I wrote in April and May about the Israel PTO’s update to its patent electronic filing system, in particular about how there were many glitches in the system, even as the Office claimed everything was hunky dory.
This post is about two ongoing problems with the electronic filing system: the lack of a filing acknowledgement showing what was submitted; and the fascistic design of the system, that presumes to anticipate every possible scenario and thus limit a filer’s options accordingly.
When the Israel PTO introduced electronic filing for patent applications in December 2015 as an optional filing means, they didn’t include a mechanism to provide the filer with confirmation of what had been filed. As the deadline forcing practitioners to use the electronic system approached in June 2016, apparently at the urging of one of the more senior practitioners, the ILPTO started sending the filer an email containing the files submitted. Not ideal, but better than nothing.
But since the ILPTO first forced us to file new patent applications via the “new” electronic system in September 2023, the “new” system has never provided a filing receipt showing what you filed.
Now, theoretically, one can see what one filed after it’s been submitted. That’s because what happens when one files a new application, or a response, via the new system is that the system opens what I’ll call a “basket”. As soon as the “basket” is opened, a tracking number is assigned to this basket, and the date on which the “basket” was opened is recorded. One then uploads to the “basket” the files one wishes to submit, and then clicks “submit”. There’s a lag between when one clicks “submit” and when the system actually “accepts” the submission, to use the Hebrew term (what I’ll call “processes” a submission), but once the “basket” has been submitted, one can enter the basket in the EFS and see the documents that were submitted. However, there are two problems here.
First, the system only provides information about two dates: the date on which the basket was created, and the date on which the basket was last updated. There’s no listing of the date and time on which a particular basket was processed into the system, and no email or other documentation is ever sent to the filer confirming the time of submission and what was submitted. And although the basket creation date can’t be changed, at least not by the end user, any time one goes into the basket to look at the documents contained therein – even after the basket has been processed into the system – the “basket last updated” status gets changed to the date on which one accessed the already-processed basket. I call it the Heisenberg feature of the system: you can’t prove both what you filed and the date on which it was processed into the system, because by entering the “basket” to see what’s contained therein, the system changes the “last updated” status.
In principle, once a document has been processed into the system, it’s visible in the ILPTO’s database (which is separate from the filing system). But the ILPTO has the capability to remove files from the database. So there really is no way to prove what one filed. And not all submissions show up in the database. For example, when one pays certain fees via the new system, there’s nothing in the database to reflect that something was paid. Indeed, whereas in the “old” system, an extension of time, for example, always needed to be accompanied by some accompanying letter (e.g. an OA response or just an extension request), filings done under the “new” system have no such requirement, so no document appears in the database.
With the USPTO’s EFS, and even now with the USPTO’s PatentCrapper, which in many ways is a downgrade from its predecessor EFS, you can immediately download a filing acknowledgement that lists exactly the documents you submitted. Moreover, those documents appear in the list with a hash function value, so that if you ever need to prove what it was you filed, you can do so. Why can’t the Israel PTO’s electronic patent filing system do the same?
The ”old” ILPTO electronic filing system is still available for certain actions. And because that system provides users with a filing confirmation, I continue to use that system for anything I can. Admittedly, that filing confirmation is itself flawed: the system emails back to the filer all the files that were submitted, except each one is shown as being about 2 kilobytes larger than the file that was actually submitted. Still, it’s possible to retain those emails, or if one doesn’t wish to do that, to print out each email and the list of attached files, so that one can prove what was submitted.
This brings me to the limited choices that both the “old” system, but especially the “new system” provide to users.
When filing a response, or a request for extension, or a fee, the “old” system asks you to input the application number, and then to choose an action from a list of actions. In some cases, it says “Nyeah nyeah nyeah, you can’t do that action in this file!” The “new” system is even more draconian: you input the application or patent number, and the system proactively gives you a list of possible actions. In neither system is there the possibility of filing a “miscellaneous paper”.
This, of course, leads to problems if the system calculates things incorrectly. For example, in neither the “old” system or the “new” system is “supplemental OA response” one of the choices. Another example: in the “new” system, if you want to submit something and an extension fee is due, the system calculates the amount it thinks is due and won’t let the filer submit until that fee is paid. I discussed previously a case in which the system told me I had 30 days to file a response even though a response had already been filed, and another case I had in which no fee was due but the system thought one was due and therefore wouldn’t let me submit. In the latter case, without the option to file a “miscellaneous paper” for which the system wouldn’t calculate a fee, it took some work to get the issue resolved.
But those examples are nothing compared what happened to a colleague recently. He was asked by a pro se applicant to file a divisional application of an application in which the applicant/inventor was listed as the address for service. But the system wouldn’t let the practitioner file the divisional, because this colleague wasn’t listed as the address for service in the parent case – “You can’t file a divisional because you don’t have power of attorney in the parent case” was what the system told him.
The problem here is there’s nothing in the statute that says a divisional can only be filed by a party that has POA in the parent case. Moreover, for initial filing, Paris Convention filings, or PCT national phase filings, the office allows practitioners to file without a POA, and then gives the applicant time to provide a POA. That POA need not necessarily appoint the practitioner who submitted the application.
In this case, because of the glitch, the inventor called the person in charge of the filing system, who is not a lawyer nor, as far as I know, a patent practitioner, and when the inventor found he was having trouble explaining the issue, he patched the practitioner into the call so that the practitioner could explain the problem. At which point the non-lawyer non-patent practitioner ILPTO person said, “I can’t talk to you about this, you don’t have power of attorney”.
You can’t make this stuff up.
What’s really surprising about that incident, and the fascistic nature of the ILPTO’s electronic filing system in general, is that the aforementioned person in charge grew up in what was then a communist country. You’d think such a person would understand that central planning, i.e. trying to anticipate every possible scenario, and then trying to limit people’s choices on that basis, is not a winning formula.
Earth to Israel Patent Office: your patent electronic filing system leaves much to be desired. If you had asked for input from us users before you launched it, it wouldn’t be deficient. And now that you’ve launched this deficient system, you need to learn from WIPO, which is fantastic in responding to user input about ways to improve the already-good ePCT system.