America-Israel Patent Law

John Belushi at the Israel Patent Office, or, Court to Israel PTO: Delay to Pay Doesn’t Automatically Mean “No Way”…Even if the Patentee Gives Multiple Stories

I’ve written in the past about petitions to revive Israel patents (or patent applications) that went abandoned for failure to take some action, most often failure to pay a renewal fee.

The most common such situation has been failure to pay the first renewal fee, which is due within three months for the grant of the patent. Whereas the ILPTO normally sends email notices before the deadline for payment of the renewal fees due at 6, 10, 14 and 18 years from filing, in the past it did not send an explicit notice reminding patentees of the fee due within three months of grant. Rather, until relatively recently, the practice of the Israel PTO was to include such notice on the back of the printed copy of the patent certificate, which was sent by snail mail.

This procedure was rife with opportunities for screw-ups: sometimes the certificate wouldn’t arrive (not a surprise in view of the continually declining state of Israel Post); or it would sent to the wrong address; or if it reach the right person, the notice on the back of the certificate would be overlooked. And this explains why it was the first renewal fee that was most commonly missed. (At the urging of yours truly and others, the ILPTO now includes a notice about this first renewal fee in the cover letter that is sent by email with the copy of the patent certificate.)

I’ve also written in the past about the perils of acting pro se (in patents or in anything else), especially when you’re unfamiliar with the relevant statute and regulations.

Enter one Mr. Ron David, who owns an auto body shop where he installs roof racks on cars. Working with a colleague, he developed a kit for mounting the roof rack, and sought to patent this. He hired local counsel to file an Israel patent application (no. 240582; a PCT application was also filed), and prosecuted the application through to allowance.

At that point, apparently in a cost-saving measure, he fired local counsel. And then didn’t pay the first renewal fee. Oops. He only found about the error a few years later, when his colleague told him that competitors were making knock-offs and the colleague found that the patent was no longer in force. So, still acting pro se, Mr. David tried to revive the patent. After several procedural mis-steps, he eventually got the Israel PTO to consider his request, and even got to an oral hearing (this time with re-hired local counsel) in early 2023.

If you recall the movie “The Blues Brothers”, there’s a classic scene (one of many in that film) in which Jake Blues, played by John Belushi, explains to his jilted fiancé (played by Carrie Fisher), who has a loaded machine gun pointed at him, why he didn’t show up for the wedding that her family had gone to much trouble to organize:

“I ran outta gas. I had a flat tire. I didn't have enough money for cab fare. My tux didn't come back from the cleaners. An old friend came in from outta town. Someone stole my car. There was an earthquake, a terrible flood, locusts. It wasn't my fault!! I swear to God!!”

I don’t know if Mr. David has seen this film, but his cumulative explanations to the ILPTO and (then to the district court) about why he didn’t pay the renewal fee on time were somewhat reminiscent of this scene. He said that the patent certificate – the one with the renewal reminder printed on the back where normal people don’t notice it – was sent not to him but to his colleague, who was not responsible for the Israel patent (but who’s address was the one on file with the ILPTO after Mr. David fired his patent counsel, and who was responsible for the patents outside of Israel, and who as noted above was the one who first informed Mr. David of the possible infringement and the lapse of the patent), who didn’t forward the document to Mr. David. And he thought that his colleague would pay the fee (even though – see a few lines above – he also said his colleague wasn’t responsible for the Israel patent). And, being familiar with trademark practice, he assumed that patent renewals were like trademark renewals, once every ten years, so how was he supposed to know that a renewal fee was due so soon after the grant of the patent? Plus, for two years during the corona virus scare, his business wasn’t active. And who would pay all this money to draft, file and prosecute a patent, and then let the thing go abandoned?

Sections 59 and 60 of the statute says that a patent can be revived, provided the Commissioner is convinced that (a) the lapse happened for “reasonable causes”, (b) the patentee didn’t want the patent to lapse, and (c) the reinstatement request was filed as soon as possible after learning of the lapse. Needless to say, on the Jake Blues-type pleadings, the Deputy Commissioner wasn’t convinced that the circumstances surrounding the lapse per se were reasonable.

Here I’ll interject one point. The same regulations that establish the renewal fee dates and amounts also clearly establish that the ILPTO has to send out notices to patentees before renewal fees are due. My reading of those regs is that if the Office doesn’t send such a notice, no renewal fee is due and the patent doesn’t lapse. The ILPTO takes a contrary view and has, through its own case law, conveniently excused itself from the latter requirement, asserting that although it does in fact normally send out such notices, if the Office fails to send out a notice, the responsibility for renewals is ultimately on the patentee, regardless of the ILPTO’s behavior.

Mr. David appealed to the District Court. The ILPTO argued that, given the conflicting versions of facts presented by Mr. David, it was not possible to determine that the cause of the lapse was reasonable (and, as noted in the Deputy Commissioner’s decision of March 2023, presenting conflicting arguments showed a lack of good faith).

Reading through the materials in the file, it’s clear that this was a case of multiple factors leading to the initial non-payment, and that by acting pro se, Mr. David not only caused the initial screw-up (because competent local counsel would have told him there’s a first renewal fee to pay) but messed up his own arguments in the revival proceedings.  On the other hand, the ILPTO’s take seemed rather harsh and formalistic: it’s clear from reading the materials that, indeed, Mr. David didn’t know there was a fee to pay, and had no desire for his patent to lapse. Why WOULD a small business owner prosecute a patent application to grant and then not pay the first renewal fee? The fact that after learning of the lapse occurred, he did a bad job of lawyering for himself (viz. provided conflicting explanations for the non-payment), doesn’t derogate from the conditions of section 60 having been met.

