America-Israel Patent Law

Proposed Amendments to Regulations at Israel PTO: Powers of attorney (Part 2)

Yesterday I discussed many of the problems with the Israel’s PTO’s treatment powers of attorney. Today I discuss the ILPTO’s proposed amendments to the Regulations regarding powers of attorney.

The good news is that the ILPTO has now woken up to problem of the rules seemingly requiring a POA, and seeks to rectify it. The bad news is that the ILPTO’s proposed language not only won’t accomplish this, but (a) it will make things worse than they presently are, and (b) it doesn’t address other issues that need to be addressed, such as the appointment of multiple practitioners who are not part of the same firm (e.g. an in-house attorney along with outside counsel). 

Below I present side-by-side the current wording and the proposed wording for the relevant parts of Rule 17, in both cases my translation:[1]

Current	Proposed
17.(a). Any action required of a person in accordance with the statute or these regulations or which is permitted in accordance with them, he may, by written power of attorney that shall be delivered to the Office, appoint a patent agent or lawyer who are licensed to practice their professions to do that action.	17.(a). Any action required of a person in accordance with the statute or these regulations or which is permitted in accordance with them, he may, by written power of attorney that shall be delivered to the Office, appoint a patent agent or lawyer who are licensed to practice their professions to do that action. The appointee shall inform the Commissioner that he has power of attorney to take the action on the electronic application form at the time of filing the application, and if he is appointed after the filing of the application, by way of written notice which shall be delivered to the Office.
	(d) The Commissioner may, at any time, or for a specific matter, require the appointee to produce the power of attorney, and even to condition the taking of the action on the production of the power of attorney.

Ostensibly, the idea is to allow practitioners to file patent applications and to continue to take actions in those applications, without actually submitting powers of attorney, unless the Office requires such submission.  The problem is that way the proposed amendment is worded, the practitioner will need to aver upon filing that he already has a signed POA in hand. That’s worse than the present situation, since, as noted yesterday, at present a practitioner can file without a POA. 

Will practitioners be willing to make such a statement if it’s not true, viz. if they don’t have a signed POA in hand at filing time – especially if they can then be required to produce the document later? I suspect many if not most practitioners will not want to aver to something that’s not true. Thus the proposed amendment, as worded, will be a hindrance rather than a help.

Moreover, since, as also noted yesterday, the statute does not give the ILPTO the authority to close a patent application for failure to file a POA, from the perspective of making things easier for applicants and practitioners, the ostensible problem that needs addressing is one of the ILPTO’s own making, since it is the ILPTO that threatens, without authority, to close files if a POA is not filed. 

It’s also worth noting that there’s nothing in the proposed amendment to limit the power of the Commissioner to require production of a POA, i.e. that’s entirely at his discretion.  That leaves things open to abuse

It would be better to rewrite 17(a) to read something like, 17.(a). With respect to any action required of a person in accordance with the statute or these regulations or which is permitted in accordance with them, he may, by written power of attorney that shall be delivered to the Office, appoint a patent agent or lawyer who are licensed to practice their professions to do that action. The patent agent or lawyer may provide the Office with a written power of attorney from the person appointing him; in the absence of a written power of attorney, the submission of a document by a patent agent or lawyer in an application shall constitute an assertion by the agent or attorney that he is authorized to file the document.

And new 17(d) could read, (d) The Commissioner may, by way of public notice, specify classes of documents or actions for which the Office will require from the appointee a written power of attorney in order for such document or action to be valid.  (This wording could be appended at the end of 17(a) rather than appear as its own separate sub-section.)

By wording the regulation this way, all registered practitioners would be able to file documents in all patents and patent applications, but the ILPTO could still designate certain types of actions – such as express abandonments – that would require the submission of a power of attorney.  Because the electronic filing system utilizes two-factor authentication, the Office would be able to track who filed which document, and for further ease of reference the ILPTO could require documents submitted to specify the filer’s patent agent or lawyer registration number.  It would be necessary to modify the electronic filing system to enable these functions, but those technical concerns should not be an impediment to setting good policy.

