I’ve written several times in the past about suspension of patent examination at the Israel PTO (here, here, here and here). In June, the ILPTO announced a new policy for dealing with the suspension of patent examinations. We’ll get to the new policy shortly, but a brief history of suspensions is in order.
There is nothing in the statute about suspending patent examination. So under the sui generis policy that had been in place for many years, as long as no response was outstanding from the patent applicant, an applicant could request suspension at any time, and the ILPTO would set the application aside. Since nothing was outstanding, there was nothing for the applicant to pay.
Then the ILPTO switched gears, and said that suspensions could only be requested after the applicant filed its response to the pre-examination letter that the ILPTO issued under §18 of the statute (which response consists of the submission of an IDS-type document and a list of corresponding applications outside Israel), and before the mailing of the first office action; once substantive examination commenced, no suspensions would be granted. And a fee for each month of suspension had to be paid in order for the suspension to take effect.
After a few years of that, some applicants realized they were unnecessarily paying for suspensions (since in some cases the suspensions expired before the examiner would have taken up the case anyway), and they complained about it. So the ILPTO again changed its policy, and said that you still had to ask for the suspension before the first substantive OA, but that the ILPTO would mail a request for money shortly before examination was due to start. If the applicant paid the fee, the case would be suspended; if not, the file would be closed for failure to respond.
Now the ILPTO has again changed tack, in two ways. First, while the window for requesting suspension only opens upon the filing of a §18 response, it now closes three months before substantive examination is due to start. And how does one know when that date is? Well, in the ILPTO’s database, for each case for which examination hasn’t yet started, there’s a notice stating that examination is expected to commence in X months. See the screenshot below.
Problem is, that notice doesn’t say from which date those X months are calculated. The priority date? The PCT filing date? The national phase entry date, or the Israel filing date for non-PCT applications? Inquiring minds want to know!
Second, the ILPTO now demands payment of the fee for suspension up front. And what if the ILPTO refuses your request for suspension? You can then request a refund. This is a fun process that in some cases will cost more in attorney time than the value of the fee paid.
Supposedly, in cases in which the suspension is approved and paid for, the system will automatically delay the start of examination by the number of months of suspension.
Apart from putting the onus for tracking the deadline to request suspension on the applicant and requiring payment in advance, the real problem with this system is that the ILPTO is not authorized to collect money for suspensions. As I explained several years ago, the office can collect fees for extensions of time, viz. when the applicant owes the office a response by a certain date and responds after that date. But in the case of suspensions, the applicant owes the office nothing. Indeed, the suspension can only be requested after a response to the pre-examination letter has been filed, viz. when the applicant doesn’t owe the office any response. Apparently the ILPTO wants to get hit with a class-action suit demanding repayment of improperly collected fees.
The better approach, as I outlined previously, is to tell applicants that they have four months to respond to the §18 letter, and that they can extend that response period not by a mere six months (as is the present practice) but by some lengthy period, like 24-36 months. Applicants could then pay the legally required extension fee at the end of the period; if they don’t file a response with the extension fees, the application goes abandoned. By allowing a lengthy extension period for responding to the §18 letter, the ILPTO would effectively convert the response to the §18 letter into a request for examination, and the suspension period would be converted into a legal extension period. It’s a win-win.
What do you say, ILPTO?
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