America-Israel Patent Law

Follow-up to post re: We Filed a Legible Amendment...

As a follow-up to my post of a few weeks ago about the examiner who asserted that an amendment we filed was non-compliant because he found it difficult to read as a result of the PTO's post-filing processing of the document, in a different case (but in the same art group), I was contacted by a different examiner who also complained that the amendments we filed were hard to read, and asking for a purely black-and-white copy. Which I was happy to prepare and email to him.

The difference between the more recent case and the one I wrote about earlier is that here, the examiner didn't assert that we didn't comply with the rule. I'm sensitive to these things - the USPTO has a predilection for playing fast-and-loose with the rulemaking process and for ignoring its own rules, and the amendment we submitted complied with those rules, so the examiner was wrong to assert that the PTO's garbling of that document after we filed it meant we weren't in compliance.

Now that I know there's an issue for examiners with color amendments because of the PTO's processing software, I'll just prepare b/w documents for submission in order to have one less thing for examiners to complain about. But I will never let an examiner tell me that a pdf filed with changes marked in color is unacceptable, because it's not unacceptable.

 

 

We Filed a Legible Amendment. The USPTO Garbled It. Now the Examiner Complains...to us, not the USPTO.

So we filed a preliminary amendment in a US national phase application in early 2022, as a pdf made from an MS Word file that had the changes tracked - red strikethrough for deletions, blue underline for insertions. Just as we've done a zillion times in the past.

Today we got a first OA, and the examiner writes the following, which I've never encountered before:

"Please note that the claim listing with the amendment of January 3, 2022 fails to comply with 37 CFR 1.121(a) and with 37 CFR 1.52(a)(1)(iv) in that color was used to mark changes, so that the document is not entirely “in permanent dark ink or its equivalent.”  Nevertheless, the amendment has been entered.  Please note that the use of color in amendments causes problems in legibility in the Desktop Application Viewer (DAV) at USPTO."

In the words of Steve Martin, Well excuuuuuuuuuse me!

Thanks, Mr. Examiner, for deigning to enter the amendments, but why is it OUR problem that the PTO's systems degrade what we file? The document FILED BY US is clear as anything (unless, perhaps, you're red-blue colorblind). That's why we filed it as a pdf - so that it will appear the same on any pdf viewer anywhere.  We complied with the rule (which, I note, doesn’t mention that submissions must be “Desktop Application Viewer” compliant). Your office degraded what we submitted. Take it up with your IT people. 

I note that when I go to "preview" in Patent CenterCrapper and look at the claims filed 26 months ago, I see that the changed portions appear in light grey, whereas the original text is black. I don’t know if this is the same viewer that he uses, but I understand what's bothering the examiner. But again, not our problem.

The late, great Yiddishist Sam Levinson defined "chutzpa" as someone who kills both his parents and then pleads for mercy before the court because he's an orphan. This case isn't quite as bad as that, but it certainly ranks on the chutzpa scale.

Assuming we amend the claims in our response, we will file response as a pdf, with changes marked as normal. And in the response I will include a note to the examiner politely explaining the above...and even offering to email him a pdf copy of the amendment as submitted, unabused by his colleagues at the PTO.

(Related musings: Why is it that it's ok for the PTO to provide us with seriously degraded copies of prior art?  Or to provide foreign-language documents without a translation? This OA cites two French-language publications, without providing a translation.)

Did the USPTO Implicitly Acknowledge Last Week's IT System Failure?

Last week, the USPTO's computer systems crashed. Not just on the patent side, but also the trademark side Sometimes you could get in, sometimes you couldn't...eventually I found myself completely unable to access the USPTO's computers - not even the USPTO's homepage, www.uspto.gov - unless I changed something in my browser's setting (the DNS setting, for those of you who are interested; I would never have figured this out on my own but a nice computer-savvy colleague in the USA figure this out.)

 

During this system crash, I needed to file a response to a notice of missing parts in a national phase application to reduce the number of claims and eliminate multiple dependent claims, so as to avoid paying excess claim fees.  I was able to file the response on Tuesday the 16th, which was timely. But by the same deadline I also needed to pay a surcharge for the late submission of the inventor declarations, and because of the PTO's IT issues, I was only able to pay that on Wednesday. (In principle one can fax a credit card payment form to the USPTO, but on Tuesday that was not an option in this case).

 

This left me wondering, is the USPTO now going to make me pay an extension fee, as penance for the PTO's self-induced computer glitches?  I decided to wait and see what happens, and determined that if I didn't get a filing receipt by the one-month extension deadline, I would pay the extension fee.

 

This week I got my answer: a revised filing receipt, and change in the status of the application to "docketed - ready for examination", as well a notation in the transaction history "application is now complete".  No extension fee necessary.

 

I'm not sure if the processing of my response was due to someone's oversight (i.e. I was expected to pay an extension fee, and someone didn't notice I didn't pay it), or if the PTO is implicitly acknowledging its screw-up. If the latter, it would have been nice if the PTO posted a notice to all of us who had payment problems, informing us that the payment deadline was extended and no extension fee was due.

Like, Who Else Can See It? More Fun With The Israel PTO's Electronic Filing System

So I filed a national phase application, and then shortly thereafter - before notice of the filing the application published - the client instructed me to file some amendments to the text. 

