America-Israel Patent Law

Wait And See: Don't Pay For, Let Alone Charge The Client For, An Unnecessary Extension Fee

A few years ago I wrote a blog entry entitled “How To Rip Off Your Clients Without Them Knowing They’re Being Had”. Basically, the issue is that in Israel, the statute says that you can retroactively request extensions of time in patent cases, i.e. at the time you file the response, even if it’s after the initial deadline; but there are several offices that tell their clients such extensions must be obtained prospectively. Those offices do that solely so that they can bill their clients more money.

I recently had a case in which, close to the initial deadline, the client told me, “We need more time, please obtain an extension”.  To which I responded, “No need, we can obtain the extension when we respond”.

Subsequently, the client said to let the case go abandoned.

Score one for the good guys.

If you're going to do a job, you may as well do it half-assed (USPTO's new IDS form)

The USPTO today sent out an announcement about its new Information Disclosure Statement (IDS) form SB/08a, the form an applicant uses to inform the USPTO about prior publications that are potentially relevant when considering the patentability of the claims under examination.

One of the banes of patent practice before the USPTO is having to provide the office with such lists of prior publications and, if the publication is not a US patent or published US patent application, a copy of the document (and a translation thereof if the document isn’t in English). Although US examiners are supposed to act on their own to look for the publication lists submitted in parent applications, if you want to those publications to appear on the front page of the patent that issues in the child case, you need to file a new IDS in the child case.  And, per Rule 1.98(d), if you want the examiner to look at publications submitted in the parent case, you need to tell the examiner where to look, as recited in the rule:

• (d) A copy of any patent, publication, pending U.S. application or other information, as specified in paragraph (a) of this section, listed in an information disclosure statement is required to be provided, even if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by, the Office in an earlier application, unless:
• (1) The earlier application is properly identified in the information disclosure statement and is relied on for an earlier effective filing date under 35 U.S.C. 120 ; and
• (2) The information disclosure statement submitted in the earlier application complies with paragraphs (a) through (c) of this section.

So what’s the big change in the new USPTO-supplied IDS form? It seems that the only change from the previous form is that now there's a checkbox to indicate that publications were already disclosed (and if not a US patent publication, submitted) in an earlier application, per 37 CFR 1.98(d).

But does the new form include a place to list the prior application? No. It merely includes a checkbox to state the following:

"An identification of an earlier application pursuant to 37 CFR 1.98 (d) (1) is attached."

And today's email announcement says, "When selecting the new checkbox, attach a paper to identify the prior application in which the previously submitted or cited information can be found."

Seriously? We still need to prepare a separate paper to tell the examiner where he can find copies of the non-US patent publications in the parent cases? The PTO couldn't have fixed the form to include a place to list the prior application? And it’s not like the PTO still uses paper files. To look at the publications submitted in the parent case(s), the examiner just has to press a button or two.

It seems that the people who design the PTO’s forms are the separated-at-birth twins of the people who designed and are coding Patent Center Crapper.

It should be noted that one can make up his own IDS form using a word processor, and thus could include in the IDS a reference to the parent case in which copies of publications were previously submitted.

Columbia Law Review Board of Directors Shows Its True Colors

Last week I wrote about the Board of Directors of the Columbia Law Review taking down the CLR's website because of hanky-panky by the student editors surrounding the acceptance of an anti-Israel screed. My friend Aaron Jaffe has now told me that the web site is back up and that screed is now available for anyone who wants to waste their time reading it.

More interesting to me was the letter from the Board, available through a link on the web site but not prominently displayed:

"The Columbia Law Review Board of Directors received multiple credible reports that a secretive process was used to edit Toward Nakba As a Legal Concept. Some individuals reporting exclusion expressed concerns with the process and the denial of their opportunity to provide input. The Review’s editorial processes are intended to allow all members to engage with the scholarship that the Review publishes and with one another. That engagement is central to the Review’s twin aims of publishing the highest quality legal analysis and educating the next generation of lawyers. Upon learning of this exclusion, the Board of Directors sought to delay publication by several days to permit the excluded members to read the piece and engage with their colleagues before the piece was published. But the piece was published immediately despite the Board’s effort. The Board of Directors traditionally has no role in deciding what scholarship the Review publishes, including this piece. Rather than delay the publication of the May issue any further, the Board of Directors memorializes for now its concerns with the process and its long-term goal of protecting the integrity of the Review. The Board of Directors looks forward to engaging further with the Administrative Board on this matter."

