America-Israel Patent Law

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?

Another Update On Docx

Following up the previous two posts (here and here) re docx:

First, David Boundy says that tomorrow there will be a Federal Register Notice in which the PTO delays by three months the imposition of the $400 charge for failure to file in "docx".

https://www.federalregister.gov/public-inspection/2022-28436/setting-and-adjusting-patent-fees-during-fiscal-year-2020

 

 

Second, Carl Oppedahl has written a superb explanation of the problems with docx, and how the PTO has repeatedly lied about this being a standard:

https://blog.oppedahl.com/?p=8681#comment-219169

If you're a practitioner, please sign the letter to Director Vidal, urging her to read his explanation.

 

I will be shocked if the PTO persists in this docx nonsense.

USPTO Backs Down, Maybe, At Least Temporarily, From Its Docx Fee Grab

Last month I wrote about USPTO Director Kathy Vidal’s statement in October (at the AIPLA Annual meeting) that the PTO was going to deign to continue to let applicants file pdfs with their new patent application filings.  What I didn’t make clear – because it wasn’t clear to me – was that the USPTO was still planning to impose a $400 fee for anyone who didn’t do the initial filing in “docx” format.  I also noted that as of November 30, I still hadn’t seen anything in writing about this.

On December 19, Director Vidal published a Director’s Blog post, and on December 20, the PTO published a Federal Register notice, stating that indeed, applicants would continue to be allowed to file pdfs with their “docx” filings…but that as of January 1, 2022 there would be a $400 fee if you didn’t file in docx.  In other words, you could only file the pdf if you also filed the docx file.* As of July 1, you’d get hit with the $400 fee if you had the chutzpa to include a pdf version of the application with your initial filing.

(Because of the high likelihood of errors entering an application when the PTO converts it from the docx version submitted by the applicant to the version to be used by the PTO, most practitioners were planning to continue to file in pdf and to pass the $400 fee on to their clients. Since the PTO estimated that forcing applicants to file in docx would save the PTO $3.15 per application, far below the fee to be imposed, the more cynical among us viewed this whole docx thing as a surreptitious attempt by the PTO to increase its revenues.)

Enter David Boundy and the group of dedicated practitioners on Carl Oppedahl’s listserv groups. By the end of the business day on December 23, David had drafted and, with input from many, revised a letter to Director Vidal, collected signatures from 117 practitioners on that letter, and sent it to director Vidal. The letter explained some of both the practical and legal problems with proceeding with the requirement for “docx” filing, and asked that applicants continue to be allowed to file in either docx OR pdf for at least another six months.  The letter also hinted that if the PTO were to proceed as planned, it would likely have a lawsuit on its hands.

On December 24 Director Vidal phoned David and, in a nutshell, said that a notice would be published this coming week giving applicants “breathing room”.  We’ll see how much time that is, but the expectation is that, come January 1, we’ll still be able to submit our applications in pdf format, without penalty.**

This is a good first step, but considering the myriad ways in which the PTO has repeatedly lied to, deceived, misled, and misrepresented to the public, the Office of Management and Budget, and the Small Business Administration – even its F.R. notice of December 20 – it would be best if the PTO would rescind this docx nonsense.

*To add insult to injury, you’d only be able to include the pdf document if you filed using PatentCenter, the combined filing and document access system that the PTO has been working for several years, a system has many bugs (some that were reported in alpha testing three years ago that still haven’t been fixed) and still lacks many features. The PTO’s handling of PatentCenter has been much like its handling of docx: no one to talk to, and no responsiveness.

**According to Carl on his blog, AIPLA, IPO, and Brad Forrest also told the Director that docx is not ready for prime time.

…But Persists In Another Dumb Idea

My last post concerned the USPTO wisely backing down from its proposed “voluntary CLE”.  This post concerns its ongoing insistence to plow ahead with its “docx filing” requirement.

In late October, at the AIPLA Annual Meeting, then-AIPLA president Patrick Coyne interviewed PTO Director Kathi Vidal. While some of her remarks in response to his questions were covered by IPLaw360, one statement in particular seemed to fly under the radar of that publication as well as the prominent patent blogs.

