America-Israel Patent Law

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.

Bill Cosby's Noah At the Israel PTO

Those of us old enough to remember Bill Cosby before he fell from grace will recall his famous bit about Noah. It actually appeared on an LP as three separate sketches, the second of which was "Noah and the Neighbor". Noah's neighbor complains to Noah about the ark-under-construction blocking the neighbor's driveway, and eventually the neighbor asks, "Why do you need to build this ark anyway?"  To which Noah replies, "I can't tell you, haaaa haaaa haaaa haaaa haaaa haaaa".

Last week I paid the "acceptance fee" (the equivalent of the USPTO issue fee) for an allowed Israel patent application. This morning I received the equivalent of a US "issue notification", namely a letter telling me when the application will be published in the Patents Journal for opposition purposes, which is what constitutes "acceptance" of the application.  A picture of the letter appears at the right.

For those who don't read Hebrew, I'll translate the relevant part:

"The date of acceptance of the application is

"The notice of acceptance of the application per section 26 of the statute will be published in the Patents Journal which will be available on the Patent Office web site on ."

Thank you Noah!

My working assumption is that when they switched from publication of the Patents on the last working day of the month to the first working day of the month, someone was supposed to reprogram the software that generates these letters, but screwed up.

While this seems funny, there's actually a serious side to the story: if an applicant wants to file a divisional application, he must do so BEFORE publication of the parent case in the Patents Journal.  So knowing the date of future publication can be important.  Especially since there's no case law in Israel akin to Immersion Corp. v HTC like there is in the USA: if you wake up one morning and find your application published in the Israel Patents Journal, the Israel PTO's e-filing system won't let you file a new divisional, and you'll need to go to court and hope that the court rules that a divisional can be filed on the same day that the parent case published under section 26.

I also like the fact that the letter is signed by "The Patent Office" (or more accurately, "The Patents Authority"), without any particularly individual's name on the bottom to contact about the fact that the letter is wholly uninformative.

 

Nice Bells And Whistles, But What About The Critical Functions?

I reported earlier this year on the Israel PTO’s updating of its public patent database, and concomitant loss of some documents in the migration.  This week, the ILPTO sent not one but two emails regarding the database.   It’s possible these emails were also posted on its website, but since the website was re-done in May, it’s a lot harder to find information.  Using the site’s search engine, I found the second of these notices here. That notice reminds people that certain prior art documents filed by applicants as part of their duty of disclosure are not available on the public database (viz. those documents subject to copyright), but provides contact information for individuals who wish to obtain copies.

The first notice, which I couldn’t find on the ILPTO web site but may be hiding somewhere in there, trumpets many new features now available in the database: searching according to various events in the file by data or name of event (acceptance of application; filing of opposition; office action response; request to amend; opposition to amendment; request for patent cancellation by third party; request for cancellation by patentee; patent term extension (PTE) requests; intent to grant PTE per §64E(c); intent to grant PTE per §64E(e)(1); supplemental intent to grant PTE per §64E(e)(3); opposition to PTE; grant of PTE; reinstatement request; addition or removal of inventor; assignment of patent; change in representative or representative address; removal of representative; recordation or removal of license, lien, or pledge; merger; change of name or address of patentee); addition of information about expected first office action or subsequent office action in response to an applicant’s answer; searching PTE info by name of active ingredient listed in the PTE.  According to the notice, search results can also be downloaded in Excel format.    

I have not tested to see if any of these new features are actually available.  If they are, they’re nice to have, and in some ways far better than what, say, the USPTO offers (e.g. for searching IPRs).  But I have something more basic that interests me.

I filed a patent application at the end of the Paris Convention year, claiming priority from an application that’s available via DAS.  At the time I filed, I made the priority claim, but didn’t have a copy of the priority application itself and didn’t have the DAS access code.  Subsequently the client supplied me with the DAS access code, and asked the ILPTO to download a copy of the priority document.  I made an entry in my docket to follow-up to be sure the copy of the priority document had been downloaded.