Translation: "Those of us on the Board who aren't spineless wimps are of one accord with the Jew-haters, and we're not going to do anything about this." To paraphrase Doyle Lonagan, not only are the members of the BoD losers. They're gutless losers as well.

No More AI Prior Art Searches at the ILPTO (at Least for Now)

Yesterday, the Israel PTO sent out a notice that, in translation, reads as follows:

“After several years of successful cooperation with the company Similari in the area of prior art searching by means of an AI-based tool, the engagement with the company has concluded.

“The Authority [viz. the ILPTO] is expected in the coming months to issue a new tender for an AI-based search tool. As a result of this, we are terminating the search service of the Similari company on the Authority’s web site, effective 11 June 2024.

“We apologize for the inconvenience which may be caused as a result of this, and invite the public to continue to utilize the variety of databases that are available on the Authority’s web site for searching prior art.

“We take this opportunity to thank the Similari company for a fruitful collaboration.”

I wasn’t sure what to make of this, so I poked around on the ILPTO’s website. It turns out that the website has a page that includes links to various databases that are available to users free of charge. Below is screenshot of that page taken yesterday.

As one can see, the link to “Similari” is at the top. Clicking on that link (https://app.similari.com/ilpo, which after today will no longer function) takes one to the company’s site. Below is the screen that greets the user:

What I found disconcerting was that, clicking through, the system appears to prefer that users input an entire patent application for search purposes. To me, that’s just bizarre: (a) if I’m interested in a prior art search, why would I go to the trouble of drafting a full patent application before I’ve done the search? (b) Why would draft a full application that discloses the client’s invention, and then give that application to a third party, thereby disclosing the client’s invention to that third party, which has no obligation – contractual or otherwise – maintain that disclosure in secrecy? Even if I had drafted a patent application and filed it, and used that filed application as the basis for my search, presumably the idea would be to use the search results to draft an improved patent application, in which case the delta between the two applications would be unprotected vis-à-vis the first application that was disclosed to Similari. 

So in trying to help individual inventors and small applicants by providing a link to Similari, the ILPTO may have inadvertently put those inventors’ and applicants’ IP at risk.

Similari apparently has a subscription service available. Maybe a non-disclosure agreement is included as part of its contract with paying clients. On its website the company includes a blurb about data privacy, and it’s hard to imagine a company like this gaining a significant number of paying customers without protecting clients’ disclosures.

The availability of a subscription service from Similari raises an interesting question: has the ILPTO been using Similari to assist in conducting (or to conduct in full) prior art searches?  It turns out that the answer is “yes”. The statute allows the ILPTO to engage third-party search services, and the wording of the ILPTO’s announcement (specifically the part about a new tender) implies that yes, the ILPTO has been using Similari. More importantly, tucked in the Office’s annual report for 2020 includes the following statement:

“In 2020, patent examiners began using the "SIMILARI" artificial intelligence-based search tool. Examiners use this tool as a primary search tool, after which the examiner completes the search using additional commercial search databases available at the ILPO. The new tool improves efficiency and quality of the search. It is worthy noting the search is run automatically for each application before the examiner starts the examination.”

Payment by the ILPTO for Similari’s services would help explain why the company has been willing to provide (at least in part) its search services to the public for free, and termination or non-renewal of a contract with Similari would explain why that public search service will no longer be available.  

Another question that arises is, Why did the ILPTO wait until the end of the contract with Similari before even beginning the process of issuing a new tender to provide similar services? How are examiners going to conduct searches at this point? Or are searches such going to languish until a new contract is signed with a different company?

Additonal Asininity from the Cretins At Columbia Law Review (and a Bit of Backbone from Board of Directors)

I have never been a fan of law reviews or law review articles. Law reviews are the only form of ostensibly academic journalism of which I'm aware in which the editors and reviewers are not themselves accomplished scholars or researchers in their fields, but are students studying for a first degree in law. And the articles themselves are often written as masturbatory exercises for the author, rather than pieces that are meant to read by others.

