America-Israel Patent Law

Let's All Celebrate - Qatar Has Joined the Madrid Protocol!

Well, that seems to be the message from the Israel PTO, which earlier today sent out an email to its distribution list, informing us of this important fact, with a link to the official WIPO announcement.

Of course, Israel doesn't have formal diplomatic relations with Qatar, and Qatar hosts the heads of Hamas who have stolen billions of dollars intended to go to projects in Gaza (while the rest was being put to use building terrorist tunnels and rockets to launch at Israel), but maybe there's some Israeli entity that wants to register a mark in Qatar. I wonder, how would an enforcement action would play out there for an Israeli entity?

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.

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.

Follow-up to post re: We Filed a Legible Amendment...

As a follow-up to my post of a few weeks ago about the examiner who asserted that an amendment we filed was non-compliant because he found it difficult to read as a result of the PTO's post-filing processing of the document, in a different case (but in the same art group), I was contacted by a different examiner who also complained that the amendments we filed were hard to read, and asking for a purely black-and-white copy. Which I was happy to prepare and email to him.

The difference between the more recent case and the one I wrote about earlier is that here, the examiner didn't assert that we didn't comply with the rule. I'm sensitive to these things - the USPTO has a predilection for playing fast-and-loose with the rulemaking process and for ignoring its own rules, and the amendment we submitted complied with those rules, so the examiner was wrong to assert that the PTO's garbling of that document after we filed it meant we weren't in compliance.

Now that I know there's an issue for examiners with color amendments because of the PTO's processing software, I'll just prepare b/w documents for submission in order to have one less thing for examiners to complain about. But I will never let an examiner tell me that a pdf filed with changes marked in color is unacceptable, because it's not unacceptable.

 

 

We Filed a Legible Amendment. The USPTO Garbled It. Now the Examiner Complains...to us, not the USPTO.

So we filed a preliminary amendment in a US national phase application in early 2022, as a pdf made from an MS Word file that had the changes tracked - red strikethrough for deletions, blue underline for insertions. Just as we've done a zillion times in the past.

Today we got a first OA, and the examiner writes the following, which I've never encountered before:

"Please note that the claim listing with the amendment of January 3, 2022 fails to comply with 37 CFR 1.121(a) and with 37 CFR 1.52(a)(1)(iv) in that color was used to mark changes, so that the document is not entirely “in permanent dark ink or its equivalent.”  Nevertheless, the amendment has been entered.  Please note that the use of color in amendments causes problems in legibility in the Desktop Application Viewer (DAV) at USPTO."

In the words of Steve Martin, Well excuuuuuuuuuse me!

Thanks, Mr. Examiner, for deigning to enter the amendments, but why is it OUR problem that the PTO's systems degrade what we file? The document FILED BY US is clear as anything (unless, perhaps, you're red-blue colorblind). That's why we filed it as a pdf - so that it will appear the same on any pdf viewer anywhere.  We complied with the rule (which, I note, doesn’t mention that submissions must be “Desktop Application Viewer” compliant). Your office degraded what we submitted. Take it up with your IT people. 

I note that when I go to "preview" in Patent CenterCrapper and look at the claims filed 26 months ago, I see that the changed portions appear in light grey, whereas the original text is black. I don’t know if this is the same viewer that he uses, but I understand what's bothering the examiner. But again, not our problem.

The late, great Yiddishist Sam Levinson defined "chutzpa" as someone who kills both his parents and then pleads for mercy before the court because he's an orphan. This case isn't quite as bad as that, but it certainly ranks on the chutzpa scale.

Assuming we amend the claims in our response, we will file response as a pdf, with changes marked as normal. And in the response I will include a note to the examiner politely explaining the above...and even offering to email him a pdf copy of the amendment as submitted, unabused by his colleagues at the PTO.

(Related musings: Why is it that it's ok for the PTO to provide us with seriously degraded copies of prior art?  Or to provide foreign-language documents without a translation? This OA cites two French-language publications, without providing a translation.)

Why Is the Israel PTO Advertising For a Private Company?

According to an email announcement in Hebrew sent earlier this month and for which a reminder was sent today, on January 30, the Israel PTO will be holding a video training session covering two topics: how to use an AI search tool from a particular company to look for publications in assessing patentability of ideas and validity of patents, and how to utilize the Israel PTO patent database. The full text of the notice appears below; readers who don’t read Hebrew can cut-and-paste into a machine translation program.

The State of Israel imposes restrictions on its employees in order to avoid conflicts-of-interest, to the point that I can’t buy a friend who works in the Patent Office a cup of coffee if we meet at a restaurant. So I’m confused, to put it mildly, by the fact that the Patent Office is sponsoring what appears to be an advertisement for a particular company. To me, this is akin to the Office running a session on how to use Microsoft Word or Google Drive.