Which is probably why, at the oral hearing in the appeal in September 2023, the District Court judge strongly suggested to the ILPTO that it agree to reinstate the patent, which it did, with caveats that it was doing so only in this particular case, and that really Mr. David had a responsibility to track the status of his patent.

All’s well that ends well, I suppose. It’s worth mentioning that at the court hearing, counsel for the Office argued that upon lapse, the invention became public domain, and by reinstating the patent, “the public” would be prejudiced. That’s an argument that I’ve heard multiple times over the years, and I’ve never bought it. The statute establishes the conditions for reinstatement; it’s not for the ILPTO to add further, extraneous consideration to the mix. Moreover, the statute itself in section 63 includes a carve-out for parties that rely on the lapse to begin practicing the invention or who have made substantive preparations to do so: they can continue to practice the invention even after reinstatement. It seems that paternalism remains part of the mindset of some in the ILPTO.

Initial Israel Patent Renewal Fees (Follow-Up Post) and Mailing Dates/Deadline Dates

In May I wrote about the problem with the way in which the Israel PTO notified patentees of the initial renewal fees that are due within three months of the grant of the patent: by including such notice on the back of the patent certificate, which was (and still is) sent by regular Israel Post, the Office risked the patentee either not receiving the certificate and renewal fee notice (because of the unreliability of Israel Post), or the patentee ignoring the notice because of its being printed on the back of the patent certificate.  I wrote then that there was an easy solution to the problem:

“[T]he Israel PTO already sends the attorney of record an email notice when the patent is granted, which currently reads, “You are informed that the [patent] application has matured into a patent and the Office’s records have been updated accordingly.  The patent certificate will be generated and uploaded to the Office’s web site in the next few days.”  It would take minimal effort to add a sentence to that letter that says, “In accordance with Regulation 86, you are reminded that the first renewal fee is due three months from the date of grant of the patent.”  Such a reminder would likely reduce the number of patents that lapse for non-payment of the first renewal fee(s).”

Evidently someone at the Israel PTO was paying attention, as this morning I received such a notice of renewal as part of an email attachment telling me the patent had granted, which notice included the following language:

For your attention: a renewal fee must be paid within three months of the date of grant of the patent (which appears on the first page of the patent certificate).  This period may only be extended for six months, subject to payment of an extension fee.

Non-payment of the renewal fee in the aforesaid time period will result in lapse of the patent without prior warning!

Additional details regarding renewal fees can be found on the back of the patent certificate.

This appears to be a new and welcome addition to the ILPTO’s standard notification of issuance of the patent.  Of course, the patent certificate wasn’t included with the email, and as of this writing it still hasn’t been posted on in the database, so that’s the next thing the ILPTO can work on.  Nevertheless, this is progress of a sort: it fulfills the ILPTO’s duty to remind patentees – at least those represented by counsel – of the deadline for the first renewal fee.  However, as I noted in the previous blog post, I suspect that most practitioners don’t wait for the ILPTO, and simply docket the relevant dates of their own accord. I don’t know if pro se inventors – the ones most in need of such reminders – receive these kinds of notices by email.

The non-inclusion of the patent certificate led me to discover a discrepancy within the ILPTO’s system.  Notice of the allowance of the patent in question published in the Patents Journal on April 1, which meant that oppositions had to be filed by July 1.  Since July 1 was a Friday, when the Israel PTO is officially closed, the deadline for filing oppositions was by law extended to Sunday, July 3.  This means that the patent should have granted today, July 4, and presumably that’s why the letter I received informing me of the grant of the patent was sent today and not yesterday. 

But when I look at the “nesach” for this patent from the ILPTO database – sort of the official printout of the status of the patent – it shows the grant date as July 2, not July 4, thus foreshortening the deadline to pay the first renewal fee by two days.  I suspect that the ILPTO’s systems that calculate deadlines have been programmed accordingly, but clearly this is a glitch in the system.  I’m curious what the patent certificate itself will say regarding the grant date.  To be safe I docketed for October 2, but the discrepancy could become an issue if someone goes to pay their renewal fee on October 3.

It’s also interesting that the current Patents Journal was published on July 1, which was a Friday (as was April 1 of this year), when the ILPTO is officially closed.  I know that the USPTO publishes its Gazette every Tuesday, regardless of the date – my grandfather had a patent issued by the USPTO on December 25, when the USPTO was clearly closed, so in that respect publication of the Israel Patents Journal on a day when the ILPTO is closed isn’t unusual.  But what will happen when the first of the Gregorian month falls on Shabbat (Saturday)? Publication on that date would be legally and politically problematic.  We’ll see what happens on October 1, 2022.  (January 1, 2022 was also Saturday, but because of the change in the electronic publication format of the Patents Journal, all publications that would have taken place then were pushed off until February 1, 2022.)

Initial Patent Renewal Fees at the Israel PTO: A Problem With An Easy Solution

Patent renewal (or maintenance) fees in Israel are due for five periods of time: for years 0-6, 7-10, 11-14, 15-18, and 19-20 of a patent’s lifetime.  Normally, the fee for the next period is due by the appropriate anniversary of the filing date, viz. at years 6, 10, 14 and 18 from filing, and is payable from three months before the deadline until as many as six months afterward (with the payment of the appropriate extension fee).  (There is also an option to pay all 20 years up front.)  However, the fee for years 0-6, and for any additional renewal fees that accrued during patent prosecution, is not due while the patent application is pending, but rather is due within three months of the grant of the patent, with this deadline also being extendible by up to six months.  Failure to pay the fee results in lapse of the patent; when that happens, the patentee can petition for reinstatement of the patent.

