America-Israel Patent Law

Bad Advice Abounds: Some Advise To File A CIP, Even When It’s A Bad Move (Which It Usually Is)

One of the unique features of US patent practice is the existence of continuation applications.  Back when US patents issued for 17 years from the grant date (and were not published prior to grant, a point to which I’ll return below), this meant that one could have a series continuation applications tracing their lineage back to a first application, so that one could have chain of patents with common ancestry but different expiration dates. (It was in this context that obviousness-type double-patenting and terminal disclaimer practice developed in the USA, but that’s not the topic for this post.)  Patents earlier in the continuation chain couldn’t be cited against applications later in the chain.**

US practice also has something called a continuation-in-part application (CIP). By definition, a CIP contains new matter vis-à-vis the parent application. To the extent that the claims of the CIP are based solely on material in the parent case(s), the CIP benefits from the filing date(s) of the parent case(s). New material, and claims based thereupon, are only entitled to the CIP filing date, and in principle an ancestor patent could be cited against a subsequent CIP if that ancestor patent was published more than a year before the CIP filing date.

Under the old 17-years-from-filing regime, in which patent applications weren’t published to prior to grant, one could prosecute an application to allowance, but then rather than pay the issue fee, file a CIP with additional material. Provided there were no relevant third party intervening publications between the parent case filing date and the CIP filing date (and no relevant applicant publications from more than a year before the CIP filing date), this enabled applicants to continue to develop their inventions, and to supplement and expand their US patent applications, until such time as they were ready to let the patent issue, at which point they would prosecute the case to allowance and pay the issue fee. A further CIP could then be filed prior to issuance, or the applicant could from that point continue with a series of continuation applications.

In June 1995, the USA switched to a 20-years-from-earliest-filing regime. While this didn’t change the no-citing-the-parent-against-the-child practice in continuations (and for old material in CIPs), it did mean that one had to take into account the loss of patent term that results from filing a series of continuation applications. It also meant that since that time, when filing a CIP, one needs to consider whether or not the new material is patentable on its own, even in the face of the parent case. If the new material is patentable on its own, then it’s probably wise to simply file a new application, rather than file a CIP, because filing it as a CIP means you’re foregoing patent term – instead of 20 years from the filing date of the CIP, you get 20 years from the earliest non-provisional application in the chain.

I actually encountered a case like this shortly after I got my USPTO license: an applicant had filed a series of continuations, and then, after June 1995, filed a CIP and got a patent that claimed the new material – in this case, some chemical compounds that showed promise for treating a particular disease. But because of the CIP status, and because the earliest application in the chain had been filed five years earlier, the patent would expire after 15 years from the CIP filing date, not 20, even though the new material was patentable on its own at the time of filing. As a result, big pharma companies didn’t want to invest. It wasn’t my mistake; I was merely given the honor of telling the client it was screwed.

In March 2001 CIP practice took another hit. That’s when the USPTO started publishing US applications prior to issuance, nominally 18 months after filing. What this meant was that if you filed a CIP more than one year after the parent application published, that parent application would be available as a printed publication against any claims in the CIP that were based in the new material in the CIP. While the publication of one’s own earlier application was already a concern for applicants who filed outside the USA (for example who filed PCT applications that published 18 months after the priority date), from March 2001 it was something with which US-only filers also needed to concern themselves.

Since this is all old news, why am I writing about it now? Because, remarkably, this is still an issue that some people get wrong, as I saw this week.

A colleague here in Israel for whom I have in the past filed PCT national phase applications in the USA contacted me. His client, an Israel-based company, has a US subsidiary, and that subsidiary has an in-house US patent attorney. That attorney had suggested filing some material in a CIP of a pending US national phase application, and my colleague asked what I thought. I told him I saw no advantage to be gained. If the new stuff was not patentable in view of the parent PCT, which published several years ago, then calling the application with the new stuff a CIP wouldn’t help, because that PCT was citable against the new stuff. And if the new stuff was patentable notwithstanding the published PCT, then why foreshorten patent term by making the new application a CIP of the US national phase application? File a standalone and get the full 20 years!

I remain amazed that there are practitioners out there giving their clients bad advice.

To be fair, there are situations in which it makes sense to file a CIP, but those situations are quite limited. The most common such situation is when there’s new material and you’re still within a year of the publication of the PCT application. In that case, you can incorporate the new stuff, and then file your application in the USA as a CIP of the PCT application, what some of us refer to as a “CIP bypass” (a term that I think was coined by Sam Helfgott, who retired from practice ten years ago or more). By getting a filing date within one year of the PCT publication, that publication is not citable against the CIP; by making the new application a CIP of the PCT, the new application gets the benefit of the PCT date for any material that was already in the PCT and that might be claimed.