Not having heard from the ILPTO that document was retrieved, but also not having heard that it couldn’t be retrieved, this week, per my docket, I checked the ILPTO patent database. My instruction letter was there, but the priority document was not.  After a few phone calls I reached someone at the ILPTO who’s familiar with the DAS process, who assured me that the priority document was there, and visible in the ILPTO’s own internal database.

What’s the point of a public database that doesn’t show copies of priority documents, or more generally that does not indicate to practitioners that their instructions have been acted upon by the ILPTO? 

And those documents that went missing back in March when they migrated to the new database still aren’t visible.

Contrasted with the ILPTO touting all these great improvements in the database, the failure to indicate that the priority document was retrieved, and the continued absence of certain other documents, is like the people behind this database saying, “Let them eat cake”.

Incorrect Mailing Date on Correspondence from Israel PTO

I recently encountered a bug in the Israel PTO’s system for sending notices to applicants and practitioners. 

Once upon a time, the Israel PTO sent practitioners paper copies of correspondence. That’s mostly gone by the wayside (patent certificates are the notable exception that still sent by snail mail).  But the question is, what’s the date from which deadlines are calculated – the date on which the ILPTO puts the notice in the hopper, or the date on which it’s actually sent?

Normally there’s no difference – an office action, for example, is sent by email on the same date that the examiner puts it into the system to be sent.  So a copy goes to the practitioner on that date, and a copy is uploaded to the public database as well, showing the same date.  The copy of the OA received by the practitioner, which is attached to the email as a pdf file, is automatically given a file name that includes the application number and the date on which the file was sent to the applicant, as well as some other information that means something to the patent office but not to the rest of us.

But what happens when there’s a delay between when the examiner loads the office action into the system, and when the OA is actually sent? 

It turns out that if an examiner loads an OA into the system on, say, Wednesday evening, and the OA isn’t sent by email until Thursday morning, the pdf file sent to the practitioner shows the Thursday date, but the database records the OA as having been sent on Wednesday.  Obviously, this has implications for how the system calculates deadlines: if the official deadline falls on a Friday, when the ILPTO is closed, the deadline for response is automatically pushed off until Sunday, whereas if the deadline falls on a Thursday, then that’s the deadline.

Legally, of course, it’s the date that the notice was actually sent, not the date it was uploaded to sent, that’s controlling, but if you’re in a situation where the full response period, and not a one-day foreshortened period, is needed, then you’ve got two choices: file on the actual deadline date – the one that the ILPTO’s system says is on the first day of the extension period – pay for the extension, and then request a refund with an explanation why the response wasn’t late; or don’t pay the extension fee, hope the system records the response as being filed and puts it on the examiner’s docket, and if you eventually get a notice that an extension fee is due, call or write the ILPTO to fix the issue. 

I discovered this recently when preparing an OA response: based on the mailing date of the email and the date in the filename of the pdf file of the OA, I had informed the client that the deadline was on date X.  While preparing the response, I discovered that the database listed the deadline as X-1.  In my case it didn’t matter, as the client had provided instructions ahead of date X-1, but I nevertheless called this to the attention of the senior person at the ILPTO responsible for the system.  To that person’s credit, the person looked into the matter and I got response later that day.  The response itself, however, wasn’t wholly satisfying; here’s my translation from Hebrew:

“The matter was investigated. In accordance with the logic set [i.e. programmed - DJF] in the system, the system sends the letter [by email] within several minutes of its creation.  From the investigation that was carried out, the phenomenon of a delay of several hours between creation of the document and its being sent by email is exceedingly rare. We will take into account the extra day required because receipt of the notice with several hours’ delay.”

In other words, they’re not going to fix the system, so it’s on us practitioners to check the dates on these things.  It’s worth noting that files don’t appear in the database until after the nightly update, and sometimes not for several days after being sent, so now there’s another thing to docket to check for: make sure the date in the database matches the date on the pdf file.  Thanks, ILPTO.