The patent statute itself has little to say about renewal fees: §56 says that in order for a patent to remain in force, payment of such fees must be made “as has been established [in the regulations]”, and §57 establishes the six-month grace period for late payment of renewal fees.  The heavy lifting with regard to renewal fees falls to the Regulations, specifically to regulations 85-88 and paragraph 12 of the second addendum to the regulations, which set forth inter alia the aforesaid five periods for payment of renewal fees and the amount for each renewal fee. 

Regulation 86 explicitly states that “The Registrar shall send a notice to the patentee regarding every period for which he must pay a renewal fee, not later than three months prior to said period.”  Although the ILPTO has for years maintained that this statement is merely exhortative rather than compulsory (an issue beyond the scope of the present blog post), it nevertheless is usually good about sending out such reminders, usually by email to the attorney of record.  Additionally, because the deadlines for payment of most of the renewal fees are predictable (as noted, on certain anniversaries of the patent filing date), it’s easy to program these into a docketing system.

There’s one situation, however, in which the Israel PTO consistently fails to adequately inform patentees of the renewal fee, and that’s for the first renewal fee (or renewal fees, if the patent is granted more than 6 years after filing), which is due 3 months after grant.  Rather than send the patentee (or attorney of record) a notice by email, the ILPTO sends the notice by snail mail.  As I’ve blogged about before, Israel Post is bad, and has been really bad for at least 15 years.  If anyone in the private sector wants to get a letter to someone in Israel, he sends it via private courier, or alternatively via registered mail with the Israel Post, so that when it isn’t delivered to its intended recipient, the sender at least has a record of such.  No one in Israel who wants to be sure a document gets into the hands of the person who’s supposed to get it, let alone that the person receives it in a timely fashion, sends such a document by regular post.

And yet, that’s exactly what the Israel PTO does with its notices about the first renewal fee. 

To make matters worse, that notice is usually printed on the back of the Patent Certificate, which the ILPTO also sends by regular Israel Post.  Inasmuch as the electronic file is now the official record, and the patent certificate appears in the file (usually a few days after the patent is granted), there’s no need to send the physical certificate. But the Israel PTO does, with the reminder about the first renewal fee printed on the back.  Which means that (a) many patentees never receive the notice (since the certificate that appears in the electronic file does not contain the renewal fee reminder on the back), and (b) many patentees who do receive the notice don’t pay attention to it, because it’s printed on the back of the patent certificate.

I suspect that most patent firms in Israel don’t wait for the patent certificate to show up, but instead (a) docket to see that no opposition to the grant of the patent was filed by the deadline to file oppositions, and if no opposition was filed (b) docket to pay the first renewal fee within three months of grant (which occurs automatically upon expiration of the opposition period).  But not everyone is represented by counsel, and sometime inventors try to save money by taking it upon themselves to handle administrative matters.

Given the foregoing, it should come as no surprise that of the petitions to revive patents that lapsed for failure to pay renewal fees, roughly half pertain to lapses that occurred for failure to pay the first renewal fee.  And seeing as how the Israel PTO allocates personnel and office resources to handle such petitions (including to render decisions on the petitions), and how the preparation of such petitions likewise consumes significantly more time and effort than does the paying of the initial renewal fee on time, it would benefit everyone if the Israel PTO would start sending out email notices, reminding the patentee of any renewal fees that are due within three months of grant of the patent.  

This shouldn’t be difficult to do: the Israel PTO already sends the attorney of record an email notice when the patent is granted, which currently reads, “You are informed that the [patent] application has matured into a patent and the Office’s records have been updated accordingly.  The patent certificate will be generated and uploaded to the Office’s web site in the next few days.”  It would take minimal effort to add a sentence to that letter that says, “In accordance with Regulation 86, you are reminded that the first renewal fee is due three months from the date of grant of the patent.”  Such a reminder would likely reduce the number of patents that lapse for non-payment of the first renewal fee(s).

While we’re on the subject of lapsed patents, it is interesting – and inexplicable – that the ILPTO sends the attorney of record a notice when a patent application lapses for failure to respond to a communication from the ILPTO, but that it does not do so when a patent lapses for failure to pay a renewal fee.  Notice of lapse of a patent is only published in the Patents Journal.  I do not make a practice to scour the list of lapsed patents – and the list is published only as numbers of the lapsed patents, without any other identifying information – to see if any of my clients’ patents have lapsed.  Because of this, it’s not uncommon for a patentee to discover the failure to pay a renewal fee when he goes to pay the next renewal fee (due to a notice in his or his attorney’s docketing system, not because of a notice from the ILPTO, since the ILPTO doesn’t send renewal fee reminders for lapsed patents).  It would be helpful for the ILPTO to program its systems to send out notices when patents lapse for non-payment of renewal fees, and not simply publish a list of numbers of lapsed patents.