Specifically, Ms. Vidal was asked about the docx filing program, and she responded that (a) she appreciated AIPLA’s input on the matter, and per the suggestion of AIPLA and others, the PTO had begun to allow the submission of a pdf file along with the docx file, and (b) although that option was originally intended to be available only until January 1, 2023, when failure to file in docx format would incur a $400 fee, the PTO is delaying implementation of that rule until July 1, 2023, and thus the ability to file a pdf file along with the docx file, without financial penalty, will continue until then.

Readers familiar with the USPTO’s docx filing program and its many deficiencies will understand Vidal’s remarks are but one more instance of the PTO’s repeated failure to listen to the community of patent filers and to comprehend the problems with the docx filing requirement that this community has expressed on multiple occasions.

In this particular case, what AIPLA, and others (including yours truly) asked for was not the privilege of being able to submit a pdf document in addition to the docx file, but vice versa: to continue to have applicants submit user-created pdf files as the definitive documents, but to be encouraged to submit docx files in addition to the pdf files, to help the PTO do whatever it is it wanted to do with docx files.  This, in fact, is the way people filing PCT applications using WIPO’s ePCT already operate, and it works extremely well.

The primary concern with requiring filing in docx format is that the PTO uses proprietary software to convert the user’s docx document to something else, and it’s THAT something else that will become the official document. Since in many cases it will not be practical, prior to filing, to check this converted form line-by-line to ensure that the conversion did not create errors in the document (e.g. in mathematical formulas), filing in docx opens the door to malpractice suits.  Hence it is expected that a significant number of practitioners will continue to file in pdf, and to pass on the $400 fee to their clients. The more cynical among us believe the PTO knows this, and is using this docx requirement as an underhanded way to extort money from the public.

In any event, although more than a month has gone by since Ms. Vidal made her remarks at the AIPLA meeting, no official announcement has come forth from the USPTO regarding delay in the docx requirement. Which is a pity, because as of October 1, the USPTO did not have approval from the Office of Management and Budget (required under the Paperwork Reduction Act) to move forward with its docx program.  Since such approval must come three months in advance, the USPTO cannot legally move forward with the docx program on January 1.  If a lawsuit is filed against the USPTO to enjoin the docx requirement and imposition of the $400 fee – and I’m aware of at least one individual who is preparing to file such a suit – it is not only likely that and injunction will be granted, and that ultimately the USPTO will lose (just as it lost 15 years ago in the battle over the claims and continuation rules), but the USPTO will wind up with significant egg on its face, as it has been persistently duplicitous in its pursuit of the docx debacle.

Support for Electronic Patent Filing: WIPO vs USPTO

Yesterday, after Europe had gone to bed, a subscriber to Carl Oppedahl's PCT listserv asked a question: what does one do when filing a PCT application when one of the inventors has a single name, if ePCT gives a warning when there's no second name?

One response was, "No inventor name is required on a PCT application, so just file without the inventor name, and then afterward send WIPO a letter explaining the issue and asking them to add the name."

This morning, after Europe woke up, Ann Bardini from WIPO wrote a response and explained what to do in this situation in ePCT.

"In ePCT please fill in the portion of the name that applies for the person in question, in your case the first name, and leave the last name field blank.  When you confirm with the OK button, ePCT will display an error message that requests that you add a dash “-“ in the last name field in place of the name: [screenshot]  The equivalent applies if it the person is providing only a last name. "

The fact that she responded was in itself a great thing.  But then she added, "We have taken this approach in an attempt to steer users towards typing the same value in the case of a missing portion of a natural person’s name. It might not be the best way of doing it, as users such as yourself do not necessarily attempt to click on the ‘Add’ button with a mandatory value missing in order to see that validation message.  We might improve this in the future by putting more explicit information in the GUI itself, although this remains a very rare scenario as far as we are aware to date."

So they not only listen to users, but let users know they're listening, and try to address users complaints.  And even say when a particular issue might be so rare as to not warrant further adjustment.