Of course, as a colleague noted, getting an OA by email one day later than one should have received it is still an improvement over waiting for letters to arrive by snail mail.

Surprise! Israel PTO Messes Up, Er, Redesigns Web Site Without Warning

Thank God for bureaucrats – where would we citizens of the modern state be without them?

Nearly five-and-a-half years after rolling out its less-than-stellar electronic filing system for patents without significant beta-testing or public input, the Israel PTO has now re-done its website, apparently without warning – and, evidently, again without beta-testing. Those of us on the ILPTO’s mailing list received word of the change last night, in the form of the following email:

"To the public of applicants, attorneys-at-law and patent agents, greetings.

"We wish to inform you that the Patent Office web site has moved to the GOV.IL platform, which is the government platform that government offices are obligated to use. The GOV.IL platform is very different from the old site, and therefore we estimate that you will need a period of time to transition to the new site.

"For any comment, question or assistance, you may contact Ms. Shirley Cohen, the Office’s contact person for the web site, at [email protected] or at 073-392-7167."

What fun.

From the letter it sounds like this was something forced upon the ILPTO, but even if that’s the case, it was clearly in the works for a while, so why not give advance warning? (In the interest of fairness, I’ll note that it’s possible there was advanced that I missed…but I don’t think so, as none of the colleagues with whom I’ve spoken recall seeing advance warning of the change.) If you recognize that a transition period is necessary, why not have the two systems run in parallel for a period of time to allow people to compare (or, in a pinch, use the old system), instead of forcing everyone onto the new site without warning? And why not solicit public input so as to improve the system before you launch?

I have not had much time to play with the new site and figure it out. Maybe it’s substantively better than the old site, but I don’t see how a one-size-fits-all formula for all state web sites is necessarily an improvement.  Certainly, the time that will have to be invested by veteran users of the old site to familiarize themselves with the new site will be considerable. That loss of productive, tax-generating hours is obviously not a consideration for the bureaucrats.

Nor have I had a chance to see if the English version of the site is complete. The English version of the old site lacked much of the information of the Hebrew site, so perhaps in this regard the new site is an improvement.

One thing that I find annoying is that the top bar on every screen is the bar for the entire gov.il site. So if I click on, say, the “information” tab, and select “legal information”, the next screen lets me search the entirety of what is classified as “legal information” on ALL the Israel government sites.  All 14,128 pages, in fact, as of today.  Just what I need when I’m looking for info specifically from the Patent Office.

 

Sigh.

At least the IDF and home-grown Israeli technology provides me with the luxury of ruminating on stupidities like this even as our friendly neighbors send heavy projectiles our way.  More on that in a subsequent post.

Israel PTO Launches New Patent Database: Searchable Application Text, but Documents Disappear From Patent Records

Anyone who grew up watching television commercials in the USA in the 1970’s and 1980’s is familiar with the phrase “new and improved”. This was the line used by marketing departments whenever they made a change to an existing product – it’s a “new and improved” detergent formulation, or fried chicken recipe, or plastic sandwich bag.  Of course, from the consumer’s perspective, “new” isn’t necessarily “improved”: the improvement might be that the manufacturer is making more money because the product is now sold in a smaller package for the same price.

The Good

On March 11, the Israel PTO launched its new public patent database.  In one key respect, it is a significant improvement on its predecessor: the text of many applications can now be searched. Previously, search queries were limited to bibliographic data, such as title, filing date, priority dates, related parent/divisional applications, and name of applicant.  The ability to now search application texts is a major step forward, and in this respect puts the database on par with the searchable systems at the USPTO, EPO (viz. Espacenet) and WIPO (Patentscope). 

Moreover, the search results appear to go back to patents issued during the British Mandate. Not all of the older patents have been scanned and are thus visible in the system, and of those that have been scanned, not all have been run through the OCR program used to give searchable text, but many of them are visible and some are searchable.  Additionally, IPC and CPC classification codes are now searchable.

