America-Israel Patent Law

Israel Patent Office Changes Policy On Suspension of Examination…But Still Acts Ultra Vires

I’ve written several times in the past about suspension of patent examination at the Israel PTO (here, here, here and here). In June, the ILPTO announced a new policy for dealing with the suspension of patent examinations. We’ll get to the new policy shortly, but a brief history of suspensions is in order.

There is nothing in the statute about suspending patent examination. So under the sui generis policy that had been in place for many years, as long as no response was outstanding from the patent applicant, an applicant could request suspension at any time, and the ILPTO would set the application aside. Since nothing was outstanding, there was nothing for the applicant to pay.

Then the ILPTO switched gears, and said that suspensions could only be requested after the applicant filed its response to the pre-examination letter that the ILPTO issued under §18 of the statute (which response consists of the submission of an IDS-type document and a list of corresponding applications outside Israel), and before the mailing of the first office action; once substantive examination commenced, no suspensions would be granted. And a fee for each month of suspension had to be paid in order for the suspension to take effect. 

After a few years of that, some applicants realized they were unnecessarily paying for suspensions (since in some cases the suspensions expired before the examiner would have taken up the case anyway), and they complained about it. So the ILPTO again changed its policy, and said that you still had to ask for the suspension before the first substantive OA, but that the ILPTO would mail a request for money shortly before examination was due to start. If the applicant paid the fee, the case would be suspended; if not, the file would be closed for failure to respond.

Now the ILPTO has again changed tack, in two ways. First, while the window for requesting suspension only opens upon the filing of a §18 response, it now closes three months before substantive examination is due to start. And how does one know when that date is? Well, in the ILPTO’s database, for each case for which examination hasn’t yet started, there’s a notice stating that examination is expected to commence in X months. See the screenshot below.

Problem is, that notice doesn’t say from which date those X months are calculated. The priority date? The PCT filing date? The national phase entry date, or the Israel filing date for non-PCT applications? Inquiring minds want to know!

Second, the ILPTO now demands payment of the fee for suspension up front. And what if the ILPTO refuses your request for suspension? You can then request a refund. This is a fun process that in some cases will cost more in attorney time than the value of the fee paid.

Supposedly, in cases in which the suspension is approved and paid for, the system will automatically delay the start of examination by the number of months of suspension.

Apart from putting the onus for tracking the deadline to request suspension on the applicant and requiring payment in advance, the real problem with this system is that the ILPTO is not authorized to collect money for suspensions. As I explained several years ago, the office can collect fees for extensions of time, viz. when the applicant owes the office a response by a certain date and responds after that date. But in the case of suspensions, the applicant owes the office nothing. Indeed, the suspension can only be requested after a response to the pre-examination letter has been filed, viz. when the applicant doesn’t owe the office any response. Apparently the ILPTO wants to get hit with a class-action suit demanding repayment of improperly collected fees.

The better approach, as I outlined previously, is to tell applicants that they have four months to respond to the §18 letter, and that they can extend that response period not by a mere six months (as is the present practice) but by some lengthy period, like 24-36 months. Applicants could then pay the legally required extension fee at the end of the period; if they don’t file a response with the extension fees, the application goes abandoned.  By allowing a lengthy extension period for responding to the §18 letter, the ILPTO would effectively convert the response to the §18 letter into a request for examination, and the suspension period would be converted into a legal extension period. It’s a win-win.

What do you say, ILPTO?

Wait And See: Don't Pay For, Let Alone Charge The Client For, An Unnecessary Extension Fee

A few years ago I wrote a blog entry entitled “How To Rip Off Your Clients Without Them Knowing They’re Being Had”. Basically, the issue is that in Israel, the statute says that you can retroactively request extensions of time in patent cases, i.e. at the time you file the response, even if it’s after the initial deadline; but there are several offices that tell their clients such extensions must be obtained prospectively. Those offices do that solely so that they can bill their clients more money.

I recently had a case in which, close to the initial deadline, the client told me, “We need more time, please obtain an extension”.  To which I responded, “No need, we can obtain the extension when we respond”.

Subsequently, the client said to let the case go abandoned.