Wow.

A few weeks ago, Michael Richarson from WIPO similarly responded to ePCT user questions on the listserv, including suggesting a workaround for a particular problem - twice in the same week!

Meanwhile, the USPTO remains tone-deaf and obstinate when it comes to fixing Patentcenter, which has many problems, some of them since alpha-testing more than three years ago; and when it comes to its plan to force users (as of this coming January) to file in "docx" format, which isn't a single format but which the USPTO claims is. 

This is why, as someone based outside the USA (and thus not constrained to using the PTO in the absence of a "foreign filing license"), I invariably file PCT applications at WIPO via ePCT.

Who Files Documents At the Israel PTO After 6 PM?

Went to login to file something at the Israel PTO, and got the notice at the bottom of the login window below:

If you don't read Hebrew, it says, "There may be disruptions in the web sites starting at 18:00 today".

Hey, who files stuff after 6 PM? The Israel PTO doesn't work then, why should patent applicants?

And which "web sites"? The problem actually seems to have already struck in the patents database, which is presently inaccessible.

Heaven forfend that they do maintenance work on their systems AFTER midnight. (To be fair, there have been occasions in the past when they have pushed off work to that time slot. So why make the mistake now?) In the present case pushing off work until after midnight would be even better, because it would be early Friday morning, which isn't a workday and Israel and therefore any deadlines are pushed off until Sunday.

But lately the USPTO has also been doing systems maintenance beginning at 10 PM eastern time on weeknights, viz. two hours before the business day ends for those who file electronically. Evidently someone in Israel doesn't want to be left out of the party.

 

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.

Why Can't I File a Section 17(c) Request In This Application?

In my previous post I mentioned the lack of sufficient technical support for the Israel PTO's electronic filing system.  Case in point, a new one for me: the system won't let me file a request under section 17(c) of the statute, the section that says an application can be allowed on the basis of a corresponding patent in certain jurisdictions if each claim of the Israel patent is identical to one of the claims of the foreign patent.  But there's no apparent reason why this should be so in this case.

In greater detail: early this morning, before ILPTO opening hours, I responded to an office action, by relating to the prior art rejections raised by the examiner. In the response I also asked that the application be accepted under section 17(c) of the statute, since the claims are identical to those of a corresponding granted European patent. But the EFS is poorly designed in this regard.  When filing by Israel EFS, first one has to choose from a finite list the type of filing he wishes to submit (in this case, response to a form 26 office action), then one enters the relevant application number, then the system checks to make sure one is allowed to file such a response at this stage of the prosecution, and if the system says that such a response is permissible, then one is given a finite list of choices of types of documents to upload: response to OA, clean claims, marked claims, clean spec, marked spec, prior art documents, etc.  When making a 17(c) request, the applicant is supposed to provide the ILPTO with a copy of the foreign patent on which the request is based, but "corresponding foreign patent document" is not among the finite choices available when submitting a response to a form 26 office action.  Instead, what one has to do is upload the all the documents for the response, click on "create basket of documents to be file", and then start the whole operation again, this time choosing "17(c) request during substantive examination" (as opposed to "17(c) request during formal examination"), then entering the application number, then uploading the 17(c) request itself and the corresponding foreign patent, as well as the claims if the claims have not already been amended to correspond to the foreign patent claims.  Then one clicks "create basket", and then one submits the whole kit and kaboodle, two "baskets" at once for the same application. 

Except in my case, when I choose "17(c) request during substantive examination" and then enter the application number, the system says, "nyeah nyeah nyeah the system status doesn't allow you to file that now!"

So instead of uploading the foreign patent in the 17(c) request template, I went back to my original "basket", viz. the OA response, and uploaded it as a "citation".  I've no idea if the examiner will notice it, so I'll leave the examiner a voice message explaining the situation. 

Of course, why we should be required to upload the foreign patent at all is a bit of a mystery, seeing as how examiners routinely find and download foreign patents as prior art.

I'll also contact the new tech support person to explain the problem and find out why the system is screwy in this way.