The new system also makes it easy to see the specification, claims and drawings of the application, with shortcuts to display these in a designated area of the screen (but see below about the concomitant problem with this).  It appears that what is displayed in this screen is the as-filed version of each part of the application, rather than the most recent version.  But if you’re looking for the current versions of those documents, fret not: clicking on the appropriate icon opens a new browser tab, which, like the old system, allows users to display and download the file histories.  However, also like the old system, the system groups the application papers by type – “application docs”, “Office Action and applicant responses”, “renewals and cancellations”, “legal proceedings” and “changes in register” – without giving the option of just viewing all the documents as a single, chronologically ordered file. 
And even within a single group, say the “application docs” section, the documents are listed in descending chronological order.  Although there’s a button that supposedly allows the order to be reversed, that button doesn’t seem to work.

The system also provides a variety of ways to filter search results.  For example, choosing to view all applications filed in 2012 yields all Israel applications filed in 2012 and all Israel national phase entries of PCT applications filed in 2012 – 6,335 entries in all.  These can then be filtered by the name of the applicant (with the choices listed in descending order of applicant with most applications to applicant with the least number of applications), names of inventors (where available – inventors need not be listed in Israel), application status, IPC classifications, CPC classifications, and legal proceedings status.  This is an improvement over the old system, which cut off the total results at 200.

There may be other welcome features in the new system, which, if they exist, we’ll presumably discover as we use the system more.

The Bad

So there are some good and valuable improvements in the system, and some of the good features of the old system have been maintained.  Unfortunately, the good seems to be offset by a number of other issues.

First, and most critically, in moving to the new system, the ILPTO seems to have jettisoned some of the documents that should be available for public viewing.  In an application in which we filed third-party observations a few years ago, those filings were visible in the old system, but they are gone from the new one; the only way one looking at the online file would know that third party observations had been submitted would be from an an Office Action which is still online that references our filing. 

Inasmuch as it is the electronic record that is the official record of the application, this disappearance of materials is disconcerting, to put it mildly. Perhaps this specific applications is an outlier.  But it seems not: in most cases in which oppositions were filed that we looked at, we could not find copies of the actual notice of opposition, and in some of the cases where the notice was found, it was mis-labeled. It thus appears that, in at least some cases, data was lost in the migration to the new system.  One hopes the old files were backed up and this can be fixed, not just in this patent application, but in all patent applications in the database, although it is unclear how the affected cases would be identified.

In this connection, it is also noted that the new system does not seem to differentiate between different types of “legal proceedings”, lumping together oppositions, cancellation actions, and reinstatements.  Would if it have been too much to allow searching for just oppositions or just reinstatements?

Another problem is that the search engine is somewhat clunky: after getting results in the “advanced” search mode, one can’t merely click the “back” button on the browser and change the data to search, one must instead clear the data that was already searched and then begin the search again.  So, for example, to look for all the patents from a given year, one first has to choose “filing year” as the search field, then choose “between”, “equal”, “larger than” or “smaller than” for the “choose the way to search” filter, then input the year, then click search.  The results screen then pops up.  But if you then want to search for all patents from a different year, you have to go back to the search screen, click “clear”, and start the process over.  That’s not the case, in say, Patentscope, where you can click the “back” button and then just change the relevant search criteria, or choose new search criteria.

Yet another problem: the user interface gives a maximum number of 200 results, and it only displays up to 25 at a time.  Why?  The old system also cut off search results at 200, and would display up to something like 30 results.  But the USPTO will give thousands of results, displaying them in groups of 50, and Patentscope will likewise give thousands of results, displaying in user-chosen groups of as few as 10 and as many as 200 at a time.  Why did the ILPTO retain this retarded feature from the previous system?