Now, the students running the Columbia Law Review have given all of us a new reason to lack respect for that publication. Yesterday, the Washington Free Beacon reported that the same, uh, erudite student editors of the Columbia Law Review - the ones who a few weeks ago asked that exams be cancelled and all students given a passing grade because they were traumatized by the NYPD forcibly removing trespassers who'd occupied a university building - tried to pull a fast one with a law review article: over the course of months, a small group of editors clandestinely worked on an anti-Israel piece, keeping it hidden from the rest of the 100-member staff of the Review, in contrast to, and in contravention of, the Review's standard practice. Only two days before scheduled publication - which was supposed to be earlier this week - was its existence revealed to those people.

Upon learning of the forthcoming publication, the Board of Directors of the Review, which includes faculty members, asked the editors to delay publication. They refused.

So the Board took down the Law Review's website.

As of this moment, if you put in "https://columbialawreview.org", you get the message that "Website is under maintenance". See the screenshot below.

We'll see how long the site stays down. Given the the university's willingness earlier this week to turn its campus in a "separate-but-equal" facility vis-a-vis Jews, I expect the site will be back online in a few days and the article published, but who knows. At this point, I'm pleased that the adults in charged have to this point actually behaved liked adults.

Israel PTO Announces Expedited Examination of Patent Applications Claiming Priority from Provisional Applications

Revised June 6

The Israel PTO announced yesterday that applicants who file applications in Israel that claim priority from a provisional patent application may on that basis request expedited examination under section 19A(a) of the statute. The idea is that applicants who have filed a provisional application but wish to obtain an examination report before the end of the priority year may take advantage of this program in order to do so.

For reasons that will be explained shortly, I don’t understand the attraction of this program versus making one’s first filing a filing at the Israel PTO.

To give a little history, in 2010 then-Commissioner Meir Noam instituted a policy that an application that was filed first in Israel, and that was intended to serve as priority application, could be moved to the front of the examination queue.  While at that time no fee was involved, it was necessary to submit an affidavit in support of the request.  In 2012 the statute was amended an introduced section 19A; the implementing regulations added a fee for some such requests to jump to the front of the line. In 2019, then-Commissioner Ofir Alon instituted a policy whereby the Office waived the requirement for a declaration in such situations.

Yesterday’s announcement says that applications filed in Israel not as PCT national phase applications, but that claim priority from a provisional application, may also be moved to the front of the queue under the same statutory provisions.  I understand the announcement to be saying that no affidavit will be required. However, unlike applications first filed in Israel under the 2010/2019 policy, for these applications, a two fees of 337 and 786 shekels respectively will be required.  ThisThese isare in addition to the 2284 shekel filing fee.  At the present exchange rate, that’s about $90 + $215 + $620 = $835925 to get an examination report.

So it’s not clear to me what the advantage is in filing a provisional application followed by an Israeli filing shortly thereafter, versus just making a first filing in Israel, and saving the extra $215 fee, or even filing in other another jurisdiction that doesn’t charge much. In the UK, for example, one can file and pay for only a search report.

Additionally, in many cases, an applicant that makes its first filing a provisional application does so because it has a limited budget and is trying to keep costs down. And if the Israel application contains additional material versus the provisional, and the applicant later wants the Israel application to serve as a second priority application, it will be necessary to pay a fee to make the application available electronically via DAS, whereas the USPTO doesn’t charge money to do this.

The announcement is also a bit strange in that it doesn’t specify US provisional applications – it says, in Hebrew, a “bakashat ara’I”, which translates as “temporary application”, then uses the English term “provisional application”. Presumably this is meant to refer to US provisional applications, but are applications from any other jurisdiction meant to be included?

One useful aspect of asking for an examination in Israel is that Israel has PPH agreements with several important jurisdictions, including the USA, Japan, China and the EPO. So getting a favorable examination report in Israel can be used to expedite examination in some other countries. But again, why first file a US provisional and then file in Israel, so that one can pay extra money?