Score one for the good guys.

The Saga of Suspensions (or, You Can’t Make This Up, Installment No. 12? 15? I’ve Lost Track)

Once upon a time, the Israel PTO let patent applicants request suspension of examination at almost any point in time during the examination process, and it didn’t cost anything. You just wrote to the office and requested suspension. This isn’t something that’s explicitly set forth in the statute, but it’s no skin off the ILPTO’s back to put a note in its file, “Don’t examine this case yet”.

Then someone at the ILPTO got the idea that this worked too well, so that person decided to mess things up. Maybe someone thought that, in the age of 18-month publication, suspending examination was prejudicial to potential competitors. Maybe someone thought that, “Hey, we can make money off this by charging a fee!” Maybe someone felt that it’s important to keep the Office’s docketing straight and to not let prosecution lag too much. Maybe it was a combination of reasons.

Whatever the case, at some point the ILPTO changed its practice, and said that one could only request suspension after the applicant had answered the pre-examination letter (viz. filed a mandatory disclosure of publications relevant to patentability or cited by examiners elsewhere – think of an IDS in the USA – plus a list of corresponding cases elsewhere, or in brief, a Section 18 response) and before the issuance of the first substantive office action. And then, if the ILPTO said “ok” to the suspension request, applicants would be given one month in which to pay for the suspension.

I’ve written at length in the past about how that suspension fee is unauthorized by statute, but that’s not the focus of this post.

No, what I wanted to get at were further changes to the ILPTO’s suspension practice.

The first additional change happened a little over five years ago. The problem was that you had no way of knowing when the application might be examined, and since you could only request suspension before the first OA issued, it was common to request suspension shortly after responding to the pre-examination letter. And then within a few weeks you’d get the letter to pay the fee, and so you’d pay the fee within a month, and ostensibly the case would be suspended for year or whatever…and then after the suspension was over you’d sit around for another month or six or twelve or more waiting for the OA. Which meant that the fee was totally unnecessary, and that in reality, nothing had been achieved except wasting time (and client money) on some meaningless administrative tasks.

So the ILPTO said, “OK, you still need to request suspension after your section 18 response and before we issue a substantive OA, but now we’ll wait until the application is actually due to be examined, and then we’ll send you a warning letter, and if you pay the fee within a month we’ll suspend and if not the case will go to the examiner.”  Makes sense, although I was apprehensive that the ILPTO might miss overlook the fact that a suspension had been approved and issue an OA before we’d even been asked to pay money.

It turned out that the ILPTO was actually pretty good about issuing the “pay for your suspension now” letters”, and until this week I’d only had one case out of many in which it prematurely issued an OA. And in that one case, it wasn’t a big deal to get that OA withdrawn and have the “pay your fee now” letter sent.

Then last year they surreptitiously changed their “pay your money now” letter slightly. They changed it to say, “If you want the suspension you must request suspension again and pay the fee”.  Now, I admit, I initially missed that new part, and just paid the fee as I always had. But some months later, I looked through my docket and saw a case in which I’d paid the fee but hadn’t gotten the confirmation that the suspension had been granted. So I called the person responsible at the ILPTO and asked what we going on. She explained to me that we need to again request suspension, and that I should look at the letter. So I looked at the letter, saw the added verbiage, and asked her, “Did you think I was going to pay a fee because I’m a civic-minded person who wants to donate to the state’s coffers? Of course the fee is for the suspension, that letter is the only thing outstanding in the case, what else would I be paying money for?”

After some discussion, it turned out that the ILPTO’s computer system or work procedures had been modified, so that if the applicant doesn’t file a renewed request for suspension, the system isn’t aware that the fee has been paid, and it isn’t updated to confirm that the case is now suspended. So in that specific case, the employee manually updated the system and issued the “case is now suspended letter”.

But then I had to pay another suspension fee in a different case. So I went into the system to again request suspension, and found that (a) there’s no separate option for re-requesting suspension, there’s just “request suspension”, and (b) there’s no option to pay the fee when requesting or re-requesting suspension. So I uploaded the re-request for suspension, and then before submitting it did what I’d always done in the past when paying the suspension fee, viz. I went to the “request extension” option, then added payment for an extension. I then submitted both things at the same time and paid the fee. End of story, right?