Yet Another Attempt By the Israel PTO to Circumvent the Law: ILPTO Seeks to Expand Its Powers By Fiat, at the Expense of §17(c) of the Statute

I’ve blogged before about how a good thing became less good when it was codified in the statute, specifically §17(c) of the Israel Patent statute, enacted in 1995, which codified what had until then been an Israel PTO practice: you get a corresponding patent allowed in certain other jurisdictions, and if you amend the claims in Israel to correspond to the allowed foreign claims, you can piggy-back on that allowance to gain allowance in Israel. The policy was put in place at a time when the ILPTO was overloaded with work.  And while the ILPTO has in past 10 years significantly decreased its examination backlog, §17(c) remains on the books (at least for now), and for many applicants presents a way lowering their world-wide patent prosecution costs, by allowing them to leverage prosecution in larger, more important jurisdictions, such as the USA, Europe and Japan, to obtain a low-cost allowance in tiny Israel.

As an ILPTO policy, the office had some flexibility in its implementation of this practice. But now that it’s a statutory provision, the office, at least for the past 15 years or so, feels it no longer has such flexibility.  Hence, since the statute says you can piggy-back on a granted patent, but not an allowance, the ILPTO now makes applicants wait for the grant of the foreign patent. Similarly, because of poor statutory drafting, the ILPTO won’t let applicants springboard from a corresponding patent that constitutes a corresponding national phase PCT filing if the PCT application doesn’t claim priority from an earlier application. And whereas in the past you could convert US method-of-treatment claims to Swiss-type or purpose-directed-product claims and still get those claims allowed on basis of the granted US method-of-treatment claims, in the early 2000’s the ILPTO decided it was precluded by the language of §17(c) from doing so.

Now the ILPTO wants to restrict §17(c) even more, but in a way that I don’t think the statute authorizes it to do.  But first some background. 

In Israel, when prosecution on the merits concludes, there are two important dates to keep in mind: the date of acceptance of the application, and the date of grant of the patent.  “Acceptance” occurs after the acceptance fee is paid, when notice that the application has been allowed is published in the Patents Journal under §26.  This begins a three-month period to oppose the grant of the patent.  If an opposition is filed, pre-grant opposition proceedings ensue.  If no opposition is filed (or if the opposition is rejected and no appeal of the decision filed with the district court), the patent automatically grants (§35). So if the acceptance occurs upon publication per §26 on December 31, and no opposition is filed by the end of the day on the following March 31, on April 1 the patent automatically grants.

When §17(c) was enacted, the statute was also amended to include §17(e), which says that up until the time of the grant of the patent, the applicant must inform the ILPTO if opposition or cancellation proceedings were instituted against the foreign patent which served as the basis for the §17(c) request.  §17(e) does not state that the ILPTO may take any steps as a result of being so informed.  Recently, though – viz., November 2020 – someone at the ILPTO decided that if opposition or cancellation proceedings are instituted against the foreign patent prior to the acceptance of the application, that’s sufficient reason to withdraw the allowance, and it wrote this into Commissioner’s Circular notice no. 035/2017. Curiously, when this Circular was first published in early 2017, it didn’t say anything about returning §17(c)-allowed applications to examination.

I’m not sure of the ILPTO’s legal justification for this practice – I don’t recall seeing reasons for the change to this language when it was proposed just two months ago, and no reasons seems to be given on the ILPTO’s web site. I suspect, however, that that justification (and I use the term loosely) resides in §17(d), which says that the Commissioner, his deputy or the chief examiner may refuse to accept an application for which a §17(c) request was made if the application doesn’t meet the requirements of §17(c), or if there is “another special reason not to accept the application”.  The former condition seems obvious: if an application doesn’t meet the requirements of §17(c), then it’s not allowable under §17(c) (duh!), and if an examiner mistakenly concluded that the application met the requirements of §17(c) and so informed the applicant, but it was later discovered (prior to acceptance) that the requirements of §17(c) weren’t fulfilled, the Commissioner has the authority under §17(d) to revoke the allowance per §17(c), and to return the application to regular examination. 

If that was the ILPTO’s rationale or amended Circular 035/2017 in November, then it was flawed reasoning: the filing of an opposition to the foreign patent is irrelevant to the question of whether or not the dictates of §17(c) were fulfilled. 

Alternatively, maybe the Office thinks that the filing of an opposition against the foreign patent constitutes “another special reason not to accept the application”. To the best of my knowledge that phrase has never been clearly defined, and maybe the Office feels it’s free to shoehorn this situation into that rubric.

Whatever the ILPTO’s rationale for the November revision of the Circular, I don’t think anyone would contest that up until the actual publication under §26, viz. until the “acceptance” of the application, the Commissioner has the authority to rescind the notice of allowance (whether allowed under §17(c) or under regular examination) if there is justified cause to do so, even though the statute doesn’t explicitly provide for this.  If it becomes clear, for example, that the claims in fact recite something that defies the laws of physics, that might constitute justified cause to rescind the allowance and return the application to ex parte examination.  During the re-opened prosecution of the application, the applicant will be able to present its case and, if necessary, freely amend the claims.

Having said that, I’m not convinced that the fact per se of the filing of an opposition to a corresponding patent upon which a §17(c) request was based constitutes justified cause to withdraw an allowance.  The opposition might be frivolous. More importantly, if there are third parties that wish to oppose the grant of the patent in Israel, they have a three month window in which to do so following “acceptance” of the application. And they can file for cancellation of the patent after grant, and of course can avail themselves of an invalidity defense in infringement proceedings. If the Commissioner were to examine the prior art cited in the foreign opposition, and on that basis determine that there’s a genuine question of the allowability of one or more claims, that might justify withdrawing the allowance and reverting to examination.  But not the mere filing per se of the opposition.

If that’s the case for withdrawal of an allowance before §26 publication and “acceptance”, it’s all the more so with regard to the period of time after that: the statute simply does not authorize the Commissioner to take any steps against a patent application once that publication occurs, unless a third party files an opposition. 