Additionally, while the ILPTO’s proposed amendment doesn’t address the matter of applicants who wish to appoint multiple practitioners who are neither “partners” (a term that is not defined in the statute or regulations) nor who “work together in the same single office”, the modified proposal here would in principle facilitate such multiple appointments, since any practitioner would be able to file a document in any application, and for those documents or actions for which a POA is required, it would easy for the office to check to be sure that person filing the paper was authorized in the POA to submit the paper.  However, for the sake of completeness, it would be necessary to amend regulations 16(f) and 17(b):

Current	Proposed
16(f) If a person gave authorization in accordance with regulation 17, the address of the authorized party shall be regarded as the address for service for the authorizer, as long as the authorization remains in force and as long as neither the authorizer nor the authorized inform the Office otherwise; this sub-section applies also with respect to the address of the authorized or any other address provided, and the authorized may inform the Office of an email address as set forth in regulation 16(b) for use with all patent applications and proceedings before the office in which the authorized represents the applicant.	16(f) If a person gave authorization in accordance with regulation 17, the address of one of the authorized party parties, designated by the authorizer, shall be regarded as the address for service for the authorizer, as long as the authorization remains in force and as long as neither the authorizer nor the authorized inform the Office otherwise; this sub-section applies also with respect to the address of the authorized or any other address provided, and the authorized may inform the Office of an email address as set forth in regulation 16(b) for use with all patent applications and proceedings before the office in which the authorized represents the applicant.
17(b) No more than one person may be authorized per matter, unless there are authorized together several persons who are partners or who work together in the same office; however, a person may authorize more than one authorized to appear and argue in his name [in litigious proceedings before the ILPTO – DJF].	17(b) No mMore than one person may be authorized per matter; the Commissioner may, by way of public notice, limit to a number not less than 10 the number of persons that the authorizer may authorize, unless there are several persons authorized together several persons who are partners or who work together in the same office; however, a person may authorize more than one authorized to appear and argue in his name.

Finally, Regulations 16 and 17 should be further amended to specify that, after issuance of a patent, if a party pays a maintenance fee, then that party becomes the address for service for maintenance fees only, while any power of attorney already on file would stay in force for any other matters.  This would eliminate the present situation in which the practitioner who prosecuted the case but is not responsible for maintenance fees continues to receive notices about maintenance fees.

 

[1] In point of fact, I’ve cleaned this up, as the draft amendments appear to contain some errors.

Proposed Amendments to Regulations at Israel PTO: Powers of attorney (Part 1)

Last week the Israel PTO announced by email proposed amendments to the regulations (rules) governing certain aspects of practice before the Israel PTO in all four areas over which it has jurisdiction - patent, trademark and design applications and registrations, and appellation of origin applications and registrations.  I did not find a corresponding announcement on the ILPTO website, but the following links to the draft regulations appear in the email announcement:

• טיוטת תקנות הפטנטים (נוהלי הרשות, סדרי דין, מסמכים ואגרות) (תיקון), התשפ"ג-2023
• טיוטת תקנות הפטנטים (הארכת תקופת הגנה – סדרי דין בבקשה לצו, בהתנגדות לצו ובבקשה לביטול) (תיקון), התשפ"ג-2023
• טיוטת תקנות סימני המסחר (תיקון), התשפ"ג-2023
• טיוטת תקנות העיצובים (תיקון), התשפ"ג-2023
• טיוטת תקנות המדגמים (תיקון), התשפ"ג-2023
• טיוטת תקנות כינויי מקור (סדרי רישום של כינויי מקור שארץ מקורם היא ישראל), התשפ"ג-2023

Comments are due by the end of the day on Sunday, June 4.[1]  Sadly, the announcement doesn’t include an email address to which to send comments. Rather, the announcement refers to each of the web pages above, which include links for people to provide comments, although I have not yet checked to see that those links work.[2] 

The principal change proposed, and on the only one common to all the proposals, is a change in the procedures for filing power of attorney.  In tomorrow’s post, I’ll relate to those proposed changes and their shortcomings.  In this post I’ll focus on the current shortcomings concerning powers of attorney.  Although I’m going to specifically POAs with respect to patents, the ILPTO has proposed the same change with the same language in the relevant regulations for trademarks, designs and appellations of origin as well.

As one would expect, in Israel applicants for patents may act pro se, or such applicants may appoint an authorized representative.[3]  The relevant provisions are set forth in rules 16 and 17 of the Patents Regulations. Rule 16 concerns providing the ILPTO with an address for service in Israel; for pending patent applications, the applicant must provide the office with such an address.  Per the most recent amendments to the regs from several years ago, the applicant may also provide an address for email service of documents.[4] 

Rule 16(f) specifies that if the applicant is represented by an authorized representative per rule 17 (see next paragraph), then the address for service must be the address of that representative.  Since probably upward of 99% of patent applications in Israel are filed via representatives, and the regulations also stipulate that representatives must file electronically, de facto these provisions collectively mean that almost all correspondence with the ILPTO must be conducted electronically.

Rule 17 concerns the appointment of representatives, and says that, by way of a written power of attorney that “shall be delivered to the ILPTO”, an applicant may appoint a representative to act on the applicant’s behalf before the ILPTO.  Rule 17 also says that a person may not appoint more than one representative per matter, unless the multiple representatives are “partners or they work together in the same single office”.