Wrong. I get a call a day later from someone at the PTO: “You requested suspension but didn’t pay the fee”.

My response was along the lines of “Say what? Of course I paid the fee. It’s right there. I have the payment receipt!”.

“Well, I don’t see it, you’ll need to resubmit the request for suspension with the payment receipt.”

As I sad in the title of this post, you can’t make this up.

So I took the original suspension request, and added a text box with big red writing on the side: “NIS 2712 for 12 months’ suspension paid, receipt no. XXX”, and filed that.

ILPTO left hand, meet ILPTO right hand.

But then this week we had the piece de resistance, the crème de la crème, the cherry on top of the whipped cream. In a case in which suspension was requested two years ago, we got a first OA, without having been asked to pay the suspension fee. Second time that’s happened. As it turns out, the OA was pretty positive – it appears that, with some minor amendments similar to those made in another jurisdiction, we can gain allowance. But maybe the applicant wants to delay, so I reported the OA, and explained the option to either respond substantively, or request withdrawal of the OA and demand issuance of the “re-request suspension and pay your suspension fee letter”.

Then two days later, the ILPTO issued the “re-request suspension and pay your suspension fee letter”. But there was nothing in the letter to indicate that the OA itself had been withdrawn. So I wondered, “Will the system let me re-request suspension now”?

And – you know what’s coming – it won’t.  When I tried to submit another request for suspension, the system barked at me, “You can’t, nyeah nyeah nyeah, there’s an outstanding OA!”.

Now, I could pay the suspension fee, since the system will of course let me pay for an extension of time. But we saw from our other recent experience, since that payment will be classified by the system as part of an extension request and not a suspension request, the ILPTO won’t suspend examination.

So depending on what the client says, it looks like a few phone calls may be necessary to get the OA withdrawn and pay the suspension fee. Or maybe we’ll just answer the OA and proceed to allowance.

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.

If It Ain’t Broke, Don’t Fix It: ILPTO Announces Wrong Deadlines For Filing Patent Oppositions

The USPTO has its Gazette, which publishes faithfully every Tuesday at 12:01 AM (a fact that provided the title for my brother’s entertaining but sadly now mostly-defunct blog).  The Israel PTO has its Patents Journal (and the corresponding Trademarks Journal and Designs Journal), which publishes sometime on the last workday of each Gregorian calendar month (keeping in mind that the ILPTO is open Sundays, and closed on Fridays, Saturdays, Jewish holy days, and certain other days).

One of the important functions of the Patents Journal is that publication in the Journal constitutes “acceptance” of the application under section 26 of the statute, which starts the clock running for the filing of pre-grant oppositions.  By statute, that period runs for three months, and is not extendible, although if the deadline for filing an opposition falls on one of the aforementioned days when the ILPTO is closed, then by statute it gets pushed off until the next day on which the ILPTO is open. If no opposition is filed by the deadline, the patent is automatically granted.

The Patents Journal used to be published as paper hard copies, but for quite a few years now has been published exclusively online, on the ILPTO’s web site.  (Long-time followers of the Israel patents scene will recall an abortive attempt by the then-Commissioner to switch to online-only publishing before the statute permitted that, prompting a lawsuit against the ILPTO.)

In my experience, parties that may have an interest in filing an opposition know about the three-month deadline, know when the Patents Journal publishes, and track the progress of competitors’ patent applications through the online database.  So they don’t really need to be told when a new Journal comes online.  Nevertheless, the ILPTO has made it its practice to send an email to its email list subscribers, notifying them that the latest Journal has come online.

Hitherto, that email has merely noted that the Journal is online, with hyperlinks to the Journal.  Then two months ago, someone at the ILPTO decided to add a sentence to the email that mentions when the deadline for oppositions will fall.  So the email announcements of the February and March 2021 Patents Journals include an ostensible deadline for filing oppositions. Just one problem: whoever wrote the sentence calculated wrong, and wrote that the deadline fell one month later.

