Once upon a time, the Israel PTO let patent applicants request suspension of examination at almost any point in time during the examination process, and it didn’t cost anything. You just wrote to the office and requested suspension. This isn’t something that’s explicitly set forth in the statute, but it’s no skin off the ILPTO’s back to put a note in its file, “Don’t examine this case yet”.
Then someone at the ILPTO got the idea that this worked too well, so that person decided to mess things up. Maybe someone thought that, in the age of 18-month publication, suspending examination was prejudicial to potential competitors. Maybe someone thought that, “Hey, we can make money off this by charging a fee!” Maybe someone felt that it’s important to keep the Office’s docketing straight and to not let prosecution lag too much. Maybe it was a combination of reasons.
Whatever the case, at some point the ILPTO changed its practice, and said that one could only request suspension after the applicant had answered the pre-examination letter (viz. filed a mandatory disclosure of publications relevant to patentability or cited by examiners elsewhere – think of an IDS in the USA – plus a list of corresponding cases elsewhere, or in brief, a Section 18 response) and before the issuance of the first substantive office action. And then, if the ILPTO said “ok” to the suspension request, applicants would be given one month in which to pay for the suspension.
I’ve written at length in the past about how that suspension fee is unauthorized by statute, but that’s not the focus of this post.
No, what I wanted to get at were further changes to the ILPTO’s suspension practice.
The first additional change happened a little over five years ago. The problem was that you had no way of knowing when the application might be examined, and since you could only request suspension before the first OA issued, it was common to request suspension shortly after responding to the pre-examination letter. And then within a few weeks you’d get the letter to pay the fee, and so you’d pay the fee within a month, and ostensibly the case would be suspended for year or whatever…and then after the suspension was over you’d sit around for another month or six or twelve or more waiting for the OA. Which meant that the fee was totally unnecessary, and that in reality, nothing had been achieved except wasting time (and client money) on some meaningless administrative tasks.
So the ILPTO said, “OK, you still need to request suspension after your section 18 response and before we issue a substantive OA, but now we’ll wait until the application is actually due to be examined, and then we’ll send you a warning letter, and if you pay the fee within a month we’ll suspend and if not the case will go to the examiner.” Makes sense, although I was apprehensive that the ILPTO might miss overlook the fact that a suspension had been approved and issue an OA before we’d even been asked to pay money.
It turned out that the ILPTO was actually pretty good about issuing the “pay for your suspension now” letters”, and until this week I’d only had one case out of many in which it prematurely issued an OA. And in that one case, it wasn’t a big deal to get that OA withdrawn and have the “pay your fee now” letter sent.
Then last year they surreptitiously changed their “pay your money now” letter slightly. They changed it to say, “If you want the suspension you must request suspension again and pay the fee”. Now, I admit, I initially missed that new part, and just paid the fee as I always had. But some months later, I looked through my docket and saw a case in which I’d paid the fee but hadn’t gotten the confirmation that the suspension had been granted. So I called the person responsible at the ILPTO and asked what we going on. She explained to me that we need to again request suspension, and that I should look at the letter. So I looked at the letter, saw the added verbiage, and asked her, “Did you think I was going to pay a fee because I’m a civic-minded person who wants to donate to the state’s coffers? Of course the fee is for the suspension, that letter is the only thing outstanding in the case, what else would I be paying money for?”
After some discussion, it turned out that the ILPTO’s computer system or work procedures had been modified, so that if the applicant doesn’t file a renewed request for suspension, the system isn’t aware that the fee has been paid, and it isn’t updated to confirm that the case is now suspended. So in that specific case, the employee manually updated the system and issued the “case is now suspended letter”.
But then I had to pay another suspension fee in a different case. So I went into the system to again request suspension, and found that (a) there’s no separate option for re-requesting suspension, there’s just “request suspension”, and (b) there’s no option to pay the fee when requesting or re-requesting suspension. So I uploaded the re-request for suspension, and then before submitting it did what I’d always done in the past when paying the suspension fee, viz. I went to the “request extension” option, then added payment for an extension. I then submitted both things at the same time and paid the fee. End of story, right?
Wrong. I get a call a day later from someone at the PTO: “You requested suspension but didn’t pay the fee”.
My response was along the lines of “Say what? Of course I paid the fee. It’s right there. I have the payment receipt!”.
“Well, I don’t see it, you’ll need to resubmit the request for suspension with the payment receipt.”
As I sad in the title of this post, you can’t make this up.
So I took the original suspension request, and added a text box with big red writing on the side: “NIS 2712 for 12 months’ suspension paid, receipt no. XXX”, and filed that.
ILPTO left hand, meet ILPTO right hand.
But then this week we had the piece de resistance, the crème de la crème, the cherry on top of the whipped cream. In a case in which suspension was requested two years ago, we got a first OA, without having been asked to pay the suspension fee. Second time that’s happened. As it turns out, the OA was pretty positive – it appears that, with some minor amendments similar to those made in another jurisdiction, we can gain allowance. But maybe the applicant wants to delay, so I reported the OA, and explained the option to either respond substantively, or request withdrawal of the OA and demand issuance of the “re-request suspension and pay your suspension fee letter”.
Then two days later, the ILPTO issued the “re-request suspension and pay your suspension fee letter”. But there was nothing in the letter to indicate that the OA itself had been withdrawn. So I wondered, “Will the system let me re-request suspension now”?
And – you know what’s coming – it won’t. When I tried to submit another request for suspension, the system barked at me, “You can’t, nyeah nyeah nyeah, there’s an outstanding OA!”.
Now, I could pay the suspension fee, since the system will of course let me pay for an extension of time. But we saw from our other recent experience, since that payment will be classified by the system as part of an extension request and not a suspension request, the ILPTO won’t suspend examination.
So depending on what the client says, it looks like a few phone calls may be necessary to get the OA withdrawn and pay the suspension fee. Or maybe we’ll just answer the OA and proceed to allowance.
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