[The fact that the period after “acceptance” is different than the period before “acceptance” is reflected in the in fact that, prior to “acceptance”, the applicant can amend its application pretty much as it sees fit, even introducing new matter (albeit usually being required to post-date that new matter, per §23), whereas after “acceptance”, amendment to the application is quite circumscribed, permitted on per §29 and §65.] 

And yet, on January 19 – less than two months after aforesaid amendment of Circular 035/2017, the Commissioner published yet another proposed change to that very same newly-introduced sentence of that same Circular, according to which applications which are allowed under §17(c) will be returned to regular examination if after “acceptance” but prior to the grant of the patent, notice is filed with the ILPTO that opposition or cancellation proceedings have commenced against the foreign patent on which the §17(c) is based. 

It seems a little odd that this proposed change is coming so soon on the heels of the previous change.  Be that as it may, I can think of reasons why the ILPTO might want to institute such practice, but the statute simply doesn’t allow it: as explained above, once the application is “accepted”, the patent grants automatically after three months if no opposition is filed.  Nothing in §17(e) abrogates that, or gives the Commissioner the power to withdraw the “acceptance”.   

If the ILPTO wants to change the policy concerning §17(c) practice, then it needs seek that change via amendment of the statute, not by asserting it has powers that it doesn’t have. 

Comments on the draft change to the Circular are due at that ILPTO by February 2 ([email protected]).

Hyper-Textualism at the Israel PTO: Parallel National Phase Applications Aren't "Corresponding Applications"

Two years ago, I blogged about how something that started out as a good idea of the Israel PTO was eventually written into the statute and then interpreted by the ILPTO in too limiting a way.  As I wrote then:

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

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

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

The previous blog post pointed out that although the ILPTO was once liberal about allowing applicants to change method of treatment claims to Swiss-style claims and still allow the application under 17(c), it subsequently changed its view, allowing the statute to destroy the very flexibility and creativity that gave rise to the statutory amendment in the first place.

Today I heard about another case in which the ILPTO is being short-sighted about the application of §17(c).  This time, it has to do with the interpretation of what constitutes a “corresponding patent”.

The relevant wording of §17(c) says, in English translation (adapted by me from the WIPO Lex text, which contained a mistake), that one of the following must be true of the foreign patent and the Israel patent application:

* * *

(a) priority was lawfully claimed for the patent application in Israel under section 10 [Paris Convention priority – DJF], from the corresponding application;

(b) priority was claimed from the patent application in Israel for the corresponding application under the Law applicable thereto;

(c) priority was lawfully claimed for the patent application in Israel from another patent application submitted in a Member State, and such application is the basis for a priority claim for the corresponding application under the Law applicable thereto  * * *

Simply put, the Israel application and the foreign patent must share a priority claim: either the IL application claims priority from the foreign patent, or vice versa, or the two of them claim priority from a common third application.  Do you notice something missing from that?

Suppose one files a PCT application directly as the first filing, then enters the national phase in Israel and another jurisdiction that can in principle serve as a basis for a §17(c) request, say, Japan.  The ILPTO evidently has taken the view that in that situation, if the JP case is granted, it can’t serve as a basis for the §17(c) request, because, strictly speaking, the IL and JP cases don’t share a Paris Convention priority claim, since no such claim was made in the PCT application.

That position is conceptually absurd.  The whole point of §17(c) practice was to enable allowance in Israel based on an allowance abroad, provided there is a nexus between the Israel and foreign application.  There can be no greater nexus than if the two cases are both national phase filings of the same PCT application.  The fact that the PCT application does not itself claim Paris Convention priority should be of no moment, and should not preclude examination of the Israel case under §17(c).  But someone at the ILPTO has evidently decided to be hyper-textual about this, and has told an applicant in this situation that their §17(c) request is a no-go.

This isn’t just a pity in that pre-1995 (or even up around 2008 or so), the ILPTO wouldn’t have batted an eyelash about this, and would have realized that the situation I just described deserves the same treatment as if the two applications shared a common Paris Convention priority claim.  It’s that the ILPTO could be more cooperative about this if it wanted to be. 

For example, it appears that in order to implement provisional application filings in Israel, the ILPTO plans to take a slightly liberal view of what §11 of the statute says, and to split the filing fee into two parts.  (In a previous post, I recommended splitting the filing fee in a different context, and I’ll discuss the ILPTO’s proposal regarding provisionals in a subsequent post.)  Because §11 delegates the fee authority to the ILPTO, the ILPTO will be able to implement provisional filings, without necessitating a change in the statute, but merely a change in the Rules, which are easier to amend.  But the whole thing is still predicated on a particular reading of the statute. 

In the case of a first-filed PCT application, the ILPTO could say that the two applications DO claim a common priority, viz. the PCT filing itself.  Or, it could do an updated version of the old Circular no. 9, for example saying that it regards an application in the situation described above as fulfilling the requirements of §17 and §18 of the statute.  Its decision to be hyper-textual and deny eligibility for examination per §17(c) evinces a particular sort of small-mindedness, the basis of which is difficult to fathom.

A Small Request of the Israel PTO: Please Provide A Longer List of Decisions

Ex parte examination of patent, trademark and design applications is usually just a matter between the examiner and applicant, but sometimes ex parte matters need to be decided by the Commissioner, the Deputy Commissioner, or the Hearing Officer (פוסק בקנין רוחני in Hebrew, which translates more literally as "intellectual property decisor"), e.g. when there's a dispute between the applicant and the examiner that can't be resolved, or when an applicant or patentee seeks revival of an abandoned application or patent.  Those individuals also decide inter partes disputes: pre-grant oppositions, and post-grant cancellation actions, as well as awards of expenses and attorneys' fees in those cases.  There are also sometimes decisions from a statutorily-created ILPTO committee about inventors' entitlement to royalties and whether or not a particular invention constitutes a service invention.