This isn’t the first time the Israel PTO has played favorites. In the past it has sent out notices upon the deaths of certain patent practitioners, but not upon the deaths of others. I don’t see where it’s the ILPTO’s place to send out death notices about ANY practitioners.

ציבור המבקשים, עורכי הדין ועורכי הפטנטים שלום רב,

תזכורת: ביום שלישי הקרוב, 30.1.24, בשעה 12:30 תתקיים הדרכה לציבור על מנוע החיפוש סימלארי  ועל אתר החיפוש של רשות הפטנטים.

על מנת שנוכל לעסוק בנושאים המעניינים אתכם, נודה לכם אם תקדישו כמה דקות לכתיבת נושאים ושאלות בקישור המצ"ב.

כמו כן, לטובת הציבור, מצורפת ההודעה על תוכן ההדרכה המתוכננת וקישור למפגש:

שימוש במנוע חיפוש מבוסס בינה מלאכותית ולמידה עמוקה של חברת סימילארי בע"מ לחיפוש ידע קודם, הפתוח לרשות הציבור ללא עלות.

בנוסף, במסגרת זו נציג גם את כלל האפשרויות הקיימות  ב'אתר החיפוש' של רשות הפטנטים.
מאגר זה מכיל מידע עדכני על פטנטים שהוגשו בישראל ומאפשר ביצוע חיפוש במאגר באמצעות מאפיינים שונים.

המידע הקיים באתר כולל נתונים ביבליוגרפים בהתאם למצב הפרסום של בקשת הפטנט ואת האפשרויות הבאות:

• צפייה בנסח הפטנט
• הפקת תדפיס הנסח
• צפייה במסמכי בקשות לפטנט שהתפרסם דבר קיבולן (תקציר, טופס הבקשה, פירוט, תביעות, שרטוטים).
• אפשרות לעיון באתר בכל המסמכים הנוגעים לבקשות לפטנט שנפתחו לעיון הציבור בהתאם לסעיף 16 (א) לחוק
• שמירת חיפושים וקבלת התראות בעדכון החיפוש

ההדרכה תתקיים ביום שלישי ה30 לינואר בין 12:30- 13:30

קישור מצ"ב

 

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.

Like, Who Else Can See It? More Fun With The Israel PTO's Electronic Filing System

So I filed a national phase application, and then shortly thereafter - before notice of the filing the application published - the client instructed me to file some amendments to the text. 

As I've mentioned on previous occasions, one of the annoying things about the Israel PTO's EFS is that it has a predefined set classifications for documents that are being filed, and miscellaneous" is not among the choices. So you have to wade through dozens of choices for documents to be filed. Fortunately, there is a category for amendments to an already-filed specification - two, in fact, one for filing before substantive examination has begun and one for filing during substantive examination. Of course, these, like many categories, as classified as "request to ...", even though I'm not asking anyone to do anything: I'm telling them, we're amending the spec, and there's no discretion here for which need to ask the ILPTO's permission.

What I found silly was that after I chose the task description, and then typed in the number of the application, and the system didn't choke and say "you can't do that task in that application at this time", I got the following screen:

That last line, in brown, says, "name of the application: not yet published".

Who are they hiding the information from? I'm the one who filed the application! And the way the system is set up, I can only get to this screen if I'm authorized to file. If entered the number of an application with which I'm not associated, a text box will pop up that says "You're not authorized to file in that application, you ninny!"

Intel To Increase Investment In Israel

This could have been Gaza, or Ramallah, or Amman or Damascus or Beirut...but first you have to learn to love life rather than lust after death. Good things happen to people who love life.

Intel to open factory in Israel with investment of $25 billion | The Times of Israel

"The Far Side" and Non-Obviousness/Inventive Step

There are a few Far Side cartoons that that are not only funny but useful for illustrating basic concepts in patent law.  One of those ran today on www.thefarside.com: it shows a group of cavemen with animals draped over their backs, and one caveman standing off to the side holding up a flint tool, saying "Yes, with the amazing new ‘knife,’ you only have to wear the skin of those dead animals". (I provide the description because the link will expire in three days.) This is an example of both novelty (previously unknown) and non-obviousness (as evidenced, e.g. by the fact that all the but huckster are wearing entire animals, some of them live - at the very least, this knife addresses a long-pelt, er, long-felt need).

Cute Idea, But…

Years ago, my friend and (now retired) colleague Ellen Shankman, a trademark attorney, drew my attention to a phenomenon in Israel regarding patent applications: lots of Israelis think that filing a patent application means they’ve won the lottery, when it’s more like buying a lottery ticket.