It’s not always possible to get a signed power of attorney prior to filing a patent application, so the practice of the ILPTO has been to allow practitioners to submit a patent application without a POA, and then to requisition a POA (asserting rule 17 as granting authority to requisition the POA), giving the applicant a month to provide the POA.  Failure to file the POA will result in abandonment of the application.

As someone licensed to practice before both the USPTO and ILPTO, and who also makes use of WIPO’s ePCT filing system, I’ve long found the ILPTO’s approach to be suboptimal (to put it mildly), and possibly ultra vires.

Specifically, what practitioner is going to file a new patent application that he hasn’t been instructed to file? The electronic filing system that an Israel practitioner must use to file the application won’t allow the new application to be filed without paying the filing fee (around $600 for an application of 100 or fewer pages); why would any practitioner spend that money if he hasn’t been told he’ll be reimbursed?

More importantly, a practitioner’s license is his livelihood. What practitioner is going to knowingly file an application, or a document in an application, that he hasn’t been authorized to file, particularly if doing so will prejudice the putative client’s interests? It’s a safe bet that the practitioner is only going to file something if he’s been instructed to do so, or if he hasn’t received specific instructions but has a general standing instruction from the client to keep the case pending. It doesn’t take a genius to understanding that doing something to deliberately harm the applicant or patentee could not only cost the practitioner money in a tort suit, it could be the end of his career. (For readers who have studied Gemara, this is an example of one of the definitions of the term “migo” מיגו.)

The USPTO recognizes this reality, and operates accordingly.  As in Israel, US Rule 1.33(a) requires that a new application include a correspondence address. But Rule 1.33(b) says that amendments may be filed by a practitioner who is on record as having power of attorney, or by a practitioner acting in a representative capacity per Rule. 1.34.  And Rule 1.34 establishes when a practitioner who is not of record (viz. for whom a power of attorney has not been recorded) files papers, “his or her personal appearance or signature shall constitute a representation to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is authorized to represent the particular party on whose behalf he or she acts”.

That’s a smart arrangement: it makes it clear that the practitioner can act without a POA, but by doing so he’s effectively certifying that he’s authorized to act. 

Additionally, the USPTO as a matter of policy still requires a POA for the filing of two documents: an express abandonment of an application or patent, or a terminal disclaimer that foreshortens the term of the patent.  That makes sense too, since those acts irreversible and, on their face, prejudicial to the applicant/patentee’s interests.

What this means in practice is that, for example, if an applicant wants a new US practitioner to take over a file, the new practitioner can do so without having to wait to obtain a power of attorney. Of course, if the new practitioner wants to receive notifications from the USPTO about new correspondence in the case, and the like, he’ll need to record a change of correspondence, but that’s a separate matter, and doesn’t prevent the new representative from filing responses or paying fees.

The USPTO arrangement also means that if, for example, a solo practitioner will be going on vacation, and some response will need to be filed or a fee will need to be paid, he can arrange for a colleague to attend to the matter. 

So for the ILPTO to insist on the submission of a signed POA as condition for continued representation of the applicant in most situations is, from the practical standpoint, not just silly, but counterproductive.[5]

Additionally, the threat of closing the file because a POA isn’t submitted is legal hogwash, both statutorily[6] and from the commonsense standpoint: if an application is incomplete upon filing (e.g. it contains illegible drawings), and the defect is never cured, or if an applicant doesn’t respond to an examination report, those could be a reason for closing the file. But failure to submit a POA? It’s not in the same league. And in point of fact, I have had cases that were filed without a POA, in which the ILPTO has asked for a POA, which I prosecuted through to grant.

Another problem with the present system in Israel is that, as mentioned earlier, Rule 17 says that an applicant or patentee may not appoint more than one representative per matter, unless the multiple representatives are “partners [a term not defined in the patent statute] or they work together in the same single office”.  That reflects a particular way of thinking about how people work or should work together that is outmoded: people work together in different constellations and with different arrangements, and it’s unreasonable for the ILPTO to try to force them into a particular work model. Such a narrow conception of what constitutes “working together” is also prejudicial to applicants, who may want a particular team of practitioners to work on a matter, even though the practitioners are not “partners” and do not “work together in the same single office”.

Inasmuch as the present regulations limit practitioners’ freedom to make their own work arrangements, and limits applicants’ ability to choose their representatives, this narrow conception of “working together” also stands in contravention to two so-called “basic laws”, the “Basic Law: Freedom of Occupation” and the “Basic Law: Human Dignity and Freedom”, which the “High Court of Justice” (not to be confused with the Supreme Court) regards as having constitutional status.  