As I've mentioned on previous occasions, one of the annoying things about the Israel PTO's EFS is that it has a predefined set classifications for documents that are being filed, and miscellaneous" is not among the choices. So you have to wade through dozens of choices for documents to be filed. Fortunately, there is a category for amendments to an already-filed specification - two, in fact, one for filing before substantive examination has begun and one for filing during substantive examination. Of course, these, like many categories, as classified as "request to ...", even though I'm not asking anyone to do anything: I'm telling them, we're amending the spec, and there's no discretion here for which need to ask the ILPTO's permission.

What I found silly was that after I chose the task description, and then typed in the number of the application, and the system didn't choke and say "you can't do that task in that application at this time", I got the following screen:

That last line, in brown, says, "name of the application: not yet published".

Who are they hiding the information from? I'm the one who filed the application! And the way the system is set up, I can only get to this screen if I'm authorized to file. If entered the number of an application with which I'm not associated, a text box will pop up that says "You're not authorized to file in that application, you ninny!"

When 1+1 Does Not Equal 2: Israel PTO Filing System Gags on Merged PDF File

I had a strange experience this morning when filing something at the Israel PTO via the ILPTO EFS.  I had merged two pdf documents into a single pdf document, and when I tried to upload the merged document to the Israel PTO filing system, it gave me an error message - something about a problem with the fonts.  But when I uploaded up each pdf document separately, I received no such message.  Thinking that the problem might be with the pdf editing program I was using to merge the files, I merged the two files using a different pdf editor, but the same thing happened when I tried to upload the merged file.  Printing the merged file as a new pdf document using cutepdf didn't help either.  Ultimately I uploaded the two documents separately (listing one as the specification and one as a sequence listing, which it's not, but it's clearly labeled "appendix"; I was concerned that the EFS would only accept text files as sequence listings, but it was fine with my pdf).  

Are there any hardcore pdf mavens out there who can explain what the glitch in the ILPTO's filing system might be?

On the (In)security of Digital Records: Israel PTO Changes Title of Patent Application Without Informing Applicant

In the mid-1990’s, as the internet was becoming ubiquitous, there was talk about moving to a paperless office. Nearly 30 years later, many businesses are paperless. The patent offices of both the USA and Israel, the two jurisdictions in which I represent clients, are not completely paperless, but they’re close.  In both cases, the official record of a patent application is maintained in digital form only. 

This places a particular obligation on these patent offices to maintain the electronic records in good order.  Which is why it’s exasperating to see those records handled as cavalierly as they are.

In the US, when submitting documents electronically, the filer must provide not only the document but a description of the document as well.  Yet it’s well-known among practitioners that the USPTO often changes the document description as provided by the filer.  In some cases that may to the benefit of the applicant/patentee, but in others it can have significant repercussions, for example if a document is misclassified by the USPTO and as a result either isn’t considered by an examiner, or, worse, causes the system to think that a particular response wasn’t filed on time, resulting in a notice of abandonment of the application.  If the filer has kept the electronic filing acknowledgement and all the electronic documents as they were filed, it should be possible to rectify the error, although often at a cost to the applicant/patentee.

Even more egregious is the changing of the electronic record, without evidence of when the change was made – or that a change was made at all. I have blogged previously about documents disappearing from or appearing in the electronic record of an Israel patent application.  This week I came across something else: a case in which the Israel PTO changed the Hebrew title of a patent application without giving notice of such.  But first a little background:

Patent applications in Israel, as in the USA, must have a title. In the USA, examiners rarely pay attention to the title (in 20+ years of practice, I have yet to see a US examiner say something the title of an application), but in Israel, examiners are instructed to make sure the title is appropriate for the claims.  Thus it sometimes happens that after the claims are found to be allowable, the examiner will ask for a new title, which the applicant then provides; sometimes the examiner will even suggest a new title. 

Less commonly, the English title is considered acceptable, but the Hebrew title is not.  (Although patent applications in Israel can be filed in English, applicants must provide a Hebrew title, and sometimes the translation from English isn’t as good as it could be.) And when that happens, the examiner asks the applicant to provide a better Hebrew title.

In the case I saw this week, the applicant had provided a Hebrew title that wasn’t sufficiently descriptive of the invention. That title appears on the application filing receipt. But the Hebrew title listed in the ILPTO database is different. And there’s nothing in the file history showing that the examiner asked for a new title, or that the applicant provided one, or even when the change in the title was made.  So it’s possible that the Israel PTO sua sponte changed the title.

In this particular instance, I doubt that the title provided by the ILPTO will make a difference in anything. But the facts that the electronic record doesn’t reflect when the title was changed, and that the Israel PTO may have made this change of its own volition, without consulting the applicant – that’s a big deal. Because it means that the PTO may be changing other records without informing applicants/patentees.

We Forgot About Your Patent Application. Sucks To Be You.

In 1995, the USA moved to a 20-years-from-earliest-filing-date regime. A few years later, in response to complaints that this effectively foreshortened patent term from the previous 17-years-from-grant if the USPTO was slow in examining cases, Congress enacted provisions for patent term adjustment (PTA, not be confused with patent term extension – PTE – for drug patents under the 1984 Waxman-Hatch amendment).  The formula for just how much adjustment a patentee is entitled to is a bit complicated, and there are pitfalls for the unwary, but the basic idea remains: examination shouldn’t take more than 3 years, and to the extent it does and that’s the fault of the USPTO, the term of the patent is adjusted accordingly to compensate.