Curiously, if one chooses to view results by filing date, and there are more than 200 results, display in descending order will show the most recent 200 results, whereas display in ascending order will display the earliest 200 results.  Thus it’s possible, for example, to see 400 of the 1952 applications filed by Raytheon: the first 200 that were filed beginning in the 1970’s through 1985, and the most recent 200 which are national phase applications of PCTs filed in 2019 and 2018.  If you want to see the intermediate 1552 applications, you’ll have to filter your search using a date window or some other criterion.  Strangely, the system only lets you choose this filter AFTER looking for applications by applicant: there’s no way to cross “applicant” and “filing year” in the initial search.  And when trying to filter the results of the “applicant” search by filing year, can you just input the years of interest directly? No, you have to choose the years from a list.  Are the choices for year listed in chronological order?  Don’t be silly. They’re listed in descending order of number of applications filed.  However, if in your initial search you look first for applications by filing year, then you CAN add an additional search field to cross that in the initial search with the name of the applicant, and other criteria. 

More strangeness: if you want to look for applications filed within a range of years, you can’t just input those years.  No, you have to pick the start and end years from a sliding scale, that starts in 1913 and ends in… 3016.  No, that’s not a misprint: 3016. 
The inability to directly input years in the range to be searched, and the overshooting of the possible upper end of the range by a mere 1000 years, make choosing the range of years rather difficult – it’s hard to get the slider to range of, say, 20 years.  Yet, when choosing a range of dates, one can enter the dates directly, albeit only by choosing them from a calendar, not by typing the dates into the search field.

Another problem: each entry in the results display takes up a significant amount of room, and the entire right half of the screen is taken up by the space reserved for display of the originally filed application documents. 
It would have been useful if each result took up less space, and the document display portion of the screen only appears after clicking on an individual result.  The present layout forces uses to scroll down through many results instead of presenting them in a way that makes more of them easily visible.

And yet another problem: the system forces users to enter captcha data frequently.  It’s a time-waster and an annoyance.  What’s the matter, the system doesn’t trust its initial determination that I’m not a robot? Are they afraid someone is going to tie up the bandwith scraping data out of the Israel PTO database?

Finally, at the top of the page there’s a legend, “Your opinion matters to us and will help us get better. I want to give my feedback”.
But clicking on the hyperlink doesn’t take you to a page to list problems. It launches a Microsoft Outlook email-window.  That’s a slow process (at least on my computer), and more importantly, I don’t use Outlook, and likely am not the only one who doesn’t use Outlook.  But I guess that’s par for the course for a patent office that insists that all electronic filings be done using Chrome and no other browser.

When consumer goods manufacturers launch their “new and improved” products, they do market research and testing beforehand.  Why didn’t the ILPTO beta test this system before launching?  This system is not ready for prime time, and in launching it the Israel PTO may be in breach of its legal duty by eliminating records that are supposed to be maintained.

You Can’t File That Power Of Attorney Because You Haven’t Filed That Power Of Attorney

One of the things I like about the USPTO’s EFS is that for most types of filings, a practitioner doesn’t need a power of attorney in order to file a document or a response. That’s because the USPTO assumes that the typical practitioner values his license to practice, and won’t jeopardize his livelihood by filing something he’s not authorized to file. This allows one practitioner to take over a file from another practitioner even before the POA is filed. We have availed ourselves of this feature on many occasions, and then subsequently filed the POA, also via EFS in the application of interest.

Not so with the Israel PTO’s new electronic patent filing system. Oh no: if the electronic filing system has a different practitioner or group of practitioners associated with an existing application, then you can’t e-file anything in that application until you’ve recorded a POA with the ILPTO and you’ve been associated with the application. Because, you know, the temptation for patent practitioner malfeasance in a country of 300 million people just pales in comparison to that temptation in a country of seven million people, since patents in the smaller must be worth commensurately…less…

Where it gets humorous is the fact that this barrier to electronic filing by non-associated practioners includes, of course, filing a POA so that you will associated with the application. Try to file a POA so that you’ll be associated with an existing application and the system spit an error message back: “You’re not authorized to file papers in this application because you’re not associated with this application”. In other words, You can’t file that POA because you haven’t yet filed a POA.

What does this mean? Apparently, the ILPTO expects POAs to be filed in paper, and only after the administrative task of registering the POA and updating the electronic filing system accordingly will the new practitioner be able to file electronically in that case. How efficient.