By contrast, USPTO allows an applicant to appoint whichever registered practitioners it wants to represent it before the USPTO.[7] Similarly, in PCT applications, WIPO makes it possible for any combination of people that the applicant desires to have access to its PCT applications, with varying levels of authorization. 

A related point is that whereas the USPTO will send out notices of correspondence in a file to up to three email addresses, and WIPO’s ePCT allows for notifications to be sent to multiple email addresses, the ILPTO will only send such correspondence to a single email address.

There’s also the problem (discussed in an earlier blog post) that the Israel PTO does not have a mechanism that enables patentees to provide correspondence addresses for maintenance fees only.

As will be discussed in tomorrow’s blog post, the ILPTO’s proposed amendments attempt to address only one of these matters, and fails even at that.

 

[1] Like in the USA, statutes in Israel often omit details about the specific means of implementation of the statutes, and say that the details will be set forth in implementing regulations.  For readers familiar with the rule-making process in the USA, the process in Israel is similar, except that formally the job of enacting the regulations is assigned to a particular minister, and the regulations must be approved by the relevant committee in the Knesset, rather than being enacted by the administrative body itself (following notice-and-comment procedures) as is the case in the USA.  In the present case, it’s clear that the impetus for these amendments is coming from the Israel PTO itself, which will then ask the Minister of Laws (a title which is unfortunately mis-translated as Justice Minister, even though the Hebrew term משפטים does not mean “justice” and is never, ever translated that way in any other context) to sign them and bring them to the committee for approval.

[2] Why allow members of the public to send a single document with comments when you can have them go to six different web sites and provide six separate sets of comments?

[3]  Namely, a licensed patent practitioner who has a technical degree and has passed the ILPTO licensing exams, or, in keeping with the practice in banana republics, any one of the tens of thousands people who don’t have a technical background but have a law degree as a first degree and have passed the lawyer licensing exams – because we all know that law school is much, much more difficult than getting a STEM degree and passing the lawyer exams imbues people with wisdom otherwise not imparted to mere mortals.

[4] Until now, Rule 16 precluded email service of the patent certificate itself, and required the office to send a paper certificate, but the proposed amendments will allow the patent certificate itself to also be sent by email; patentees will have the option of requesting a paper copy from the ILPTO, presumably for a fee.

[5] The ILPTO’s position on this is that its hands are tied, and that Rule 17 as presently worded forces it to require the submission of a written POA. I find that disingenuous, because there are other areas where the ILPTO in effect doesn’t enforce the statute or the rules. But as those situations sometimes accrue to clients’ benefit, I’m not going to discuss them here.

[6] The ILPTO says that its notice to submit a POA constitutes a “notification of defects” under section 20 of the statute, and therefore failure to reply is cause to close the file, but that’s just plain wrong. Section 20 of the statute says that if the examiner or the Commissioner find that the (claimed) invention is unpatentable or that the application fails to meet the requirements of sections 11-16A of the statute (none of which say anything about a power of attorney), the then the Office will notify the applicant. Section 21 says that if the applicant doesn’t fix the defect(s) within a specified time, the Commissioner will refuse the application. So there’s no statutory basis for closing the file – viz., refusing the application – for failure to file a POA.

[7] The mechanism by which this is done at the USPTO will wait for a later blog post.

Israel PTO Announces Accession to DAS for Design Applications

The Israel PTO announced today that effective July 1, 2020, applicants for registered designs in Israel will be able to make use of DAS.  (The ILPTO notified WIPO of this last month.) Design applicants whose first filing is in Israel may ask that their application be made available via DAS, so that, when they file outside of Israel claiming priority from the Israel application, they won't need to provide a certified copy in each jurisdiction, but will merely need to tell the office in that jurisdiction to obtain the copy via DAS.  And design applicants filing in Israel whose priority application(s) are available via DAS will merely have to provide the Israel PTO with the code to download a copy of the priority document(s) from DAS.  Israel will be the twelfth country to participate in DAS for designs. Israel began participating in DAS accession for patents in 2019.