There is no similar mechanism here in Israel, which is a pity. Particularly when the Israel PTO is as derelict in its duty as it was in a case I recently heard about from a colleague.

The application in question was filed more than 10 years ago as a national phase application.  A few years later, responsibility for the case was transferred to my colleague, who amended the claims to correspond to those granted in a foreign patent and requested allowance per §17(c) of the statute. The PTO sent a notice of allowance.  Two days later, it sent a letter withdrawing the notice of allowance.  The letter stated that the allowance was being withdrawn because certain of the claims did not comply with a particular Registrar’s Circular letter. 

And what was the issue with these claims?  They were worded, “Use of an XXX according to claim 1 for [doing YY]”. 

There is nothing in the statute per se that prevents the grant of claims worded that way. In fact, for many years, the Israel PTO granted such claims, many such claims were litigated over the years, and I am not aware of a single instance in which such a claim was found to be invalid on account of having been worded that way.  Nevertheless, at some point someone in the ILPTO decided such claims were not acceptable (because, it is asserted, they don’t recite a process and therefore don’t recite a category of statutorily patentable subject matter), and sua sponte the ILPTO stopped allowing them.

The letter went on to say that the application was being returned to the examination queue.  And there it waited. And waited.

And waited some more.

After two and a half years, my colleague submitted a letter requesting an interview with the examiner about the case.

It’s been more than a year since that request was submitted, and it’s still being ignored.  Wow.

My guess is that there’s a glitch in the ILPTO’s computer system, so that when a notice of allowance is mailed and then rescinded, the system doesn’t actually put the application back into the queue.  I base this on the fact that I had a similar occurrence with an application I was handling. 

Adding to the frustration is the fact that this could easily have been dealt with by telephone.  The examiner could have called my colleague and said, “Looks, claims m and n are not allowable because they’re in the wrong format, but if you let me do an examiner’s amendment, I’ll cancel them and allow the case under §17(c).”  Except that the Israel PTO doesn’t believe in Examiner’s amendments, God knows why not.  Note to Ophir Alon: please institute examiner’s amendment practice.  It will make life easier for all of us.  And fix the computer system so that an allowance is withdrawn, the application actually is thrown back into the examination queue.

But even without the examiner’s amendment tool available, the examiner could have phoned my colleague and proposed two possibilities.  The first is that the applicant send in a new set of claims with the offending claims cancelled.  Alternatively, since claims of the format “XXX according to claim 1 for use in doing YY” are deemed acceptable by the Israel PTO, the examiner could have asked the applicant to rewrite the offending claims in purpose-directed product format.  Although this would have taken the claims out of the framework of §17(c) (since each claim must be identically worded to one of the granted foreign claims), the examiner still could have examined the claims – and while not giving an official allowance under §17(c), could have effectively relied on the foreign grant to allow the set of claims in which the “Use of XXX” claims were replaced by “XXX for use…” claims.

But none of that transpired. In fact, the examiner didn't even send a letter spelling out these possibilities.  Instead, several years have gone by, and the patent application has languished because the ILPTO didn’t do what it’s supposed to do (and told the applicant it would do), viz. examine this patent application.

At least my colleague hadn’t paid the issue fee at the time the notice of allowance was withdrawn. If he’d done that, they wouldn’t have automatically refunded his money.  No, they would have insisted that he REQUEST the refund.  But that’s a blog post for another day.

MOJ and Israel PTO Ask for Suggestions for Amending the Regulations for Patent Oppositions

This morning the MOJ and Israel PTO posted a call for suggestions for changes to the regulations governing patent oppositions in Israel, and the ILPTO sent out an email notifying recipients of this fact.  The deadline for response is June 30, 2021.  A similar call for comments was published in 2016, and while many comments were elicited (posted here), no action resulted.  Apparently the powers-that-be now wish to move ahead with this.  

I've blogged about patent oppositions in Israel before, but for those who aren't familiar with the opposition procedure, it goes roughly like this: the examiner says the application is allowable, the applicant pays an "acceptance" fee, and a notice that the application has been "accepted" is published in the Patents Journal.  Any party then has three months to file an opposition to the grant of the patent, and then another three months to file its statement of case. The applicant then has three months to file its statement of case. Then the opposer has 3 months to file written evidence, the applicant has three months to file its evidence, and then the opposer can file further written evidence to address points raised in the applicant’s evidence.  Then there’s an oral hearing at which the parties cross-examine witness, followed by written summations (oral summations are common in the USA but rarely used in any litigation in Israel).  Eventually the Israel PTO issues a written decision, which is appealable to the district court.  The whole process, without appeal, usually takes a minimum of two years, and in practice longer, since parties (or more accurately, their lawyers or patent agents) often agree to extensions. If the applicant wishes to amend its claims during the opposition, this can further prolong the proceedings.  The applicant has no enforceable rights until it has a patent in hand, viz. until the ILPTO issues a decision upholding the grant of the patent.