The ILPTO posts the decisions of these adjudicative proceedings on its web site.  The search engine for searching these decisions allows filtering on the basis of type of proceeding (e.g. cancellation, reinstatement, declaration of service invention status), legal area of case (e.g. patent, TM, attorneys' fees), and type of decision (interim or final), and also has a field for text searching, as well as date range, but it's not clear how well indexed any of those fields are.  If you want a better search engine, there's a commercial operation that takes these decisions, indexes them better than the ILPTO, and makes them available along with thousands of other court decisions with a better search engine. 

What I don't get, though, is why the ILPTO's site only shows ten results at a time.  See the screenshot below, taken today.

Note that supposedly there are presently 2548 decisions on the site.  Even if uses some filters so that there are only, say, 100 results, that's 10 screens to scroll through. 

Moreover, this problem isn't limited to the lists of decisions. It's true, for example, of displays of the Patents Journal, which only displays five Journals at a time, each in MS Word and pdf formats; and Commissioner's circulars, which likewise are only listed 10 at a time.

It would be nice if the ILPTO allowed users to see 50 or 100 or all relevant results at a time, like many other search engines do. 

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

Follow-Up Post: Israel PTO Tightens Criteria For Invoking “Overlap” Between Applicant’s Own Applications

We reported last month on one of the proposed changes in the ILPTO’s examination guidelines, viz. the proposal to stop rejecting applications having claims that “overlap” with claims of an applicant’s own granted patent or pending application, provided the two filings had the same filing date.  On February 10, as expected, the ILPTO announced that it was implementing this change. 

As an epilogue, on February 11 we received confirmation that the ILPTO has indeed implemented the change: we received an allowance in a case that had previously been rejected for “overlap” with one of the applicant’s earlier-issued patents.  This situation was a bit unusual in that the two applications have the same filing dates and same priority dates, but were filed as two separate applications, not as a parent and divisional.  Nevertheless, they fit the criteria of the revised examination guidelines: same filing date, as noted, and the newly-allowed case claims a genus of compounds, whereas the already-granted patent claims a single compound falling within the genus.  In our most recent response, which was filed after the ILPTO announced the proposed examination policy change, we argued that the rejection had no basis in the statute, as evidenced by the proposed change.  The letter from the examiner neither confirms nor denies our argument, but simply states that “In view of the change in the examination guidelines regarding applications having the same filing date, it is now permissible to withdraw the rejection under section 2 of the statute [i.e. double-patenting – DJF].”

Since the change in the ILPTO’s examination guidelines ostensibly reflects a change in the ILPTO’s view regarding section 2 of the statute, and the wording of the statute itself remains unchanged, it will be interesting to see if the ILPTO’s new view is eventually challenged during litigation, and if so, how that plays out.  Until then, applicants will not need to worry about “overlap” between the claims of their parent and divisional applications.

ILPTO Proposes to Stop Rejecting Divisional Applications for “Overlap” with Parent Cases

We have from time to time blogged about the Israel PTO’s obsession with “overlap” between patent claims, an obsession which in our view is unfounded, being based on a far too-expansive reading of section 2 of the Patent statute (see here, here, here, and here).  The problem with the ILPTO’s view is that it lumps statutory double-patenting with obviousness-type double-patenting, and as a result wastes significant amounts of both examiner and applicant time.  The issue can arise in all fields, but particularly affects patent applications in the life sciences, and is often a thorny issue between parent and divisional applications.

To address the issue, we have proposed implementing a system analogous to terminal practice in the US, which would allow applicants to overcome these “overlap” rejections by promising enforceability only as long as the two patents are owned by the same entity, and as long as they expire the same day (excepting any patent term extension time granted in one of them). 

It now appears that at least partial relief may be on the way.  In a notice published last week regarding proposed revisions to the Examination Guidelines (the ILPTO’s equivalent of the MPEP, albeit – thankfully – far less voluminous than the latter), the ILPTO has proposed foregoing the raising “overlap” rejections in cases of patent applications or a patent application and a patent which are (a) owned by the same entity and (b) have the same filing date, provided that the two documents do not contain claims of “literally or substantively” identical scope.  This means that the ILPTO plans to stop raising such rejections in cases of parent and divisional applications, as long as the claims are of different scopes.  The specific proposed wording can be found here beginning at page 30.

The ILPTO has asked for comments on the proposed revisions to the Guidelines, to be sent to [email protected] by January 29, 2020.

It is interesting, but not surprising, to note that the impetus for this proposed change is to save examiner time: making life easier for itself seems to be the overriding rationale behind many changes implemented by the ILPTO in recent years, even if those changes impose excessive burdens on applicants or their representatives.  In the present case, it is expected that the proposed change will ease life for applicants as well.

One other interesting point is that the proposed wording will not require applicants to promise co-ownership of the two patents as a condition for enforceability; the ILPTO will look at co-ownership at the time of examination.  Perhaps, upon further reflection, the ILPTO will realize that adopting a terminal disclaimer practice for all co-owned applications where there is “overlap” between the claims, irrespective of filing date, would achieve an even better result. 