Download ILPTO announcement re DAS accessibility for designs 2020-06-14

Updates from Israel PTO Re: Work During Coronavirus Shut-Down

On Saturday night, March 21, the Israel cabinet agreed to reduce the number of public sector employees still working.  Yesterday, March 22, the Israel PTO published a four-page explanation of how it is implementing this decision, which remains in effect until May 1, 2020 or until the ILPTO publishes a new notice, whichever comes later.  [Update, March 24: the ILPTO has now published its own English translation of the notice.]  The main points are that:

• many employees were already working from home, and will continue to do so; registration certificates will continue to issue, and the Patents, Trademarks and Designs Journals will continue to publish at the end of each month;
• the ILPTO will strive to meet its obligations under treaties (e.g. providing PCT search reports on time), and to issue renewal certificates on time, but certain services (recording assignments, licensing new practitioners, notices of formal defects in PCT national stage applications, daily notices of outgoing correspondence) will be delayed at least until after Passover (April 15, 2020);
• the ILPTO will continue to accept submissions electronically and, for those parties permitted to do so, in person or by regular post, but in-person meetings and proceedings before the ILPTO, including hearings in adjudicatory proceedings, will remain in suspension;
• deadlines for filing new applications, responses to office actions and the like will not be held in abeyance, but non-statutory deadlines in adjudicatory proceedings will be suspended;
• applicants or other parties in proceedings before the ILPTO who are unable to timely make submissions as a result of coronavirus-related circumstances may request extensions or reinstatement based on those circumstances, which will be taken into account when deciding whether or not to grant the extension or reinstatement;
• in cases in which the ILPTO has an announced policy capping the number of extensions, that cap will be temporarily be waived, but statutory deadlines (e.g. for opposing a patent application or requesting a patent term extension) cannot be waived;
• in order to allow applicants/owners to file requests for extension/reinstatement, at least until May 1, 2020, no files will be closed for an applicant’s/owner’s failure to take an action, nor will the ILPTO send pre-file closure notices (which in many instances are a prerequisite for closing a file).

We elaborate on each of these below.

There are two ways in which the coronavirus outbreak affects the ILPTO: fewer people are physically in the ILPTO, and by order of the Cabinet, the ILPTO’s workforce needs to be reduced; and parties with matters before the ILPTO may be unable to meet deadlines.  Yesterday’s letter clarifies how the ILPTO is dealing with both of these aspects.

In the main, the ILPTO is attempting to maintain a “business as usual” approach.  Thus the ILPTO will still do intake on new patent, trademark and design applications; examiners will still examine cases, although the pace of examination will slowed; the Office will continue to publish the Patents, Trademarks and Designs Journals each month; and the Office will issue registration certificates, although the Notice recommends that, given possible disruptions in Israel Post, registrants download copies of the certificates.  The ILPTO will likewise strive to meet its obligations under international treaties, such as PCT examination, and it will deal with requests for immediate processing of applications, e.g. due to the inventor’s age. 

However, certain less-critical functions will be suspended altogether: the processing of changes in ownership or the name of the applicant/owner, recording of liens and the like (except for changes in local address for service, which will still be processed); the processing of registration of new practitioners and registration for practitioner examinations (except for complaints against practitioners); the sending of notices regarding formal defects in PCT national stage applications; and the emails that the ILPTO sends to practitioners, informing them of the cases in which correspondence issued, to enable practitioners to track that correspondence (in case a piece of correspondence wasn’t received). 

For over a week the ILPTO has not been receiving the public, and this will continue, which means inter alia that there will be no in-person examiner interviews, nor will any hearings in adjudicatory matters take place.  The notice states that there will, however, be someone answering the telephone during regular business hours. With most personnel remaining at home, it is unclear if callers will be able to obtain the clarifications they seek, even if they get through to the ILPTO.

Perhaps of greater to interest to parties with deadlines in matters before the ILPTO is the question, “Whither my deadline?” 

The first thing to note is that the Commissioner has discretion about granting deadlines in many matters, but certain deadlines are set by statute and cannot be extended.  Specifically, in patent matters, the following deadlines are not extendible:

• for third parties to request immediate examination of another’s patent application per §18(c);
• for filing an opposition to patent a application under §30,
• for payment of renewal fees per §56 and §57,
• for opposing the reinstatement of a patent under §61,
• for notifying the Commissioner of the granting of extension orders for reference patents in the USA and Europe under §64E(e)(2),
• for opposing the grant of a patent term extension (PTE) under §64F,
• for paying the fees to keep a PTE in force under §64M,
• for submitting a PTE application under §64O,
• to oppose under §73(c) the revocation or cancellation of a patent, and
• to oppose a change in the Register under §170(c).

Similarly, the deadlines for opposing a trademark registration and for paying trademark renewal fees per §24 and §33 of the Ordinance cannot be extended, and the deadlines for certain actions in design registrations are likewise not extendible.  (From the wording of the Notice, it sounds like the Commissioner would like to have the authority to extend some of these deadlines, but knows that he doesn’t, and may seek a change in legislation at a later time to address this.)

