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.