America-Israel Patent Law

Professor Zelig Eshhar z"l

I’ve mentioned previously that my wife’s building at Weizmann was rendered unusable as a result of some ballistic missiles the fun-loving Moslems running Iran gifted us. What I didn’t mention is that she has been in that same building, the Wolfson Building, since she first started as a student at Weizmann in the fall of 1991.  Most of the time during her doctorate she was on the sixth floor, working in the lab of Zelig Eshhar. As an outsider studying in a different department, one of the things that impressed me about Zelig was that he seemed to have a good handle on how to manage his research group: he wasn’t a slave driver, and from time to time to group went out for fun off-campus. Eight years ago, I also wrote a piece about how he stood to make quite a chunk of change due to the licensing of patents concerning techniques for modifying a patient’s own T-cells to target them to cancerous cells (methods that are now in use), and how his story illustrated the difference between getting credit for one’s scientific contributions and getting money for commercializing an idea. And for those who are into patent trivia, Zelig’s name is forever enshrined in the caption of a 2005 Federal Circuit opinion, Capon v. Eshhar.

Zelig died yesterday after a prolonged period of dementia, and is being buried as I write. If one is into symbolism, I suppose one could say something about how Zelig’s passing in close temporal proximity to the damage to the building that housed his lab symbolically marks the end of an era, or something like that. Except that Wolfson will be repaired, just as Weizmann will repair or rebuild all the damaged or destroyed buildings. Most people who go into scientific research for a living do so because they’re driven to do the research, and a couple of missiles aren’t going to stop them. And with regard to Zelig, in addition to pioneering T-cell therapy, he mentored many students over the years, some of whom (like my wife) have remained in academia and continue to research problems and publish their findings, others of whom work in the biotech industry, researching problems of commercial significance.  

Israel PTO to Patent Filers: We Know What’s Best For You, So Maybe We’ll Listen To You, Maybe We Won’t

Last month I wrote about some of the ongoing problems with the Israel PTO’s patent electronic filing system.

On July 1, on just two days’ notice, the ILPTO held a Zoom meeting to update patent filers about additional changes in the electronic filing system. The meeting took nearly two-and-a-half hours.  Over 100 users of the system participated in the meeting.

Two of the complaints raised by multiple participants were (a) the lack of a filing acknowledgement, showing what documents a filer filed and how those documents were coded into the system, and (b) the inability to upload a cover letter with a given filing, let alone a miscellaneous letter to deal with a case not covered by the system. Remember, the new system thinks it knows all possible options available to an applicant at any given moment and all possible documents that one might file, so according the PTO responsible for development of this system, there’s no need for cover letters.

So on July 2, I wrote her the following:

Patent application no. XXXXXX:

There are 250 pages in the application (231 pages of text, 19 of figures).  

At the time of filing in 2020 I paid for three sets of 50 extra pages. 

This year, on March 2, the Office sent a letter saying we owed extra page fees. We don't, because, as I said, we paid for the extra pages at the time of filing.

I want to respond to the notice. But when I go into the "new" system to respond to the "מענה לליקוים" (there is no comparable option in the "old" system), (a) the system tells me that we owe three fees for extra pages, and (b) there's no place for me to submit a letter explaining that the system is wrong.

You said in the Zoom meeting yesterday that there's no need for such letters to accompany responses, and no need for miscellaneous letters to address situations the system isn't designed for, because the system knows exactly what's necessary.

This is yet another example of how those assertions are false. 

The team developing this system cannot possibly anticipate every scenario. 

Had you conducted alpha and beta testing prior to launch, you might have picked up on many problems beforehand. Instead, you chose not to test, and to launch with a faulty system, and then to force users to waste hundreds of hours identifying problems, some of which you still refuse to fix. 

I don't know why the development team that you head continues to act as if it's omniscient, when all evidence points to the contrary.

I don't know why the team that you head continues to act as if the time of patent office employees is valuable and the workflow within the patent office is important, but the time of the practitioners, paralegals and applicants who have to file with the system you've designed isn't worth anything, and the workflow of offices and organizations outside the patent office doesn't matter.