Second, in all other cases the Commissioner has discretion to grant extensions.  In some instances, though, he has published notices according to which, a priori, he has limited the number of extension available.  Thus, for example, during the substantive examination phase of a patent application, the ILPTO’ stated policy is that it will grant extensions without a showing of cause upon the payment of a fee, but that it will not grant more than four months of extension at one time, and not more than 12 months’ extension total over the course of examination.  The Notice says that at least until May 1, 2020, these caps will not be emplaced, and that extension periods falling within the period of March 22, 2020 through May 1, 2020 inclusive will not be included in capped period.

In some instances in which the Commissioner has discretion to grant an extension or to reinstate an application or registration, there is a criterion for granting the extension/reinstatement, either by dint of the statute or self-imposed by the ILPTO.  Thus, for example, a patent applicant who fails to file an application within the priority year may request an extension for the priority claim, and per §164 the Commissioner may only grant such extension if he determines that the failure to timely file in Israel was due to circumstances over which the applicant had no control and that could not be prevented.  In other instances, a showing of “reasonable cause” must be made.  The Notice points out that inability to file a document or pay a fee on time due corona virus-related circumstances may constitute circumstances that amount to “reasonable cause” or circumstances over which the applicant had no control, but that each case will be judged on its own merits.  Requests for extension on such basis may be made either before the initial deadline, or retroactively.

The Notice states that deadlines in adjudicatory proceedings are suspended at least until May 1, 2020 or further notice, whichever is later, but that the adjudicators will continue “to work as normal”, which we understand to mean that decisions in cases in which all hearings and submissions have concluded will continue to issue.

The Notice says that, in any event, in order to allow parties that have missed deadlines to make their case for extension/reinstatement, until May 1, 2020 or further notice, whichever is later, no files will be closed for failure to take a required action, nor will the ILPTO send pre-file closure notices, which in many instances are a prerequisite for closing a file.

Finally, it is to be noted that the ILPTO would have been closed anyway for Passover, from April 8 through April 15, 2020, inclusive.  Hence any deadlines that fall on these dates would in any event have been statutorily deferred to April 16, 2020, and thus filings or payments due on these dates will be considered timely if made on or before April 16, 2020.

 

Update, March 27:

(a) the ILPTO published an English version of its March 22 announcement.

(b) on March 25 the ILPTO issued a further clarification in both Hebrew and English: since the statute imposes a 90-day limit to record a pledge against a patent, the ILPTO will continue to process the recording of such pledges. And if you're a patent practitioner trainee and you're now on unpaid leave, you should read the announcement

Israel Joins the Hague System for Designs

Last week, Israel deposited the instrument of accession to the Geneva Act (1999) of the Hague Agreement.  The Hague Agreement is to designs what the Madrid system is to trademarks: an international filing system that enables an applicant to obtain design protection in several countries at once.  This accession to the Hague Agreement means that as of January 3, 2020, Israelis will be able to file a single design application that covers over 50 countries, and applicants from those countries can include Israel in their Hague design applications.  Announcements of the event can be found in English on WIPO’s site and in Hebrew on the ILPTO site.

Israel’s accession to the Hague system is the culmination of many years of work, principally by Howard Poliner and his team at the Justice Ministry, which drafted the new Designs statute that came into effect last year (which contains the legislative provisions that enabled Israel’s accession to the agreement), as well as the implementing regulations.  The former legislation needed enactment by the entire Knesset, the latter legislation needed the approval of the Constitution, Statute and Law committee and the Justice Minister.  And the accession needed cabinet approval as well, which hasn’t been easy to come by in a year that has already seen two election cycles.

Related blog post: an ill-fated attempt by the ILPTO to facilitate partial use the Hague systems for designs in the absence of legislation permitting such use.

Electronic Filing of Israel Designs

On December 29,the ILPTO launched its electronic filing system for design applications. We haven't yet tested it ourselves...and based on the EFS for patents, we don't know if anyone practicing in the field actually tested it before launch. As with the electronic filing system for patents launched last year, use of this system will become obligatory for patent practitioners representing others, as well as for non-natural persons applying for design protection; the six-month trial period is not meant for beta-testing but rather to allow practitioners to get used to the system (because, you know, the system was designed to make the ILPTO's job easier, and it no doubt does that, so as long as it achieves that goal, the question of how well it serves the public is moot).  Presumbably, even with the expected design flaws and bugs that may or may not be fixed, it will on the whole represent an improvement over the current system. We'll post updates once we've checked it out.  

New Israel Designs Database

Yesterday the ILPTO announced, via its email distribution list and on its web site (the link to the actual announcement is this one), that a new database of registered designs had been put online at http://designsearch.justice.gov.il/.  The database is bilingual, being searchable and providing results in both English and Hebrew.  There's even an instructional video here (in Hebrew only).  As shown in the screenshot below, several different criteria may be used as search parameters.