One important point to note: the pre-grant oppositions are authorized by the statute, and thus can only be done away with, or modified to post-grant oppositions, by statutory amendment, which requires approval of the full Knesset.  The particular rules governing the opposition procedure are set by regulation, which requires only approval of the relevant Knesset Committee and the Justice Minister, and therefore are a bit easier to adopt.

I reproduce below my own comments from November 2016, which explain many of the problems with the current system.  My views haven’t changed in the interim, so I've yet to decide if I will change anything from what I wrote four-and-a-half years ago.    

Shalom Ayelet.

I write in response to the “קול קורה” asking for comments on the opposition procedure in Israel.  It’s not clear from the request itself if a change from pre-grant to post-grant opposition is going to be considered at this time, but I understand from other sources that the MOJ is interested in comments on making the existing opposition proceedings move along more quickly.  So I’m not going to discuss pre- vs. post-grant oppositions, despite the fact that I think Israel should transition exclusively to a post-grant proceeding, and that it’s inefficient to not discuss such a transition at this time.

By way of background: I’m not being paid by anyone to write these comments.  I deal primarily with helping inventive entities developing strategies for protecting their intellectual property, and I prepare and prosecute patent applications.  I also have a fair amount of experience with oppositions from the side of patent applicants, in several fields, and I’ve worked on behalf of local generic pharmaceutical companies in assessing their positions, or potential positions, in view of pending applications.  In short, I’ve seen the process from both sides, and I have no ulterior motive here: I call it like I see it, based on my experience.

A. It’s too easy to oppose

The single biggest problem I see with the existing opposition regime is that the barrier to entry for opponents is too low.  This leads to the filing of unjustified oppositions and unnecessary prolongation of the patent grant process.  To explain:

Presently, anyone has three months from the date of publication under section 26 to file a notice of opposition.  They then have a period of an additional three months to file their pleadings (כתב טענות).  Typically this document is a pro forma statement that “the claimed invention lacks utility under section 3, lack novelty under section 4 and lacks inventive step under section 5, the description is insufficient under section 12 and the claims do not reasonably arise from the specification under section 13”.  The אגרה for filing a notice of opposition isn’t particularly high, and the attorney fees for preparing a one-page notice of opposition and a one-page כתב טענות are pretty low as well. 

Thereafter, the applicant will file pro forma pleadings of its own within 3 months, denying the opponent’s contentions.  This is supposed to be followed by written evidence from the opponent within 3 months.  Often, however, at this stage, or sometimes even at the stage of the כתב טענות (!), the opponent will request an extension, and usually, the applicant will agree, because the applicant knows that it may later find itself in a situation in which it needs an extension, and therefore wants the opponent to be accommodating in the event that happens.  This is even more true in situations in which the same two parties, represented by the same counsel, have multiple oppositions pending simultaneously, since acquiescence to an extension in one case can be traded for acquiescence to an extension for the other side in a different case. 

If the opponent chooses not to file evidence, it can usually get the applicant to agree to have the opposition dismissed without a request for costs.  More on that below. 

The point here is that it is ridiculously easy for someone to oppose the grant of a patent application, and effectively delay the grant of the patent, at minimal cost to the opponent.  This has to end, and a few changes in the procedure would achieve this result.

1. Require submission of detailed pleadings, and only allow amendment of those pleadings by leave of the Rasham with good cause.

In the old days, when Israel patent applications were only opened to the public upon completion of ex parte examination, there was some sense in giving opponents 3 months to decide whether or not to oppose, 3 months to file pleadings, and additional time to file written evidence.  Not so anymore, with the examination file being open to the public 18 months after the priority date, or, more commonly, shortly after national phase entry.  (The vast majority of patent applications filed in Israel are PCT national phase entries, and I assume that most of the oppositions are filed against national phase applications; I’ve no doubt the ILPTO has statistics on that.) 

Today, interested parties can follow the examination for its duration.  This means they can be ready not only with detailed pleadings, but with written evidence, very soon after the application has published.  Under these circumstances, there is no reason to permit the submission of pro forma pleadings.  At a minimum, opponents should be required to present their detailed pleadings, including complete lists of prior publications upon which they will be relying, at the time the pleadings are due.  Frankly, I think they should be required to provide their evidence as well.  Perhaps, instead of a three-month window to oppose, a 6-month window could be put in place, concomitantly with the requirement that opponents file their detailed pleadings and evidence.  Note that this is similar to the existing rules governing cancellation actions (הליכי ביטול), in which the party seeking cancellation of a patent files pleadings at evidence at the same time.

Additionally, opponents should not be allowed to subsequently introduce or rely on publications or evidence that they could or should have known about at the time they filed their pleadings and evidence; when motioning to introduce new evidence, the opponent should need to show the rasham that the documents that the opponent seeks to introduce could not have been known to the opponent at the time it filed its pleadings and evidence.

The flip side of this, of course, is that the applicant would be required to file its response to the pleadings and evidence in a complete form within a similar, limited amount of time.

