one I received recently:

Hello, 

Reaching out from [name of company], because we assist individuals, corporates and similar legal companies to optimize the international Patent Application process by assisting to protect, strengthen, speed up, build and grow their businesses by managing and utilizing the intellectual property system in a more competent and cost-effective way.  

The cost for international Patent Application is incrementally growing and we can assist in mitigating that risk. Through our help, companies optimize their cost, increase their delivery speed and augment the output capacity. Many are able to achieve up to 70% cost reduction by utilizing the services provided by us. 

Kindly refer below to the potential patent applications of yours and permit us to support you on the same: 

PCT application number        title        30/31 month deadlines

Using our worldwide network of associates, we can assist you in filing a NATIONAL PHASE PATENT APPLICATION in various countries at a very competitive fee. Our top filing countries (more than 125+) are where we can not only assist but even guide you through the whole patent process and attain a grant in record time. 

Additionally, also note that our team is capable of handling and prosecuting TRADEMARK, DESIGN and COPYRIGHT applications in all the above-mentioned countries. 

For further details, you can have a discussion with us over Skype (email address) or WhatsApp/Call us at +91-xxxxx-xxxxx on the points mentioned above to have a better understanding of our services. 

We would love to learn about how you are currently tackling this and discuss how we may be of any assistance. 

Apart from some non-standard English (“corporates” instead of “corporations”?), I was struck by the fact that although they got the PCT number and the deadlines right, the title doesn’t correspond to one of my applications. In fact, the PCT application with that title has completely different dates.

That’s supposed to instill confidence?

But the real kicker for me regards that “network of associates”. I responded to two of companies that sent solicitations.  Here’s the first email exchange, with the critical points highlighted:

Me	Who do you use for filing in Israel? Who in the USA?
Them	Hi Daniel, Thanks for the email. We have our own network of attorneys we use for filing patents in the USA and in Israel. We have reviewed your PCT application.  The total number of pages are xxx and the total number of claims are xxx. The estimated cost for filing in the USA is USD zzzz which includes both professional fees and official fees.  The estimated cost for filing in the Israel is USD zzzz which includes both professional fees and official fees.  Also the deadline for filing it in the USA and Israel is due on WW XX YYYY. Kindly let us know if you have any further questions. We are looking forward to hearing from you. Best regards
Me	I asked who (which firm or which person) does the actual filing in the USA and who does the actual filing in Israel. Please answer those questions.
Them	Hi Daniel, Thanks for the email and query. We are sorry to inform you that we can't reveal which firm or which person we use for filling in USA and Israel. Kindly let us know in case of any further questions. We are looking forward to hearing from you.

Why would I want to work with a middleman that doesn’t tell me which firm he uses in each country?

I had a similar exchange and a similar response with another Indian company offering a similar service.

It’s a strange business model. But clearly, there are people out there who are happy to work this way.

You Want To File an IDS at the Israel PTO? First File a Power of Attorney, Buddy

Here’s another one that I heard today from a colleague in Israel.

The issue (allowance) fee was paid in an Israel patent application for an application owned by a company.  Now an examination report has issued in a corresponding application elsewhere, that mentions some previously-uncited publications as background references.  By statute, the Israel PTO needs to be made aware of those references, even though (a) they’re meaningless and (b) the ILPTO isn’t going to act on them.

At present, the rules in Israel say that any company, or any practitioner representing someone else, must file using the Israel PTO’s electronic filing system. So simply sending the list of references to the ILPTO is not an option. And the practitioner who normally attends to these things on behalf of the company is out of the country, so the company asked someone else to submit these references. But the Israel electronic filing system won’t let him, since he’s not the listed representative associated with the company.

As I’ve blogged before, in the US, this would be a non-issue – submitting prior art references (or taking almost any other action in an application) is something any registered practitioner can do, even if there’s no power of attorney on record to that person.

But here in Israel? Oh, no, we can’t have that. No, in order for this practitioner to submit an IDS, even a meaningless IDS, there has to be a power of attorney on file to that practitioner.  That has to be submitted with a 240-or-so shekel fee.  And additionally, the address for service must be listed as the practitioner’s address for service.

Moreover, in the US, one can submit a POA along with other documents, in parallel. But in Israel? No parallel processing for you, young man. FIRST you have to submit the POA with a fee, and then, when the office gets around to processing that, you can submit the IDS. If you received notice of the foreign-cited references on the last day when you can submit an IDS, tough.

Now, I know what you’re thinking: why did the company not make provisions for when its usual patent counsel is on vacation? I don’t know. But the situation is as it is. And it’s ridiculous.

There are at least two ways my colleague could handle this, here I'll mention one of them: my colleague could submit a document under the heading “submission of power of attorney and change of address”, which the system will let him do, but rather than submitting a POA, he could just submit a cover letter that says, “Per its obligations under section 18 of the statute, the applicant would like to bring the following references to the attention of the Office, and since you won’t me file this under ‘Section 18 update’, I’m submitting it as a POA”. The system will still make him pay the 240 shekels to do so, but at least the document will be in the file.