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.
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