2. Require identification of the real party in interest, and introduce estoppel provisions

Currently, any party may oppose a patent application.  Moreover, if that party loses the opposition, and the patent is granted, there is nothing in the statute to prevent that party from raising the same arguments as invalidity contentions in litigation, should that party be sued for infringement by the patentee.  I don’t know if this has ever happened, and if it were to happen, there’s a chance the judge would agree with the patentee that the defendant is estopped from raising the same arguments after having lost at the PTO.  But the fact is that it’s not in the statute.  That’s unfortunate, because the risk of estoppel, when coupled with the requirement to submit complete pleadings and evidence at an early stage, would be one way to reduce the filing of frivolous oppositions. 

Moreover, estoppel normally doesn’t apply to ostensibly unrelated parties that were not part of the prior proceeding – in this case, that were not part of the opposition. 

What would be helpful, therefore, is to require identification of what in US law is called the real party in interest that is opposing the grant of the patent, and to statutorily introduce an estoppel against that party and any parties in privity with that party from raising in later court proceeding any arguments against the validity of the patent that could have been made (not just which were made, but could have been made) in the opposition proceeding.

3. Make it easier to reject oppositions out-of-hand (על הסף)

Opponents should be required to meet a minimum threshold, showing that the case they present goes beyond what was considered by the PTO during ex parte examination.  If an opponent merely cites publications that, taken together, teach no more than the publications considered by the examiner during ex parte examination, then there’s no reason to proceed with the opposition.  In such cases, the applicant should be able to have the opposition summarily dismissed.  The rasham has traditionally been reluctant to use סילוק על הסף as means of disposing of cases before him; perhaps the statute should be amended to make it clear that this is an acceptable remedy when the opponent’s contentions amount to the same contentions considered by the examiner.  This will also cause opponents to carefully consider the arguments to be made in an opposition.

4. Cap or eliminate cost awards

This is discussed in more detail below, but is mentioned here because this step would also reduce the likelihood of frivolous oppositions.

5. Increase the fee for filing oppositions

The usefulness of this step would seem to be self-evident, although if the changes outlined above are adopted, it might not be necessary.

B. Adopt an EPO-like procedure with respect to amendments

I once heard the late Eli Hurwitz say that there’s no patent that can’t be gotten around.  It’s a well-taken point: no matter how worthy of patent protection an invention may be, it’s much more difficult to draft a good patent application than it is to invalidate a patent or oppose its grant.  Moreover, the statute does not impose upon patent applicants a duty to search the prior art themselves before drafting their patent applications; rather, it assigns to the ILPTO the duty to determine the allowability of each of the claims of the patent application.  It’s therefore not surprising that adverse parties will sometimes raise points that were not taken into consideration during ex parte examination. 

In view of this asymmetry, if the application discloses something patentable but the claims do not define that something patentable sufficiently well, the applicant should be given the opportunity to amend its claims to a form in which the claims do define the invention so as to meet the requirements of the statute. 

The present legal framework seeks to allow this, but is deficient in that it treats such amendments as separate proceedings in and of themselves.  Moreover, while it correctly allows applicants to make such amendments as of right, if applicants find themselves having made one set of amendments, then find those amendments opposed by the opponent in the substantive opposition to the grant of the patent, the applicant may need to do another round of amendments.  This obviously slows resolution of the opposition.

A more efficient route would be to adopt the type of approach taken by the EPO: after the parties have presented their arguments and evidence, when it comes time for the oral portion of the proceedings the applicant should be able to present a reasonable number of sets of claims, in its order of preference.  Each set can then be considered by the PTO, with the opponent able to raise its objections, so that if there’s a set of claims that’s acceptable to the applicant and meets the statutory requirements, that fact will be discovered quickly.

C. Treat oppositions as private litigation

An irritating aspect of oppositions is that although they are designed as adversarial proceedings, the ILPTO often views its role as that of an inquisitor, whose job is to protect some amorphous, unidentified “public” from an invalid claims in patents.  That view, which is biased against patent applicants, evinces a misunderstanding of the ILPTO’s role.  The ILPTO’s role is to examine patent applications, to refuse to allow claims that are not new or are obvious over prior publications, or are insufficiently supported by the specification – i.e. that don’t meet the requirements of sections 4, 5, 12 and 13 of the statute – and to allow claims that do meet those requirements.  That’s how innovation is encouraged. 

To the extent that pre-grant opposition is viewed as an extension of patent prosecution, the scales should not be tipped against applicants whose applications happen to have been opposed by third parties, as is presently the case, with the ILPTO assuming a quasi-inquisitorial stance.  Rather, the opposition should be treated as private litigation.  If the opponent has not raised an argument, then it’s not for the patent office to raise that argument for the opponent.  Similarly, if the parties submit a mutually-agreed upon request to an extension for one of the sides to file some paper, this should be granted by the rasham.

D. Eliminate failure to cite prior publications as a ground for oppositions

The statute rightly imposes on applicants a duty to assist the PTO by informing the PTO of publications cited against corresponding applications elsewhere or that are otherwise known to the applicant to be relevant.  However, failure to cite a reference should not per se be grounds for invalidating a patent; such failure should only matter when (a) but for (אלמלא) the omission, the examiner would not have allowed the claims in the form in which they were allowed, and (b) the omission was deliberate, with an intent to deceive the PTO.  While the PTO can readily determine (a), it is in a poor position to determine (b), a task more suited to the courts.  Consequently, failure to comply with section 18 should be removed as a grounds for opposition.  