The launch of this database is a welcome development, and the database itself seems to be more user-friendly than the existing online patents database: in addition to the various search criteria, there are a number of options for sorting and displaying the results.

One caveat: unlike patents and patent applications, which are published 18 months after the earliest priority date or shortly thereafter, designs in Israel are only supposed to be opened to the public after the registration is complete, and not less than two years after the effective filing date.  (The rationale behind that rule, to the extent it applies to designs that have been registered in under two years, is unclear, as it defeats the notice function of registering designs.  The relevant ordinance is British and dates to the 1920's, and it's likely that if new design legislation is enacted, that particular provision will be sent packing.)

This means that for now at least, (a) this database won't enable people to find out if a particular design application has been submitted in Israel; and (b) the database won't show any registered designs having an effective filing date less than two years ago. And indeed, a query for designs filed between June 10, 2013 and June 10, 2015 (today) yields five hits, all of which were filed on June 10, 2013 (see screenshot below).  The query yielded no hits for designs filed after June 10, 2013.   

If the earlier date in the range is changed to June 11, 2013 (i.e. less than two years before today), the query yields no hits at all.

So apparently the database is showing what it's supposed to show and not showing what it's not supposed to show.

Nice work by the ILPTO.

Next Time, Please Ask

Upon firing up my computer this morning, I found an email warning me that some changes had been made to PAIR; this was confirmed upon logging into PAIR.  The changes effected are listed in the screenshot below (or here, if you need larger type): the ability to search Hague Agreement design applications (once the USA officially joins the Hague Agreement); indications regarding whether public or private PAIR is being used; name of the pki certificate holder’s name (for private sessions); indication of the address for correspondence in both public and private PAIR; and the addition of some collapsible menus in private PAIR to display the search options. 

 

I have no beef with the first four changes - in fact, it's great to see the PTO anticipating a change that will only take effect in few months' time, and I look forward to the day when Israel facilitates electronic searching and viewing of its registered designs - but the last change is kind of annoying, since it imposes a few extra clicks before getting to the search screen, as opposed to the previous version of private PAIR, which showed all the search options on a single screen.   See the screen shots below.

versus

versus

 

If the people at the PTO’s Electronic Business Center polled users before making these changes, they aren’t saying so. 

Around 2007, apparently out of fear that its servers couldn’t handle heavy traffic from automated search-and-download programs, the PTO got rid of the ability to toggle back-and-forth between screens in PAIR.  That feature was quite useful when comparing, for example, parent and divisional applications to one another.  Apparently no one was consulted then, either.

And the documents downloaded from PAIR remain unsearchable, even if the original pdf files that were uploaded by the user were searchable.  If you want a searchable file history, you’ll have to pay a pretty penny to a third party vendor, or make a searchable version yourself. 

I think PAIR is a great tool, but please guys, next time you’re going to tinker with it, please ask us users first.  Many parts of it don’t need fixing, and other parts that have long needed improvement remain in need.

Hat tip to Carl Oppedahl for the warning email.

Does Mercedes Really Have 80,000 Patents?

When I was growing up, a Mercedes was considered to be a well-made status symbol.  When I was in college, my experience at a summer job stocking spare parts at an auto dealer who sold Mercedes and another make of German car seemed to bear this out.  Other than hood ornaments, for which we placed several orders a week (no doubt due to the predilection of 12-year-old-boys to help themselves to those items), there wasn’t much call for new Mercedes parts, presumably attesting to the quality of the vehicles.  The same was not true of the other make of car.

So I was somewhat surprised when I saw one of those annoying internet advertisements that run on our screens when we’re trying to watch something else. This one is for Mercedes, and pitches its products from the angle that since the company has a lot of patents – eighty thousand, according to the advertisement – the company must be a true innovator.

First, I’m surprised that Mercedes feels it needs to advertise at all, but far be it for me to second-guess the company’s market research. 

Second, I’m surprised about the number mentioned.  The bland statement that the company has 80,000 patents, without more clarification, is apparently meant to imply that the company has devised 80,000 separate, patentable inventions.  But the advertisement, which is in English and presumably ran in the USA, doesn’t explain if 80K represents only US patents or all patents worldwide, nor does it explain if the reference is to all patents granted over the years or only the company’s currently active portofolio.  It doesn’t mention if that number includes industrial designs, which in the USA are called “design patents” and which outside the USA merely need to be novel (no inventive step requirement); or if the figure includes utility models, which are granted in Germany but not the USA.  And it doesn’t mention if those “patents” are all assigned to Mercedes-Benz or also to Daimler-Benz or Daimler-Chyrsler. 

