Ten and half years ago (exactly!) I wrote about the connection between the (quasi-) legal fiction used in selling leavened products before Passover and US copyright law. Today I’m going to discuss another (quasi-) legal fiction, one that arises in the context of Succot, and its similarity (or rather, dissimilarity) to a situation that arises under the Patent Law Treaty.
The Patent Law Treaty (PLT) is a treaty from the early 2000’s that seeks to harmonize certain formal aspects of patent law. Both the USA and Israel are signatories, as are 41 other countries.
One of the more salient parts of the PLT is that it enables the restoration of priority. Although normally an applicant has one year from the date of its first-filed application (FFA) to file a follow-on application claiming priority from the FFA, the PLT and associated regulations establish conditions under which such priority may be “restored” in a limited window after the one-year period. See Article 13 of the treaty.
The “restoration of priority” provisions of the PLT raise an interesting question with respect to Paris Convention Article 4, which is the part of the Paris Convention that establishes the whole priority regime. Namely, Article 4 says that if you file a first patent application on an invention, and then less than a year later file a second patent on that invention, your deadline for claiming priority to either application is 12 months from the first filing, unless at the time the second application was filed, the first application “has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority”.
Hence, if on January 1, 2025, Applicant files application A that discloses invention A, and on February 1, 2025, Applicant files application B, that discloses invention A and some variations thereof, the deadline to file an application that claims priority to either A, or B, or both, is January 1, 2026. If the Applicant deliberately waits until February 1, 2026 to file an application claiming priority to A or B, under Paris Article 4 that priority claim is no good: more than 12 months have passed since the filing of A, and Applicant isn’t entitled to claim priority to B, since B was filed while A was still pending.
However, if prior to filing application B, Applicant had expressly abandoned application A, leaving A unpublished and with no rights outstanding, then B would be considered the first filing, and Applicant would have until February 1, 2026 to file an application claiming priority from A.
Now let’s suppose that (1) A was filed on January 1, 2025 and B was filed on January 15, 2026, and (2) both A and B were filed as US provisional applications. US provisional applications are not examined and not published, and they automatically expire after one year. Under these facts, A would have expired by the time B was filed, and thus B could serve as a priority application for an application filed by January 15, 2027. Or so it would seem.
Enter the PLT. Under the PLT, it’s theoretically possible that (1) an application claiming priority from A could be filed within 14 months of the filing of A (e.g. on January 15, 2026), and (2) the failure to file that follow-on application and to make the priority claim to A within 12 months of the filing of A was unintentional, in which case priority to A could be restored per the PLT. This theoretical possibility thus gives rise to the question, “Under Paris Article 4, can application B, filed as a US provisional application within 14 months of the filing of A and after A’s ostensible expiration, serve as a priority application for an application filed on February 15, 2027?”
I’m not aware of case law that deals with this question. My gut feeling is that no, that hypothetical situation of restoration of priority doesn’t negate the ability of B to serve as a priority application – at the time B was filed, A had expired, unpublished, with no rights outstanding. Hopefully no client of mine will be the guinea pig for resolving that question, in any jurisdiction.
So what does any of this have to do with Succot, the holiday that Jews are currently celebrating (for one more day)?
Well, one of the mitzvot (commandments) associated with Succot is the “taking of the four species”: the Torah, in Leviticus 23:40 says, “On the first day you shall take unto yourselves the fruit of hadar trees, branches of palm trees, boughs of leafy trees, and willows of the brook, and you shall rejoice before your God seven days.” It was determined long ago that the fruit referred to is the citron (Citrus medica), the palm branches are actually palm shoots, the “boughs of leafy trees” are three myrtle twigs, and willows are two willows. (There are various criteria for each of these to make them suitable for fulfilling the mitzvah, but those aren’t germane here.) To fulfill the mitzvah, the person bundles the species together and picks them up (and traditionally, shakes them around a bit; there are certain parts of the morning prayers that are also accompanied by such shaking). The apparently superfluous “take unto yourselves” in the verse is understood to mean that on the first day of the seven-day holiday, these four species must belong to the person taking them – on the first day, you can’t borrow someone else’s species.
That’s all fine and good when all four species are readily available, which they are in modern-day Israel (where there’s a whole industry for supplying these four species), but historically that hasn’t always been the case, and it’s still not always the case in other places. In Michigan, for example, where I grew up, the only place you’ll find palm trees will be in a greenhouse in a botanical garden.
So if on the first day the four species must be belong to you in order to fulfill the mitzva, but you’re in a place where only a few people can get ahold of all four species, what do you do?
Well, a person who has all four species could give his own species to the next guy. But then the original owner will be species-less on day 2, and maybe he won’t be in a place where he can borrow from someone else. Or maybe the original owner wants to be able to help multiple people fulfill the mitzvah, to enable all of them to fulfill the mitzvah on the first day.
Hence there is a discussion in the Talmud of the use of the legal device called matana al m’nat l’hakhzir – a gift given on condition (or with the intention) that the gift be returned to the giver. This is the quasi-legal fiction to which I alluded earlier. There are several ways that this concept is understood, but the most basic one is that the receiver of the gift is only considered the owner of the species retroactively, upon his returning those species to the original owner/gift giver, and thus, at the time he shook the species together, he was the legal owner. But if he doesn’t return the species, then he was never their owner, even though he was in possession of them. Another view is that the gift is an outright gift, but only for a limited amount of time, after which the receiver must return the species to the original owner/gift giver. (How is this latter view different from a loan, which everyone agrees doesn’t solve the problem? Ask someone who knows this issue better than I do.)
Regardless, what’s going on is an attempt to make the non-owner a temporary but bona fide owner…while enabling the original owner to effectively maintain ownership. That is, a sort of legal fiction.
Thus, in a sense, the idea of matana al m’nat l’hakhzir in connection with the four species presents a mirror image of the PLT-provisional filing problem discussed above. There, the issue is that the applicant doesn’t want his first application A to be alive – he wants it to be expired at the time he files B. But the law creates a hypothetical possibility that A is still pending, and therefore the B filing, made when A is formally expired, might not be considered good enough to allow priority to B to be claimed. It would be like having a bundle of the four species that you can’t get rid of even if you want to.
Moadim l’simcha (what’s left of it) and חג שמח.