I don't know why the development team that you head continues to act as if a poorly designed filing system does not impose unnecessary financial costs on the applicants.

I do know that this needs to stop. 

We users need to be able to submit miscellaneous letters. We need to be able to submit cover letters if we so choose. We need to receive an acknowledgment of what we filed immediately upon filing, showing the names of the files we submitted and their sizes. We need to be able to choose the action that we want to take in a given file, and not have the system dictate to us what our choices are. We need to be able to indicate how many months' extension we want to pay for, and not have the system dictate to us, since the system is sometimes wrong.

There are many features I use in the USPTO's filing system, and in ePCT, that could and should be implemented here. But you didn't ask us before you started developing the "new" filing system, because now you're invested in a sub-optimal system, and I have no idea how much effort will be required to fix it so that it's acceptable.

Then today, in a different file, I had a bizarre experience: I filed a response, and after filing the system told me I owed additional page fees.  Except that I reduced the total number of pages, and had already paid extra page fees.  And, as in the case about which I wrote to the ILPTO on July 2, there’s no way to submit a letter telling the system it’s wrong. So today I sent this person the following:

[name], a follow-up to my email of yesterday:

Your wonderful filing system just did it again in application no. YYYYYY. 

Early today I filed a S18 response, in which we cancelled many claims, so the total number of pages was reduced.

And I then later in the day - today - I received a letter from the PTO telling me that we increased the number of pages (by 10, from 250 to 260) and therefore now need to pay for excess pages.

Since the system doesn't provide us with an electronic filing acknowledgement, that lists not only the documents we filed, but also how those documents were coded, I can only guess as to what happened here.

Guess number 1: the system used the MARKED version of the claims to do the page count, rather than the clean version.

Guess number 2: I mistakenly uploaded the clean claims as the marked version, and the marked claims as the clean version, and the system used the marked claims to the page count. 

What makes me doubt either guess number 1 or guess number 2 is that (a) I don't see any claims in the database listed as part of the submission in response to the S18 letter, and if no amended claims were submitted, the page count shouldn't have changed, and (b) if the marked version of the claims was counted, that version would have increased the total number of pages by 14, not by 10. 

So that leads me to further guesses:

Guess number 3: I didn't upload the claims, and instead mistakenly uploaded a prior art publication as claims.

The problem with guess number 3 is that (a) as noted, I don't see anything in the database listed as claims filed as part of the submission, and (b) none of the publications, if erroneously submitted as claims, would have increased the total number of pages by 10.

Guess number 4: I didn't upload any claims at all, and the system randomly generated a letter telling me I owe money.

Since it appears from the database that I didn't upload the amended claims, this seems the most likely scenario. 

Regardless of the reason, why is the system generating erroneous "you owe us money" letters?

To make sure that the correct claims are on file, I have now submitted a "supplemental S18 response", with the amended claims.

But the fact that the system is sending out letters telling us that we owe money, when in fact we don't owe money, is unacceptable, to put it mildly.  

There are many ways in which this could be addressed.  For example, to account for the possiblity that someone mistakenly switched the marked and clean claims, a competent system would notice the discrepancy in the number of pages between the two documents, and figure out which document is the actual clean version of the claims to be examined. Or a human could verify that.  Similarly, if a publication was mistakenly loaded instead of claims, the office could manually inspect to determine that. Or the system itself could inspect the document and warn the user beforehand that the document does not appear to be a set of claims. (The USPTO currently does this.) Or, before the system sends out a "you owe us money letter", the Office could have a person check to make sure the letter is warranted.

In any event, there is now a "you owe us for extra pages" letter outstanding in this file. Since, as I mentioned yesterday, your wonderful system won't let me simply submit a letter explaining why no extra page fees are due, please send another letter cancelling the "you owe us money" letter from the file, and in that new letter please include an apology for wasting my time and my client's money.

And please fix the programming in your wonderful system so that it doesn't send spurious "you owe us money letters".

I have not yet received a response.  We’ll see what happens.