As of this morning, a quick check of the USPTO database for patents assigned to “Mercedes” or “Daimler” lists 4,238 patents, including design patents, issued since 1976; if one looks only for patents assigned to Mercedes that number drops to 969.  Presumably there aren’t another 75,000+ pre-1976 US patents lurking about, so the eighty-thousand number mentioned in the commercial apparently refers to all patents issued everywhere since the company’s inception, to all predecessors and successors interest of the Mercedes name.   

This makes the “we have 80K patents” pitch sound lame: why should the company try imply that has developed 80,000 patentable inventions, when in fact it’s really talking about a far smaller number of different inventions, plus merely novel designs, registered in a number of different countries over the past 100+ years?  And why imply that all those patents are current, when many of those inventions are now passe?  Even if it only has a few hundred patentable inventions to its credit over the years, that’s still a considerable number and shows a commitment to improving its products.  In this case the puffery merely detracts from the company’s name.

Finally, in this day and age, I’m surprised that anyone would launch a commercial that implies that lots of patents necessarily means lots of innovation, and I’m particularly surprised that Mercedes of all companies would do so, given the demographic sector to which it’s marketing itself.  If you can afford a Mercedes, there’s a good chance you work in high-tech; and if you work in high-tech, you know that at least since the State Street Bank decision in 1997 and up until recently, in certain technology sectors it was easy to obtain US patents on obvious or even known inventions.  I suspect that’s not the case with most of the work that automobile companies do, and that most of their patents are granted for real, patentable inventions.  But there are a lot of crappy patents out there, and they (or more properly, the enforcement of them) has given the whole patent system a bad name.  I'm amazed that Mercedes has chosen to associate itself with that.

For what it’s worth, the running of the ad has neither increased nor decreased the likelihood of my buying a Mercedes the next time I buy a car.

Trying The Wrong Way To Implement A Reasonable Idea: Commissioner’s Proposal to Give Priority to Hague Agreement Design Applications

Last September, Israel went online as part of the Madrid system for trademark registration.  This followed the necessary legislative and regulatory amendments to facilitate Israel’s participation in this system.

The Hague Agreement is to designs what the Madrid system is to trademarks: and international filing system that enables an applicant to obtain design protection in several countries at once.  As explained on WIPO’s web site,

“This System gives the owner of an industrial design the possibility to have his design protected in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs). An international registration produces the same effects in each of the designated countries, as if the design had been registered directly with each national office, unless protection is refused by the national office of that country.”

Israel is not a party to the Hague Agreement.  Notwithstanding this fact, earlier this month, the head of the ILPTO, Asa Kling, posted a draft circular, in which he proposed to have the ILPTO recognize claims for priority to Hague system applications made in Israel design applications.  His reasoning was that many of the Hague system countries are also signatories to the Paris Convention (as is Israel), and since for those countries filing via Hague is equivalent to filing in those countries themselves, he should accord Hague system applicants priority as if he they had filed in their own countries and claimed priority via the Paris Convention.

On its face, there is a certain logic to the Commissioner’s proposal: why should Hague system applicants have to file twice, once in Paris Convention country and once via the Hague system, in order to be able to claim priority in Israel? 

But legally the proposal is hard to justify.  Treaties only become enforceable in Israel once local legislation has been amended to implement them, so even if Israel had signed the Hague Agreement, it would still need to enact appropriate enabling legislation.  Needless to say, in the absence of such accession to the agreement, the legal machinery to recognize Hague Agreement priority claims is not in place.  The Commissioner cannot do by internal PTO regulation that which requires action by the Knesset to do.  Indeed, he might be doing applicants a disservice by recognizing such priority claims, because an Israel court might later say he acted ultra vires, disallow the priority claim and, if there was internet publication of the design in the interim, void the design registration.

Given that problem, the Commissioner’s proposal is inscrutable from the political perspective: his predecessor was run out of town on a rail for ceasing paper publication of the Patents Journal without getting the Knesset to first enact the necessary legislative changes.  Mr. Kling’s proposal is in effect an announcement that he wishes to repeat his predecessor’s folly and usurp the Knesset’s powers. 

I don’t know why Mr. Kling seems set on repeating the past, rather than learning from others’ mistakes.  I suspect that part of the problem is that he is receiving advice from some of the same people who unwisely counseled his predecessor. 

In any event, there is no way to tell from the ILTPO’s web site if Mr. Kling received any comments on his proposal, as to date he has never published any such comments (a lack of transparency that will be the subject of a future post), but the guess here is that this particular proposal will not be implemented.