Obviously, an erroneous email announcement can’t foreshorten the statutorily-determined opposition filing period, any more than it can lengthen that period. Apparently the error in the February email went unnoticed, but someone caught the error in the March notice, because earlier this week the ILPTO sent out an email noting that the date in the March email notice was incorrect, and mentioning the correct deadline. 

This morning the ILPTO sent out its email announcing publication of the April Patents Journal. It correctly noted that the deadline for filing oppositions is three months from the date of the notice.

But I still wonder: since the people most likely to file oppositions are already aware of the deadline, why mention it at all in the email?  We got along well for years without the email announcement telling us when the opposition deadline falls…and for many, many years before that, without an email announcement at all.

Yet More Updates from the Israel PTO re Work and Deadlines During Corona Virus

Over the past two weeks, the Israel Ministry of Health has been easing corona virus-related restrictions.  Students in grades 11-12 have returned (partly) to classes and matriculation examinations, younger grades are returning to school, and today pre-schools and some malls were scheduled to re-open. 

In keeping with this, today the ILPTO  posted two notices about work during the corona virus period.  The first pertains to work in general and deadlines.  The bottom line: although the ILPTO is not allowing visitations from the public (except for hearings before the Commissioner), it is open for business as usual, and all departments are sufficiently staffed to answer telephones during business hours. 

Critically, the previously-announced extensions of deadlines and the ability to obtain extensions of deadlines, reported here here and here, remain in place.  Parties with business before the ILPTO who were not able to meet a deadline may thus request extensions on the basis of inability to respond due to corona virus-related circumstances, and the ILPTO will weigh such requests, even when this might derogate from the ILPTO's previously announced policies.  However, statutory deadlines that the Commissioner is not empowered to extend remain in place.  In keeping with this, the ILPTO says it won't send out letters closing files until June 30...but we're aware of a few cases in which such letters were sent in the past two weeks, so rely on the ILPTO's word at your own risk.

The second notice from today spells out procedures for parties coming to the ILPTO to appear in a hearing.  As this information is not relevant to the vast majority of readers of this blog, we're not summarizing it.

Update on Functions on Israel PTO During Corona Shut-Down – We’re Still in Chelm

Today the Government of Israel (the cabinet, in American-speak) allowed most small businesses to reopen. Sadly, according to an announcement sent out today by the Israel PTO, the government is not according the same privilege to the ILPTO, which is being forced to continue to work with a reduced staff.  This, despite the fact that, as previously explained in this blog, many patent examiners were already working at home, and are now forbidden from working at home.  This has downstream effects on the practitioners who analyze and report ILPTO office actions, and of course on the backlog at the ILPTO.

Today’s ILPTO announcement noted a few points and clarifications, however, with regard to adjudicative proceedings before the ILPTO.

1. Deadlines for filing documents or taking other actions in such proceedings that originally fell between March 22 and April 1, 2020, are now extended until May 15, 2020. Such deadlines that originally fell between April 2 and May 1 are now extended until June 15, and deadlines that fell between May 2 and May 15 are now extended to June 30.
2. Hearings scheduled at the ILPTO from May 3, 2020 and onward WILL TAKE PLACE AS SCHEDULED, in the hearing room or the auditorium of the ILPTO building in Jerusalem. Each participant will need to wear a face mask, maintain a distance of two meters from other participants, and observe any other requirements set by the Ministry of Health.  A maximum of eight people will be allowed in the room, three from each side in inter partes proceedings; parties requiring more people present may petition for a postponement of the hearing.  In the event that a party will be unable to appear as a result of corona-related reasons, it may petition for a postponement of the hearing.  To extent that changes in MOH policies affect these rules, the ILPTO will post notices of such on its website and notify parties scheduled to appear in hearings. 

The announcement also notes that, per a decision of the Ethics Committee of the Israel Bar Association, the witnessing of declarations by lawyers may be conducted by video conference instead by personal appearance before the lawyer, and that declarations witnessed abroad must be witnessed in accordance with the practice of the jurisdiction where the document is signed. 