When Is The Israel PTO Going to Provide Reliable Technical Assistance for Its Patent Electronic Filing System?

The Israel PTO’s patent electronic filing system went online in December 2015, and its use became mandatory for corporate applicants and legal representatives in June 2016.  It was a sub-optimal system at launch, and most of the shortcomings from 2015 remain in place today.

One such shortcoming was the lack of technical assistance.  Whereas the USPTO’s Electronic Business Center is open from 06:00-24:00 five days a week, and is staffed by multiple people, the Israel PTO has until now had exactly one person assigned to provide technical support. While she has been extremely helpful, if that person wasn’t available (e.g. if she was on vacation, or had just stepped out for coffee), you were out of luck.

And it goes without saying that that availability does not extend beyond normal working hours.  This of is of little help when one is facing a filing deadline after-hours as the clock approaches midnight. Which happens from time-to-time with non-Israeli applicants, most of whom are in time zones west of Israel.  

The Israel PTO announced today that the person who has been responsible for EFS technical support is moving back to full-time examiner duties, and that the responsibility for technical support is being transferred to the clerical staff.  This is potentially a slight improvement, in that theoretically there will be more people to field questions. But that assumes all of the clerical staff has been trained in the EFS. And even in such a best-case scenario, they don’t work late.

When, oh when, is the Israel PTO going to provide EFS technical support until midnight? Or alternatively, when will it drop the rule insisting on electronic filing?

Life Imitates...Life: USPTO Systems Down. Again.

[Note: this was originally posted at 11:40 local time. It's now 15:47 and it seems that some of the systems are back online. No explanation for the crash has been provided by the USPTO.]

On December 15, 1836, the US Patent Office was destroyed in a fire. (Hat tip Richard Schafer.)

On December 15, 2021, the US Patent Office's computer systems crashed. No e-filing of patents or trademarks, no checking databases, no access to electronic records. (But at least the page about McGruff the Crime Dog is still working!) The USPTO sent out an email warning people of the crash:

But if you click on the embedded link in the announcement to get more info, you'll find something extraordinary: during this outage, the USPTO is accepting patent and trademark correspondence, including new patent and trademark applications by email to PatentApp15DEC21@uspto.gov (for patents) or TrademarkApp15DEC21@uspto.gov (for trademarks).

This is extraordinary because presently, the USPTO is not authorized to accept such filing by email. This must be one serious mess for the USPTO to take this step.

This is not to say that everyone can avail himself of email filing. Before saying that one can file by email, the announcement includes a non-functional link to a web page that describes various filing options during a computer outage, and says that you only get to file by email if you can't use one of those alternatives. Those alternatives include fax, first class US mail with a certificate of mailing, and Priority Express Mail from the USPS. Is the USPTO going to demand proof that the filer couldn't avail himself of one of those methods of filing before he sent that email?  

[That webpage mentioning alternative filing methods also takes pains to point out that if you don't file electronically, you have to pay the $400 surcharge for non-electronic filing ($200 if you're a small entity).  I guess the USPTO isn't subject to legal doctrines like frustration of contract. Or as we might say in these parts, הרצחת וגם ירשת?. (Look up Elijah's reproof of Ahab for the context.) The last time there was a major outage of this sort, then-Director Andre Iancu had the decency to waive that fee post-facto, as discussed here. Let's hope that the current USPTO powers-that-be will be similarly reasonable this time around.]

Amazingly, just two days earlier, Carl Oppedahl blogged about this very problem, as the USPTO has just published a Federal Register notice in anticipation of an planned move of its back-up servers away from the same place where its regular servers are housed. Carl noted that there have been four serious outages of the USPTO's systems since 2014; the current outage constitutes the fifth such failure.

For those of us who regularly file things at the USPTO, this comes against the backdrop of the USPTO's insistence on migrating to a new system, which it calls PatentCenter, which it insists will have all the functionalities of public and private PAIR as well as EFS.  As explained in a letter drafted by Carl, signed by seventy four practitioners (including yours truly), and sent by Carl earlier today to Drew Hirshfeld, who is nominally in charge of things at the USPTO right now, so far PatentCenter is a disaster, and the USPTO has refused to listen to users who explain what's wrong with it.

