America-Israel Patent Law

Why Is the ILPTO Asking for Excess Page Fees That I Already Paid?

Filed a divisional application at the ILPTO. The ILPTO’s electronic filing system populated all the relevant fields with information from the parent case. As the application has more than 100 pages, I told it how many excess pages there were (250) and it calculated the total fees due – NIS 2344 filing fee plus NIS 293 for each group of 50 pages over 100, total NIS 3223.  Which I paid.

A few minutes later, I got the filing receipt. That’s good – USPTO doesn’t do things that quickly.

But at the same time I got a letter saying we still owed NIS 2344 in excess page fees, and that we need to file a “response to defects” on the web site. It included a hyperlink.

So I wrote a response saying, No we don’t, your system calculated exactly what we owed and we paid it, see receipt no. XXX. (Normally I’d pick up the phone to deal with this, but the ILPTO doesn’t take phone calls after 13:30.)

I went to file the letter and found that the system doesn’t have an entry for “response to defects”, and that the hyperlink provided yields a 404 error.

There was, however, an entry for “payment of excess page fees”, which I chose…and it doesn’t let you file a response unless you also pay the fee that the ILPTO says you owe.

So I filed it under “response to defects in national phase entry”, since even though this isn’t national phase entry but a divisional of one, Michael Bart and his team of PCT people at the ILPTO are competent, and will call me about this tomorrow or Sunday and we’ll get it straightened out.

What I want to know is, why did the system issue this letter in the first place?

Bonus: the filing receipt includes the notation in the photo below. The Hebrew is correct, but the English translation is not. It should read “Division from application no.:”, not “Request of division from”.

Why Doesn't the Israel PTO List the Amount of Renewal Fees in Its Reminder Letters?

Most practitioners who are responsible for patent renewal fees include these deadlines in their docketing systems. Nevertheless, as with everything else for which there's a deadline, redundancy is a good thing. Which is why it's nice that the Israel PTO sends warning letters a few months before patent renewals are due. This isn't just out of the goodness of their hearts: the Regulations in Israel require that such a letter be sent (although in those rare cases in which the ILPTO fails to send such a letter, the ILPTO takes the position that it is not bound by that Regulation, and that the onus is always on the patentee to docket its renewal fees). The USPTO, by contrast, only sends a letter after a renewal fee payment has been missed, saying, "Nyeah nyeah, you missed the payment, now you can pay but only with a penalty."

But why can't the Israel PTO include the amount of the renewal fee due in its reminder letter? The notice of allowance letter that the office sends to applicants says how much the issue fee (allowance fee) will be. And the renewal fee reminder letter tells the reader how much each month of extension will cost. So why can't the renewal fee reminder letter include the cost of the renewal fee itself? Granted, it's only a few mouse clicks to look up the fee schedule, and you can save a pdf version of the fee schedule for quick reference later, but still, it shouldn't be a big deal to include the amount of the renewal fee itself in the reminder letter.

This Is Why We Have To Explain or Label Patent And Design Drawings

For all its discussions of different topics, the Talmud contains only a few that relate to what today we would classify as intellectual property, and there's no notion of a patent in the Talmud. Nevertheless, once in a while my professional background proves useful in my study of the Talmud. 

Case in point: my son and I were learning Masechet Sukkah the other day. On folio 4A of the standard Vilna edition, the editor added a drawing to try to illustrate two different cases discussed in the Gemara. Glancing at the edition I was using (on the right below), which was a more recent update of the Vilna edition, he said to me, “You got one with a good drawing. The picture in mine doesn’t make sense.”

 

I compared the two and quickly sized up the situation. “The one I have is a perspective view, showing the construction of a three-walled sukkah from the open side, in one case having a platform running along the middle wall between the other walls, in the other case having a platform running along a side wall from the middle wall to the opening. The drawing in yours shows shows the same thing, but it's shown looking down at the sukkah from above.”

After a few seconds, “Oh, wow!”

“Aren’t you glad your dad’s a patent attorney?”