[Comment: I find this last point comical, because the requirements for a declaration are set forth in the Evidence Ordinance, which can only be changed by the Knesset. The Bar Association isn’t empowered to change the Ordinance.  All that the IBA can do is say that it won’t regard a lawyer’s witnessing a declaration via videoconference to be a breach of the rules governing the conduct of lawyers.  Apparently the IBA's announcement is indicative of a nudge-nudge-wink-wink-say-no-more-say-no-more understanding between the IBA and the courts, that declarations witnessed this way won’t be disregarded solely on the basis of how they were witnessed.  And the ILPTO is telling us that it too plans to abide by this understanding.  Of course, the Knesset could amend the ordinance to give such witnessing full legal effect retroactively.]

Finally, the notice notes that the ILPTO will continue to process assignments and name changes in the Patents and Trademark registries, respectively, that examinations and registration of patent practitioners will continue apace, and that the ILPTO will continue to send follow-up notices to parties that receive correspondence electronically to allow them to ensure they received all correspondence.  Which seems kind of superfluous if the ILPTO isn’t conducting substantive work, but at least the woman who sends out those notices gets to keep doing her job.

The bottom line for most patent applicants in Israel is that substantive examination of patent applications remains in limbo; PCT national phase entry deadlines remain in place; and deadlines for paying renewal fees remain in place.

On Living in Chelm and The Hiding of Ulterior Motives

Today is the eve of Passover, making this a short work week here in Israel, for those of us fortunate enough to still be working during this COVID-19 thing – a full 25% of working age Israeli adults sought unemployment compensation in the past week.  Nevertheless, for those who have been paying attention, it has been an interesting week in the IP world in Israel.  But first a bit of background.

On March 21 the government of Israel (what in the USA would be called the cabinet, except that under Israel’s parliamentary system it’s the entire cabinet and not just the Prime Minister that decides many executive matters) decided to reduce public sector expenditures across the board.  The result is that many state employees, including many from the patent office, have effectively been furloughed since then.  As we reported earlier, the ILPTO sent out a notice about the steps it was taking to mitigate the effects of this decision. 

Now the Knesset is considering adopting emergency legislation that would push off by 90 days the deadlines for many acts in connection with administration of the state – either decisions or actions that the state is supposed to take, or actions that individuals (people or organizations) need to take.  And the draft legislation would give the government the option to extend those deadlines by an additional three months.

In combination, for those of us with a narrow focus on IP, these two things have created a perfect storm, not so much for applicants or IP owners, but for IP practitioners and for the ILPTO staff. 

Let’s start with the furloughing of ILPTO staff.  As a result of the government’s March 21 decision, many patent examiners and other at the ILPTO have been sitting home since then, doing nothing.  I suspect many of them are not presently getting paid.  Applications going unexamined also contributes to the examination backlog that the ILPTO had for several years hitherto been steadily decreasing, a result that is unfair to all applicants attempting to secure IP rights.  And for IP firms for which the reporting of Office Actions from ILPTO examiners is a significant source of income, this means that an important revenue stream has just dried up.   

But what’s Chelm-like about the March 21 decision being imposed on the ILPTO is that, unlike most state bodies, the ILPTO is self-supporting.  The ILPTO doesn’t run off of taxes paid by Israeli citizens or people transacting business here.  It runs off the fees it collects each year from the parties that utilizes its services, fess that more than offset the ILPTO’s operating budget.  Furthermore, following a program instituted by previous Commissioner Asa Kling, the ILPTO is set up for examiners to work from home, as many of the examiners already did so prior to the corona outbreak.  So by telling examiners they’re not allowed to work, even from home, the government isn’t reducing expenses. It’s reducing revenue – by ensuring a period in which no patent applications will be allowed, thus ensuring no payment of allowance fees, and by not giving patent practitioners work that they can bill to their clients and then pay of portion of to the state in the form of taxes on the payments for that work.  At a time when many parts of the economy are tanking, it’s not only foolish, but inexcusable to shut down an office that generates revenue for the state.