**Many other jurisdictions allow divisional applications, and in some of those jurisdictions, such as Israel, it’s possible to file a series of divisional applications in much the same way that continuations are used in the USA. However, there’s also a thing called a divisional application in the USA, and in particular circumstances calling an application a divisional rather than calling it a continuation application can be advantageous for purposes of obviousness-type double-patenting. See 35 U.S.C. §121 and e.g. Pfizer et al. v Teva, 518 F.3d 1353 (2008) (Fed. Cir. 2008).

“Clarification” Letter About Suspensions From Israel PTO

Today I received from the Israel PTO identical letters in two different patent applications. In both applications, we requested suspension of examination back in 2023, when the procedure was for the applicant to first request suspension and for the Israel PTO to then send a letter shortly before the commencement of examination, telling the applicant to pay for the suspension or examination would commence.

In the interim, as I reported here, last June the ILPTO announced it was changing its procedure: applicants would henceforth need to pay for suspension at the time the suspension request is made, and the deadline for requesting (and paying) for the suspension would no longer be the actual commencement of substantive examination, but three months before the date on which substantive examination is expected to start. And how does one determine that? By looking at the ILPTO’s public database, which unhelpfully states “Pendency for exam XX Months”, without stating when counting of the XX months starts.  (Turns out it’s from national phase entry or, if the application isn’t a PCT national phase application, from the actual filing date in Israel.)

In both of the applications in which I received the letter, the expected examination date is less than three months away.  This, apparently, is the proximal cause for the letter being mailed specifically in these two cases. The letter mentions that within the next month, the ILPTO’s electronic filing system will be updated to implement the new procedure for requesting suspension, and states that “during the next month, it will be possible to request suspension for applications for which the expected examination date is less than three months away”.  This is a ham-fisted way of the Office saying, “Pay up now, or we’re going to start examining your case.”  That these two cases are due to be examined soon, and that suspension was requested in them in 2023, also explains why I received the letter specifically in these two cases, and not as part of a general email blast to the ILPTO’s mailing list.

The fact that the letter wasn’t sent to the general readership is puzzling, inasmuch as it’s worded as a general letter, not a case-specific one, and it includes, in a yellow-highlighted passage, the helpful notation that “the Office will inform the applicant of changes in the expected examination date, to the extent there are any”, a statement that seems to be directed to the entire applicant population, not just to these two applicants of mine.  As to the substance of that statement itself, I loosely paraphrase it as really saying: “The deadline for requesting suspension is a moving target, and maybe we’ll let you know if the date changes, but if you really want to be safe, you should request and pay for suspension as early as possible so that you don’t get screwed by us beginning examination before you want us to”.

The letter also mentions that if anyone has questions, they should contact Ora Sasson, and then the letter then helpfully doesn’t provide her telephone number or email address. I happen to have both in my phone’s address book, as does pretty much anyone who deals with the ILPTO on a regular basis, but how hard would it have been to include that information in the letter?

None of this changes the fact that, as I have discussed previously, the ILPTO is not authorized to collect fees for suspending examination.

Israel PTO's Electronic Filing System Again Rears Its Fascistic Head

Last year we submitted claims in an application identical to those allowed at the EPO, and told the examiner that when the European Patent granted, we'd file a request for allowance under section 17(c) of the statute. The examiner then issued a notice of allowance under 17(c). Since the notice was premature - the EP hadn't been granted yet, and 17(c) says such allowance must be based on a granted patent (which the ILPTO takes to mean not a mere notice of allowance) - we requested withdrawal from allowance. The ILPTO acquiesced.

In the interim, the European patent granted. I went to submit the 17(c) request now, and the system tells me, "Nyeah nyeah nyeah, you can't file that right now, pfffffft!" Why not? There's nothing in the statute that says we can't file such a request. Oh right, the people at the ILPTO and programmers didn't ask us users for input. And, in their omniscience, they can anticipate all possible situations, and dictate when we can file certain document and when we can't. Even if it's not in accordance with the statute.

So I submitted the document under a different heading that the system did let me file. I then called the examiner's ILPTO phone number to leave a voice message telling her what's going on, so she'll pick up the case and allow it. But I don't get voicemail, I get the examiner, so I mention the application number and she cuts me off and says, "It's after business hours." To which ask, "So why did you answer? I called your work phone expecting to leave a voice message." She explained that there are certain days on which she works from home, in which case calls to her office phone are forwarded to her personal cell phone, and she has no way of knowing if it's an incoming office call or an incoming personal call. Nice. Even nicer, she tells me that she doesn't check her voicemail anyway, so it wouldn't have mattered if the call had gone to voicemail.

I sent her an email explaining the situation. I hope she reads it.