Even if the ILPTO’s proposed change doesn’t go far enough, it is nevertheless a welcome one.

Muddle, Muddle, Toil and Trouble: Israel PTO Backtracks on “No Divisionals of Divisionals” Policy. Maybe.

We’ve blogged in the past about the ILPTO’s strange, ultra vires policy announcement in early 2010 to forbid the filing of second-generation divisional applications (2GDs) after the grandparent case has been published for opposition purposes.  That announcement, which was based on an absolutely untenable reading of the statute, and which contradicted over 40 years of practice under the statute, came not in the context of a decision in an opposition (where one might have expected to see such a statutory challenge to the grant of a patent raised) but in a circular issued sua sponte by the then-commissioner. 

In a decision (in Hebrew) issued on January 12, 2016 in an ex parte proceeding in IL 234696, the present Commissioner has taken a step back from that view, and may be on his way to returning to the status quo ante in which it was possible to file a chain of divisional applications.  Unfortunately, the Commissioner’s thinking in this matter is muddled, as will be explained below, and the decision does not contain a clear repudiation of the ILPTO’s anti-2GD stance.  We’ll believe that the anti-divisional policy has been killed off when we see an announcement from the ILPTO to that effect.

Background: Statutory Basis for Divisionals in Israel and the 2010 Circular

Section 24(a) of the Israel patent statute says, “As long as the application has not been accepted [i.e. published for opposition purposes – DJF], the applicant is entitled to demand that it be divided into several applications.”  Section 24(b) says, “If the application includes more than one invention, then the Registrar may, as long as he has not accepted the application, direct the applicant to divide his application.” 

From 1967 when the patent statute was enacted until the spring of 2010, 24(a) was understood by all as referring to any given application: any application could be divided, provided it had not yet been published for opposition purposes.  Thus a first divisional could be divided from an original application, which, while the first divisional was pending, could publish for opposition and then issue as a patent.  Thereafter, during the pendency of the first divisional but after the publication of the original case, a second divisional could be filed from the first divisional, notwithstanding the publication of the original application in the interim. Both the first and second divisionals would have an effective filing date of the original case and would enjoy any priority claims made therein.  The process could be repeated ad infinitum, subject to the 20-year term, which for all the applications in the series would run from the filing date of the original application.

In February 2010, in one of many circulars issued during his tenure, the then-commissioner announced that henceforth, the ILPTO would interpret 24(a) as referring only to the original application.  (He subsequently pushed off implementation of the circular by several months.) Thus, once the original application published for opposition purposes, no 2nd- or higher-generation divisionals could be filed from any already-filed, still-pending divisional applications.  The rationale given in the circular for this new “policy” was “the need to conclude examination proceedings in a reasonable time and because of considerations of legal certainty for the general public”. In other words, the ability to file divisionals ad infinitum kept “the public” uninformed about the acts that might be enjoined should a grandchild patent issue many years after the first patent. 

As we noted then, the problem with this view is that statutory interpretation and administrative polices are different creatures.  Administrative policies, like how many months’ extension the Commissioner will grant before a show of cause is required to obtain additional extensions, can only be implemented prospectively, and there may be a delay between an administrative policy being announced and its implementation. Statutory interpretation, by contrast, has immediate effect, both prospectively and retrospectively.  If the statute precludes the filing of 2GDs, then (a) all patents granted in such cases until 2010 time were void, and (b) the ILPTO needed to stop accepting such applications immediately, not several months after the publication of the circular, as the ILPTO stated would be the case. 

Challenge to the ILPTO

Since the new “policy” hinged on statutory interpretation, but without retrospective effect, it was only a matter of time until an applicant with a sufficiently valuable patent application and sufficiently deep pockets would challenge the ILPTO.  This occurred in late 2014, when Genentech sought to file a 2GD, IL 234696, related to the antibody that is the active ingredient in its blockbuster drug Herceptin.  

Aware of the 2010 circular, Genentech asked the ILPTO nevertheless accept the 2GD as a divisional.  Genentech raised several grounds for its request, among them that the circular was based on an untenable reading of 24(a), and as a result was ultra vires; that the policy announced in the circular failed to achieve its stated goal, viz. more certainty for “the public”, and therefore should be withdrawn; and that proper statutory interpretation applies retroactively, thus invalidating many already-granted patents if the interpretation proffered by the ILPTO was correct. Genentech did, however, ask that if the Commissioner disagreed about the proper reading of 24(a), and about the scope of his powers (i.e. if the Commissioner believed that the 2010 circular was not invalid), that he nevertheless grant an exception in this particular case and allow the filing of the 2GD.  In January 2015 Genentech pled its case in an ex parte hearing before the Commissioner.

Commissioner’s Decision

On January 12, 2016 (yes, a full year after the oral hearing), the Commissioner delivered his decision: Genentech’s application 234696 would be accorded the status of a divisional application.

While the decision is being heralded by the firm that represented Genentech as a reversal of policy and a green light for the filing of 2GDs, in this corner we view the decision as moving in that direction, but not quite getting there.  Nowhere does the decision explicitly say that the statutory interpretation expressed in the 2010 circular is wrong, nor does the decision say that that circular is rescinded.  The decision does say that it’s time to reconsider the 2010 circular, in light of changed circumstances.  But the actual holding in the decision is that in this particular case, the 2GD shall be treated as a proper divisional.  Hopefully a rescinding of the 2010 circular is in the works, but until that happens, it’s unclear where the ILPTO stands on the issue of 2GDs generally.