Then we have the draft legislation.  If all it said was that all deadlines falling between dates X and Y would be extended by three months, across the board, that would be easy to implement.  But, of course, some things really shouldn’t be extended.  For example, someone who’s been arrested for an alleged crime deserves a prompt arraignment, but that means that the courts need to be at least partly open for business.  And as soon as you start making exceptions in one area, others jump in clamoring for an exemption from the legislation, insisting that in their particular sphere of operation, it’s important that deadlines not be extended.  In some cases, it may be that deadlines in question really shouldn’t be extended.  But in other cases…

Stepping back for a moment from my position as someone whose clientele includes companies that file patent applications in Israel, and therefore who has a personal interest in keeping the ILPTO running as close to normal as possible, it seems to me that certain deadlines in the ILPTO should not be extended: the deadlines to file notices of opposition to the grant of a patent, and deadlines for the payment of renewal fees. 

I mention the former because (a) opponents of the grant of patent applications, whether those opponents are based in Israel or outside, have generally been following the progress of the applications they are considering opposing, so they know when the opposition deadline is going to arise, (b) all that’s required is to submit a notice of opposition – a one-line letter – plus a fee, with the substantive arguments being due later and with a deadline that the Commissioner has discretion to extend, and (c) the applicant, conversely, has no vested rights until the opposition procedure is concluded and a patent granted, and since the draft legislation doesn’t talk about extending patent rights another three months, it’s important that the institution of oppositions not be delayed, especially since opposition proceedings anyway tend to take time from the life of the patent. 

As to the payment of renewal fees, it seems to me that there’s no reason to extend these deadlines: for the patentee, the deadlines are known years in advance, and the amounts in question are also known; and for competitors who are following the life of a granted patent, it’s important to know if a patentee is no longer interested in protecting a particular technology.

It’s also clear that deadlines for the Israel PTO, acting as PCT receiving office, search authority or examination authority, cannot be unilaterally extended by the Knesset (and any attempt to do so could have adverse consequences for local PCT applicants relying such an extension).  Those deadlines can only be extended by amendment of the PCT itself. 

But I don’t see any harm to applicants in uniformly granting an extension to enter the national phase in Israel: they can still file at 30 months if they wish to do so, but if as a result of the corona situation there’s some difficulty in making filing decisions or in their cash flow, no real harm will come to those applicants from extending the deadline by a few months. 

On the other hand, considering that most patent filings in Israel are national phase filings, granting such an extension might have an impact on the ILPTO’s workflow – in the three months following the statutory extension, there will likely be a higher number of filings to process than usual – and its cash flow, as noted above.  The ones who would be most impacted by such a statutory extension would be those practitioners who rely on such filings as a significant part of their business, a point to which I’ll return below. 

Another deadline that I think could be extended is the deadline for filing patent term extensions for pharmaceuticals.  In such cases, there’s a significant burden on the patentee in terms of the documentation it needs to submit, a burden that could be affected by the corona virus situation.  And since normally such requests are submitted several years before the patent is due to expire, a difference of three months in the filing of the PTE request wouldn’t significantly affect the local generic drug manufacturers which might be impacted by the grant of the PTE (and which will retain the opportunity to oppose such PTE grant before it occurs).

Now back to this week.  On April 5, the Commissioner of Patents held a Zoom session to discuss the draft legislation, which by that point included exemptions for PCT international phase deadlines and the deadlines for payment of renewal fees (i.e. they would not be extended), but not for PCT national phase deadlines (which therefore would be extended).  

From a sociological standpoint the session was interesting.  Among other things, after about a 10 minute introduction from the Commissioner, nine people spoke (some more than once), but that discussion (roughly 2/3 of the time, if not more) was dominated by four partners from the same organization, one of the biggest IP offices in Israel.  Their view, exactly opposite to my own, was that (a) PCT national phase deadlines shouldn’t be extended and (b) renewal fee deadlines should be extended.  They gave various reasons for their positions, e.g. not wanting their offices to deal with a crunch of filings when the extended deadlines expire, and not wanting the ILPTO to be burdened at that point either.  But as noted above, that’s not really the situation: deadlines falling with the period in question – between March 10 and June 30, 2020 – would be extended by 90 days.  That doesn’t mean that come July 1, there will suddenly be a rush of filings to get 90 days’ worth of national phase applications in.  It just means that on July 1, filings that were initially due on both April 1 and July 1 will be due.  So while that may amount to twice as many filings as normal for July 1, it’s not something that can’t be dealt with. They also said if the national phase deadline was extended, docketing programs will need to be adjusted to reflect the extended deadline.  Considering that many docketing services constantly update their systems to reflect changes in the law in various countries, I don’t think a temporary change in Israel would constitute a significant impediment.