E. Cap or eliminate cost awards

In the last several years the PTO has gone absolutely berserk in its awards of costs to the prevailing party in inter partes proceedings, granting awards that are far beyond what a party could obtain from a judge in a regular court proceeding.  Applicants for patents should not be punished for unsuccessfully seeking patent protection, and opponents should not enjoy a windfall for convincing the rasham to sustain an opposition; in most instances, if an opponent is successful, the opposition has paved the way to commercial success that will far exceed what it spent on the opposition. 

Since the PTO seems to be unable to restrain its predilection for cost awards out of proportion to cost awards in litigation before the courts, it’s time to statutorily reign in such costs.  Or to do away with them altogether, since for most opponents the cost of the opposition is merely part of the cost of doing business – many of the same parties that regularly file oppositions today were filing them regularly 20 years ago as well, before the PTO starting enriching those parties for having filed those oppositions, which means in the past they really did view it as part of the cost of doing business.  Granting windfalls in the form of cost awards distorts the system.

I’d be happy to discuss these matters, and other points related to oppositions, with you or members of the MOJ staff.

Dan Feigelson

November 15, 2016

Another Example of How To Fleece Clients Without Them Knowing (Part 1)

This is the first of several posts about an interesting situation.

X is a patent practitioner here in Israel. He’s a very smart guy, and he’s one of the straightest arrows I know. 

Y is also a patent practitioner here in Israel.  Y holds a senior position in a Big Office, so he must be good. Right?

I’ve seen X at work with inventors/clients, and he’s absolutely first-rate at helping inventors think about what they’ve invented, how they might characterize it, and what additional lab or field work they should before filing do to help bolster their patent applications.  In X’s discussions with his clients, he often makes suggestions that ultimately result in claims that, for purposes of US law, require X to be listed as an inventor. 

Now, in those situations, X could just leave himself off the inventorship list a priori, and probably no one would be the wiser.  But, shockingly, X cares that his client’s US patents be valid and enforceable.  So when X finds that’s he’s an inventor, he (a) lists himself as an inventor, and (b) assigns to his client all of his current and downstream rights in the invention and the patent application.  X does not request additional remuneration for (b). 

X prepared and filed a first patent application for client Z, a relatively large organization.  X found he was an inventor, so he informed the other inventors and Z accordingly, listed himself as an inventor, and assigned all his rights to Z.  Then, as sometimes happens in large organizations, after the application was filed, there was a change in the gatekeeper/dispatcher at Z who decides where to dole out the work for patent applications (yes, “dole out” is the correct term to use here, but that’s a subject for a different blog post).  New gatekeeper/dispatcher (“NGD”) decided that the case that X had worked on with the other inventors needed to be transferred to a Big Office.  So he transferred responsibility of the case away from X to a Big Office, specifically to the Big Office with which Y is associated.  The fact that NGD did so just shows that’s he’s not subject to oversight, but that’s also a discussion for a different blog post.

Now here’s where the fun begins.  NGD’s office contacted X, writing, “As you are aware, this case has been transferred to [Y’s office]’s handling.  They are asking that we provide in writing that you agree to no longer be an inventor in this case.”  To which X essentially replied – and these are my words, not his – “To the best of my professional judgment I am an inventor, so beyond it being a lie to say I’m not an inventor, saying I’m not an inventor could harm Z; and Z has an assignment from me giving it all my rights in the invention and in the patent application and its progeny, so what do you want from my life?”

X never got an answer to his very logical question.  Instead, Y contacted X directly – on Big Office stationery, no less! – provided a set of claims that Y said were to be used for a filing in the USA, and asked X to (1) review the claims and confirm that X isn’t an inventor, and (2) confirm that X had “no demands of any kind toward my client [i.e., Z] regarding the above-identified patent application”.

As one might expect, X is a busy person, and doesn’t have time for b.s. like this. Especially when no one’s offering to compensate him for time spent on a superfluous project.  So he politely replied in a manner in which he reiterated his first reply.  In response to that, Y sent X the following missive:

“Dear X,

Thank you for your email dated December 25, 2018. Unfortunately, my client is not satisfied with your answer, since no ambiguity should be left regarding this matter. Accordingly, my client again requests that you:

1.Review the claims I sent you and confirm that you are not an inventor therein. Since you are familiar with the technology, this should not take you more than a few minutes and my client feels that it is your duty to provide a definite answer;

2.My client further notes that while you point out that you have assigned your rights, you have not confirmed as requested that you have no demands of any kind toward my client in respect of the above-identified patent application. My client requires your positive confirmation of this fact.

You may also want to refer to paragraph 8(d) of the Code of Ethics of the Association of Patent Attorneys in Israel:

    [Hebrew text pasted into letter; translation will follow in a subsequent post]

as well as to paragraph 12A(b) thereof:

    [more Hebrew text pasted into letter; translation will follow in a subsequent post]

Since a delay in putting the record straight may damage my client that is exploring its future activities in respect of this patent application, I look forward to receiving your prompt response.

    Yours sincerely,

    Y”

There are several things worth commenting on here.  Today we'll discuss one of them.