As a colleague once noted, technology is great...when it works.

 

Israel PTO EFS To Be Offline For Part Of August 5; No Notice Posted on Website

The Israel PTO announced this morning by email that its computer systems will be offline beginning Thursday August 5 and continuing through 7 AM the following morning.  This will include filing systems for patents, trademarks and designs.

The notice doesn't appear on the landing page of the ILPTO's web site.  Nor does it appear in the "news" section.  In fact, the notice doesn't seem to appear anywhere on the ILPTO site, even if one searches for it.  

It's also strange that the system will be taken offline while it's still a workday.  Since the ILPTO is officially closed on Fridays, why not start the maintenance a minute after midnight on Friday, August 6, and finish by noon the same day, instead of foreshortening applicants' and owners' workday on Thursday by 7 hours (or forcing them to file by fax, which nobody including (or especially) the ILPTO likes, or forcing them hire a driver to hand deliver the documents to the ILPTO, another thing which nobody including the ILPTO likes)?

 

Israel PTO Filing System To Be Offline; and Why I Can't I File Amended Claims At the Israel PTO?

This morning the Israel PTO sent out a notice that its new patent search database will be going online this Thursday, March 11, and as a result, the electronic filing system will be down from 15:00 on March 10 through 07:00 on March 11.  What new patent search database, you ask?  I don't know, I don't recall seeing an announcement about plans for a new patent search database, let alone an invitation to do alpha- or beta-testing on the system.  Maybe I missed the announcement, but involving the public in software development has not traditionally been the ILPTO's strong suit. 

Case in point: I recently filed a national phase application in Israel, and today the client asked me to file voluntary amendments.  Now, normally I advise clients to wait with these until later, since in any event no examination will occur until after we receive and respond to a pre-examination letter from the ILPTO, and we can amend the claims when responding.  But I needed to file another document in this case, for kicks I decided to file the amended claims now.  But it took some doing to get the ILPTO's electronic filing system to let me do it.  That's because IL-EFS pre-defines a set list of types of submissions, and if your filing doesn't fit into one of the categories, you're out of luck - there's no choice for "miscellaneous communication".  Amended claims can be filed with a response to the pre-examination letter, or with a supplemental response to a pre-examination letter (i.e. a supplemental IDS), or with a response to an OA.  But there's no general category of "amended claims", and the system wouldn't let me file using any of the categories that provide for the submission of amended claims, since this application doesn't have an outstanding OA, or an outstanding pre-examination letter.

Then I discovered that I could file a "supplemental response to a pre-examination letter" that included the amended claims...even though no pre-examination letter has been received, let alone a response to such filed.  Thank heaven for small manifestations of illogic. (In fact, I'd discovered this fact four years ago, and blogged about it, but had forgotten it. So in this case I suppose that in a perverse way it's good that no one at the ILPTO was listening.)

Of course, this IL-EFS mess could have been avoided had they done some beta-testing before taking this system online five years ago, or if they listened to us users and fixed problems in the system...but what would the point of that have been? 

So I don't know what's in store in the new online ILPTO patent database.  Guess we'll find out on Thursday.

One interesting side-point: the regulations regarding electronic filing require registered practitioners to file using IL-EFS, and only provide for filing by other means if either (a) the practitioner files a declaration explaining the glitch in his own personal system that prevented him from using IL-EFS, or (b) the ILPTO announces on its web site that the the system will be down.  Hitherto, I have never had to file such a declaration: every time there's been a problem the employees at the ILPTO have taken care of it based on my emails and telephone call.  But I believe this is the first time that the ILPTO has announced in advance that IL-EFS will be down.  Curiously, though, as of this writing, the announcement doesn't appear on the ILPTO's web site: I only know about it because of the email notification that was to the ILPTO's email-list subscribers, and because of an announcement that appeared on the IL-EFS registered-user site once I had logged in (shown in the screen shot).