As for renewal fees, the assertion was that companies may need more time to make decisions about whether to renew or not.  Yet the possible need for more time to decide whether to file national phase in Israel wasn't mentioned by the four in the discussion of PCT national phase deadlines.

What none of the four explicitly stated was their personal interest in the matter: as partners, they employ many people, and national phase filings are a cash cow for them.  If potential PCT national phase filers are given the option of delaying their filings by 90 days, they might exercise that option, which would keep the firm’s revenue stream lower than usual.  Which might mean having to reduce the partners’ draw during that period. 

As for renewal fees, the office in question has a contract with at least one and possibly more than one of the big renewal fee companies.  What I gathered reading between the lines of what was said is that they don’t demand payment up front, and that paying out renewal fees now when they may not get compensated later could be disastrous for the partners…er, the firm.  (By comparison, I work with a renewal fee company that demands payment in advance.) 

In this respect, for the attuned listener, the Zoom session also highlighted the differences between large firms and small firms.  Small firms tend to have little patent prosecution or renewal fee work in Israel, and tend to concentrate on drafting and filing new applications, which is work that has been less affected by COVID-19.  They don’t have as many salaries to cover, nor are the proprietors likely to be accustomed to as high a style of living.  As Hillel the Elder said, “The more flesh, the more worms.”

We’ll see were things end up.  Yesterday, the heads of three trade associations sent a letter to the Justice Minister Download Letter, encouraging him to reopen the ILPTO for full business, as well as presenting views on the draft legislation that align with the view of the four speakers on Sunday.  I’m in full agreement about getting the ILPTO back up to full examination speed, if possible.  And while I disagree about extending deadlines for PCT national phase entry and renewal fees, ultimately, I don’t feel terribly strongly one way or another about how the matter is resolved.  What will stick with me was the concerted effort to mask ulterior motives, ostensibly in the name of the common good.  It’s a fair bet the people involved won’t tell their clients that they lobbied to maintain PCT national phase deadlines in place.

USPTO Announces Some Additional Extensions Available; Practitioners Cry, "Oy Vey!"

Yesterday the USPTO announced that, in the wake of Congress granting the Commissioner additional powers as part of its COVID-19 response bill, the PTO would grant extensions of some deadlines. The patent announcement is here and the TM announcement is here.  For a comprehensive discussion, see Don Zuhn's write-up at www.patentdocs.org.  The catch is that in order to get an extension, you need to make a statement saying that the delay was corona-related.  My comment, posted at patentdocs:

They could have just said all deadlines are pushed off by 30 days, or pushed off until a certain date, like other countries have done, but no, this is the USPTO, it knows better, it can't learn from anyone else, it had to make it complicated. And unclear.

I'm looking for the part of the announcement that says, "This material will be incorporated into the next USPTO professional licensing exam. Examinees will now be responsible for three sets of laws, pertaining to three different time periods: pre-AIA, AIA, and corona."

In the words of the late Shel Silverstein, "Some kind of help is the kind of help we all can do without."

 

Israel PTO Issues Clarification About Work During Coronavirus Shut-Down

As if life weren't exciting enough these days, the ILPTO issued a clarification (in both Hebrew and in English) to its earlier announcement about work arrangements during the coronavirus shut-down: 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.

English Translation of Israel PTO Notice About Work Arrangements Under Coronovirus Shut Now Available

Further to yesterday's blog post, today the ILPTO published an English translation of its notice about work arrangements during the Coronavirus shutdown.

Update March 27: the ILPTO published a further clarification on March 25. English version here. If you're recording a pledge against a patent, the 90-day limit to do so still applies, and the office will record the pledge. If you are a patent practitioner trainee on now unpaid leave, you should read the update.

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