Changing of Claims and Assertion of non-inventorship

As noted, X assigned all his rights to Z.  So his being listed as an inventor has no bearing on Z’s rights.  That being the case, why is Y insistent not only that X be removed from the list of inventors, but that X agree that his name be removed?  If X is an inventor of at least one of the claims, then he needs to be listed as such in order to comply with US law, and if he’s not an inventor, then he shouldn’t be listed.  But either he is or he isn’t – it’s an objective inquiry.  Thus, if in Y’s professional opinion, X is not an inventor of any of the claims, then as the now-agent for this application, it’s Y’s duty to take X’s name off the list of inventors, and X’s own view doesn’t figure into the calculus.  Similarly, if Y thinks X is an inventor of some of the claims, then it’s necessary to leave X’s name among the inventors, and X’s view is irrelevant.  Either way, why bother asking X about whether or not he himself thinks he’s an inventor? 

Moreover, the patent application in question has been published and X’s name appears among the listed inventors (though Z is listed as the applicant).  Removing X’s name at this point in time will therefore be a flag later on that there’s a question about the inventorship.  So if a US patent is eventually obtained, an attempt is made to enforce or license that patent, and X isn’t listed as an inventor, someone’s likely to start asking about X’s role as an inventor.  If it turns out that X’s name was deliberately removed, notwithstanding his being an inventor, that doesn’t bode well for Z.  At the very least, it’s additional litigation costs or a lower licensing value.  On the other hand, if X’s name is retained, who’s going to know?  The lower risk for Z at this point is to leave things as they are. 

Furthermore, if Y believes X is an inventor on some claims but not others, he can easily solve his “dilemma” by cancelling those claims on which X is an inventor.  That will provide a legitimate reason to remove X’s name, and the reason for removal of X’s name can even be made part of the record.  (Of course, if any of those claims are later re-inserted, X will have to be added back to the inventorship list, but again, with an assignment to Z in place, this won’t affect Z’s rights).  That, in fact, sounds like it’s the case here. But it doesn’t explain Y’s insistence that X confirm he’s not an inventor on those claims.

Bottom line: it appears that Y has convinced Z that X’s being listed as an inventor is an issue, when it’s not an issue, and when putting inventorship into play could prove deleterious to Z’s interests; and that it's critical that X provide his opinion that he is not an inventor, when that opinion is irrelevant. 

But convincing Z of this gives Y additional billing. And if Y is the type who needs ego-stroking, it does that too.

Examination under Section 17(c): Be Careful What Statutes You Wish For

This is a story about how a good idea that originated in the Israel PTO tripped over its own shoelaces (in a manner of speaking) when it was eventually enacted into law.

The story begins in the late 1980’s, when the Israel PTO had a significant backlog in the examination of patent applications.  The Commissioner at the time had (or had suggested to him) a bright idea: why carry the load all by yourselves when there are other patent offices examining related applications? 

Thus was born Commissioner’s Circular no. 9, which said that if applicants for Israel patents amended their claims to correspond to claims granted in corresponding patents in certain other jurisdictions, notably the USA and the EPO, then the ILPTO would view those claims as meeting local criteria for novelty, inventive step, unity of invention, sufficiency of description and clarity of the claims.

The idea proved to be so good that in 1995, during major round of statutory amendments, this policy was written into the statute as §17(c). 

Neither Circular no. 9, nor §17(c) after it, solved all of an applicant’s problems, however.  In particular, section 7 of the Israel statute forbids the patenting of methods of treatment of the human body.  So those granted US claims reciting “A method of treating X, comprising administering to a patient in need thereof drug Y…” can’t be granted in Israel.

Under Circular no. 9, the ILPTO was willing to allow applicants to convert such method of treatment claims to “Swiss” style claims or purpose-directed product claims, and to proceed in accordance with the Circular.  This was true as well for many years under §17(c). 

More recently, however – perhaps as a result of the ILPTO’s effort to draft written examination guidelines, perhaps due to changes over time in senior ILPTO personnel, perhaps owing to both – the ILPTO has taken a stricter view of the application of §17(c) with respect to method of treatment claims.  In particular, sub-section 4 of §17(c) states that one of the requirements is that:

“(4) the claim or claims in the application are identical to the claims in the parallel patent, but the application can include fewer claims that those in the parallel patent;”

In recent years, the ILPTO has taken this literally, and will not allow applicants seeking to invoke §17(c) to amend method of treatment claims to “Swiss” or purpose-directed product format.  If such method of treatment claims appear alongside claims on compounds and/or pharmaceutical compositions, the method of treatment claims will need to be cancelled if §17(c) is to be used, and a divisional with the claims rewritten in an acceptable format filed.  The divisional will not be able to benefit from §17(c). 

When this practice was initiated by the ILPTO, the Office maintained flexibility in the application of the practice with respect to method of treatment claims – Circular no. 9 was simply a way for the Office to say, “We’ll accept the word of the USPTO or the EPO regarding these claims and this application if you, the applicant, want us to. To the extent this may call the validity of the patent into question, caveat emptor.”  And that was the way the statutory provisions were viewed by the PTO in the years after their enactment, likely because the same Commissioner who issued Circular no. 9 was in office for several years after §17(c) was enacted. 

It’s ironic that the ILPTO now views itself as constrained by a statutory provision that was intended to enshrine in the statute the practice that the ILPTO itself initiated and applied with a greater measure of flexibility than is presently the case.

So when making statutory amendments, as in many other things, be careful what you wish for.