I thought of the analogy today not with respect to patent applications, but with regard to a meme that’s been making its way among Jews on social media: a photo from the USPTO’s database of trademark applications, showing data for a trademark application, asserting that “The Federal government of the United States issued trademark rights” for a particular phrase, and that therefore the “owner” could prevent others from using the mark. See the photos below.

What’s got these commenters and re-Tweet-ers and other all excited is that the mark is for the phrase “From the river to the sea, Palestine will be free” – the phrase that means the Jews should be kicked out of Israel (alive or dead), the phrase that hordes of brainless US college kids have now adopted and mindlessly repeat. While I share the sharers’ desires and sentiments, their comments display multiple misunderstandings of TM law.

The first and most obvious, of course, is that this is just a TM application filed at the US Patent and Trademark Office (PTO), not a registered mark, and an application gives the applicant no enforceable rights.

Then there’s the issue of use: to register a mark in the USA, you have to show use of the mark in commerce, and this application doesn’t allege a first use.  Rather, it’s what’s called an “intent to use” application, which means that at some point during the examination process, the applicant will have to show that it actually used the mark in commerce. Failure to do that = no registration.

This leads to a more general and more important observation, namely that there’s no guarantee that the application will mature into a registration. The examiner might not allow it; or it might be allowed by then opposed and the PTO’s Trademark Trial and Appeal Board (TTAB) might not allow the registration; and even if TTAB allows it, TTAB might get overturned on appeal to a Federal court. And even should registration occur, if an enforcement action is then brought, the validity or enforceability of the registration can be challenged as an affirmative defense.

Finally, and most importantly, trademark applications list classes of goods and services to which the mark will be applied; gaining registration does not allow the registrant to preclude all uses of the mark in all areas, especially not the spoken word. The application in question says that the mark is to be used in connection with hats and t-shirts. That doesn’t cover placards or signs, and – sorry to be the party-pooper here – it doesn’t cover words shouted by Jew-haters and other idiots.

Bottom line, this is a cute idea, an example of the yiddische kop in action (as evidenced by the correspondence address given, which is for the form [email protected]). I wish the applicant luck in getting the mark registered. But social network denizens, please don’t get ahead of yourselves. It’s just a trademark application, and at the end of the day, even if registered it ain’t gonna do much in the battle against evil.

More Fun With the Israel PTO Patent Electronic Filing System

I could write about the USPTO colossal electronic system screw-up this week…but that will wait for a later blog post. Today we’re going to discuss the ILPTO EFS, particularly its new interface for filing new applications.

As mentioned in a previous post, in September the Israel PTO announced, with much fanfare, that it was changing its interface for filing new patent applications, but that, as far as I could tell, the only significant difference from the old interface was that now it will populate the information for PCT national phase applications with data taken directly from WIPO.

After playing with the system more since then, I’ve found that my initial assessment was correct. And there are some clunky parts to the new interface: you have to log in, then indicate you want to file a new application, but then you’re directed to a page telling you to login again.  Clicking on the appropriate button takes you to the next screen, but if you’re already logged in, why should you have to click the button again?

And once you get to that next screen, it’s not immediately clear where you need to click in order to file a new application. (Turns out it’s בקשה לפטנט in the top middle of the screen.)

I also found what seemed at first to be a bug: you can’t enter national phase before the PCT application has published, because the system doesn’t have data to draw from. It gives an error message: “unable to obtain data from WIPO”. Well, duh. What’s not immediately apparent – but was explained to me subsequently by a colleague – is that there’s a button saying “continue”, which allows you to manually enter the data. That button should say “click here to manually input the data”.

And as I noted in the previous post, the fact that you don’t get an acknowledgement of what was filed is unacceptable. You can see the names of the files that you ostensibly submitted, but there’s no way to verify that what is actually in the ILPTO’s system is what you submitted. Sorry, ILPTO, that doesn’t cut it.

There is one improvement on the way that they announced this week: they’re going to start pulling the application documents from WIPO, instead of requiring applicants to submit the specification, claims, drawings and sequence listings themselves. (Applicants will still have the option of filing their own documents.)  This will save filers some time, but I’m not sure this complies with the ILPTO’s own rules about filing: the ILPTO ostensibly requires filers to submit searchable pdfs, but the pdf files obtained from WIPO are not searchable. (Actually, when they introduced the EFS in late 2015, the fact that they were asking for searchable pdfs but WIPO only provides non-searchable pdfs was a complaint that was raised, and I think this is a “requirement” that’s generally honored in the breach.) On the other hand, this may be the first time a government office anywhere in world voluntarily made things more difficult for itself in an effort to make things easier for the public to which it provides service.