Far more telling is the reasoning, vel non, of the decision. The decision starts out, correctly, saying that this is a matter of statutory interpretation - viz. when S.24(a) refers to “the application” to be divided, does it mean the first application filed in a chain, or does it mean any pending application?  But then, rather than simply state “the correct interpretation of the statute is that “the application” refers to any application”, which was what Genentech asked the Commissioner to do, the decision veers in the direction of administrative law, treating statutory interpretation as if this is a matter for PTO administrative policy.  The Commissioner thus spends pages and pages justifying why he can now, in accordance with Israeli administrative law, consider deviating from the 2010 circular.  This discussion includes statistics on numbers of divisional filings pre- and post-2010 and their percentages among the overall numbers of applications; how the matter of 2GDs is treated in the US, EPO, UK, AU and JP; and public policy concerns about lack of proper notice to “the public” if chains of divisionals are filed.  Such public policy concerns are, of course, not the province of the Commissioner but of the legislature.

After this long-winded discourse, the Commissioner states that perhaps the time has come to reevaluate the 2010 circular, since it doesn’t seem to have achieved its purpose (the number of divisionals filed annually since 2010 is up versus the four-year period preceding the circular), and the ILPTO has significantly reduced examination times as well. The Commissioner also acknowledges that in some cases, such as the present one, the early issuance of patents with narrow claims and the later pendency of other applications divided out from the earlier applications may “serve the aims of the statute and the desired legal certainty for the public at large”.  He also wonders if implementing a progressive fee scale for divisional applications might not be a bad thing.  But his ruling is that, “In view of the foregoing, I find no reason to apply the instructions of Circular MN 81 to the application before me, and I see no reason to prevent further examination of the ‘696 application…. In conclusion, the ‘696 application shall be examined in accordance with the date on which it was filed and in the regular examination queue.”

Analysis

While reaching the correct conclusion – the Genetech ‘696 application should be treated as a divisional of a divisional – there are a number of problems with the Commissioner’s approach in the Genentech decision.  Chief among these is the decision’s implicit assumption that administrative law is controlling in this case.  That’s plainly incorrect: there's only one correct interpretation of the statute, and statutory interpretation is NOT a matter of PTO administrative policy. Consequently, the Commissioner doesn’t need to engage in hand-waving or go looking for reasons to rescind the 2010 circular, because that circular is not the sort of pronouncement that’s due any deference by subsequent commissioners, or for which changed circumstances need to be considered if the circular is to be revised or trashed.  If the view reflected in the circular is correct (and by implication, the practice of the ILPTO for the 43 years before the circular was wrong), then ALL 2GDs are invalid and they always have been, and the ILPTO must continue to refuse to accept them, including in Genentech’s case.  If the view in the circular is wrong (which it is), then the Commissioner needed to say so in the Genentech decision, and to say that the 2010 circular is void, because the statute grants applicants the right to file divisionals from ANY pending application, period.

Remarkably, Genentech made these very arguments in its pleadings, but the Commissioner did not deal with them head-on in the decision.  It appears the Commissioner was reluctant to admit that his predecessor had exceeded his powers, and that the present Commissioner was complicit in this by failing to rescind the circular years ago (a reluctance reinforced by the year between the oral arguments in the case and the issuance of the decision).  One wonders how the Commissioner would have decided this case had Genentech not pled an alternative ground for allowing its application to proceed, viz. that the Commissioner should exercise his discretion and not apply the 2010 circular in this case.

The Commissioner’s accounting for public policy considerations, particularly the “need” of some amorphous “public” for “legal certainty”, viz. to know whether or not that “public” is entitled practice a particular invention or not, is also in error, although entirely typical of Israel Patent Commissioners going back for many years.  To the extent that the needs of an amorphous “public” are to be accounted for, the statute itself does that: it says that applicants can file divisonals of divisonals. End of discussion.  If a particular individual (say, a multinational pharmaceutical company based in Israel) feels harmed by a particular allowed patent application, the statute gives that individual the power to file a pre-grant opposition to the grant of the patent (which is what happened to applications nos. 136201 and 214084, the grandparent and parent, respectively, of the ‘696 application). But it’s not the place of the Commissioner to re-write the statute in accordance with his perceptions of the need to protect some unspecified “public”.

An additional point, less germane to the analysis of the decision per se but nevertheless instructive, is that the statistical analysis provided in the decision posits that the rise in divisionals since 2010 is due to the issuance of the circular.  While that circular certainly played a role, the rise in divisional filings is likely due in part to additional factors, beyond the MN 81 circular. In particular, the adoption of regulations in December 2009 that impose a fee of 500 shekels for each additional claim above 50 probably influenced the increase in divisional filings, since the filing fee for a new application was set at around 2000 shekels.  Additionally, not long before the issuance of the 2010 circular, the ILPTO issued a different circular in which it announced that an examiner’s finding of lack of unity of invention under section 8 of the statute constituted an order under 24(b) to divide the application. Per that earlier circular, the filing of a divisional after the allotted time respond to the disunity requires the payment of extension fees.  This policy likely also contributed to the rise in the filing of divisional applications.  Why neither of these additional factors was mentioned in the Genentech decision is both enigmatic and disconcerting, as it suggests a poor grasp of patent prosecution by the head of the ILPTO. 

Ultimately, one gets the feeling from the Genetech decision that the Commissioner intends to revise or rescind the 2010 circular, but on the grounds that circumstances have changed and the policy expressed in the circular no longer needs to be implemented, not because the circular expressed an incorrect view of the statute ab initio.  We eagerly await the issuance of such a pronouncement.