Memo to Israel PTO: Please Read the Statute BEFORE You Take Your Electronic Filing System Online

At some point, when things are little less hectic, we’re going to write a dissertation on the problems with the Israel PTO’s electronic patent filing system (henceforth “ILEFS”), in the hope that some of the many problems with the system eventually get fixed. For now we share this little gem.

Under the local statute and rules, when examination is completed, the ILPTO sends the applicant a letter, called a “PK 13”, giving the applicant three months to pay the acceptance fee. Following receipt of the fee, the ILPTO sends the applicant a letter informing the applicant when publication of notice of acceptance of the application in the Patents Journal will take place. It is that publication itself that constitutes “acceptance” of the application.

Why is the official date of “acceptance” of the application important? For starters, that is the date that opens the three-month period for the filing of pre-grant oppositions. That three month period is not extendable, so if you’re going to oppose someone’s application, you want get the date right.

The date of “acceptance” is also important for applicants who may want to make further amendments to their claims. Per sections 29 and 65 of the statute, after acceptance, applicants can only amend their claims to restrict the claims’ scope, and they can’t add new claims. But before acceptance, they can make all manner of amendments, including adding new claims and/or broadening claims. Thus says Section 22 of the statute: “At any time before acceptance of the application the applicant may amend the specification, whether as a result of a notice under section 20 [i.e. an office action – DJF] of his own volition.”

It appears that the ILPTO is unfamiliar with Section 22, or at least the persons involved in designing the ILEFS were unfamiliar with that section. If one wishes to amend an application after receipt of the PK 13 letter, the ILEFS allows this, as “amendment after PK 13” is one of the defined tasks in the list of tasks in the system. But once the acceptance fee has been paid, the system will not allow applicants to file such amendments, even if publication – and thus the official acceptance per se – has not yet occurred. The ILPTO thus denies applicants a right that the statute guarantees them.

Additionally, as noted, sections 29 and 65 of the statute give the applicant the right to amend the claims after acceptance in order to reduce the scope of the claims. But the ILEFS won’t let an applicant do that either. When we tried to file such amendments in an accepted-but-not-yet-granted application, the system gave us the message that “the status of this application is not appropriate for this action”. So here too, the ILPTO denies applicants a right that the statute guarantees them.

But what’s a statute for if not to be ignored, right?

One bit of commentary: clearly, if publication of the acceptance is imminent, then there’s an administrative problem of giving examiners sufficient time to examine the proposed amendments – there needs to be cut-off. At the USPTO, for example, amendments after a notice of allowance has been mailed must be submitted no later than the time of payment of the issue fee. Similarly, in order for Article 19 amendments to PCT applications to be published with the application at 18 months, they must be received by WIPO several weeks ahead of publication. The adoption of a similar statutory scheme in Israel is certainly warranted. But until then, it’s not for the ILPTO to ignore the statute and make up rules as it goes along.

Was The Israel Patent Office Online Filing System Designed by Sergeant Schultz?

Those of us above a certain age recall the 1960's sitcom Hogan's Heroes, about a group of irreverent Allied POWs and their incompetent captors, Colonel Klink and Sergeant Schultz.  The latter tried hard to maintain a low profile.  Hence his famous tagline: "I see nothing! I know nothing!"

Working with the Israel PTO's online filing system, we're beginning to wonder if it was designed by Sergeant Schultz, or at least a real-life relative who lives by Schultz's mantra.  We recently went to file some voluntary claim amendments, and discovered that there's no mechanism in the system for doing that, at least not in a straightforward fashion. 

The system is designed so that first you choose an action from a closed list of actions, then enter the file number, then attach the pdf documents to be uploaded.  That in itself is clunky enough, because if you change the choice of action after you've entered the file number, then the file number field is erased and you have to re-enter the number.  Why not first pick the file number, then choose what documents you wish to file?  That's how the USPTO and WIPO do it. 

Even better, "amendment" and "amended claims" are not among the choices of actions available.  There are various other choices, such as various types of office action responses, that then provide fields for uploading clean amended claims and marked amended claims, but there's no independent action choice of just "amended claims".

But the real fun part is that the system limits which actions you can choose based on what's outstanding from the ILPTO. If you choose, as we did, "response to office action pk 27", and input a file number, then choose the files to upload with your response, and then click on "add to cart", you're liable to get an error message: "there is no outstanding p.k. 27 in that file", at which point you're barred from uploading your amended claims.  Brilliant.  It's as if the ILPTO never heard of voluntary amendments, or doesn't want applicants to file voluntary amendments.  "I see nothing, I know nothing!"

What we ended up doing was filing the amended claims as part of a "PPH request", in which our cover letter simply said "We submit these amended claims", and filed the amended claims as such, since the "PPH request" action includes fields for uploading amended claims.  Of course, the fact that it wasn't a PPH request may fluster the person who processes the documents at the ILPTO.  Which is why we're waiting with bated breath for the ILPTO's response.

Oh, did we mention that there's no drag-and-drop function for choosing the pdf documents to upload?

The system may not have been designed by the fictional Sergeant Schultz, but it clearly was designed by people with no experience in online patent filings, and who in Schultz-like fashion remained willfully blind to the far more efficient ways in which other offices facilitate the online filing of documents.