Alternatively, perhaps the ILPTO expects the attorney of record to e-file the new POA that takes him off the case. How awkward.

But come June, things stand to get downright Kafka-esque. As mentioned in an earlier post, in the ILPTO’s zeal to make its own life easier, the regulations that enable electronic filing that it pushed through include the provision that starting June 21, patent practitioners and companies (but not individuals acting pro se) will be required to file electronically. If we’re required to file POAs electronically, but the e-filing system won’t let us, how will it be possible to record a POA?

That’s not just an administrative issue: as presently worded, the rules will effectively preclude patent applicants from engaging the patent counsel of their choice, since the rules don’t allow for a change of representative.

Since it appears that the ILPTO didn’t solicit input from actual patent practitioners before it launched its system, here’s some unsolicited input for an after-launch fix. There are two obvious solutions to the problem. The first solution is to follow the USPTO’s lead and to allow all registered practitioners to e-file in all cases (except for certain actions like express abandonment, where a POA should still be required - but the POA itself should be e-file-able). The second solution, not mutually exclusive to the first one, is to continue to allow for paper filings, not just of POAs, but of all papers, by everyone. To encourage electronic filing, the rules should be amended to allow for a discount in cases of initial electronic filing of applications.

Since the proverbial excrement will hit the proverbial fan fairly soon, the ILPTO will have to deal with this issue quickly. I suspect that it won’t adopt either of the approaches suggested above, and instead will say it waives the no-paper-filing rule, but only for POAs, not for other documents.

Disappearing Document Demons: Israel PTO Removes Document, Changes Online Record

One of the nice things about the “electronic age” is that instead of having voluminous paper files to keep records, you can store all those documents on a drive that’s smaller than your hand.  This observation has not been lost on the USPTO or the ILPTO, which now both maintain official patent file records as a series of 1’s and 0’s on some suitable storage medium.  One problem with such records, however, is the ease with which they can be tampered. 

A common example of such tampering, familiar to many who file electronically at the USPTO, is the re-coding of submissions by the USPTO.  When you file a document via EFS, you have to provide a brief description of that document (or its constituent parts) from among a closed list of choices offered by the USPTO.  After you’ve submitted your document, some faceless, nameless creature reviews your submission, and if they don’t like the way you’ve coded it, they’ll re-code it themselves.  Sometimes this makes sense: if you accidentally indicated that a new set of claims was an information disclosure statement, it makes sense to re-code. But sometimes there seems to be no reason for the re-coding, or the re-coding is just wrong.

This morning, however, I discovered a more serious form of tampering, carried out by the Israel PTO.  Perhaps some other time, I will provide the whole story, but the short version is this: on May 17, we received via email a letter in which the ILPTO said an application of ours had gone abandoned for failure to file a response.  That was wrong: a response had been filed on March 29.  We immediately pointed this out to the ILPTO by phone and in writing, and included in our response to the notice of abandonment (a) a screen shot of the ILPTO’s web site, showing the filing of a response on March 29, and (b) a copy of the response we filed on March 29, downloaded from the ILPTO’s web site, bearing the fax imprint and the “received” stamp of the ILPTO.  Below is a partial screen shot from the ILPTO database taken on May 17.  Note the last entry, erroneously labeled “Application for extension” – this was actually the response to the OA.  

This morning I took a look at the ILPTO’s web site, and the March 29 entry had been removed.  Here’s a partial screen shot of the record as it now appears.  Note no March 29 entry, but the May 17 entry is there:

So the ILPTO effectively expunged the March 29 letter from the record, or at least removed the indexing of that letter: a copy of the March 29 letter actually appears in the pdf of the documents filed on May 17, which as of this morning were still accessible.

Is this just run-of-the-mill slipshod work by the people who maintain the ILPTO database (who regularly mis-code the descriptions of the entries), or is it a deliberate attempt to remove part of the file history?  We don’t know.  Aside from reinforcing the self-evident need maintain your own records, the episode demonstrates the wisdom of documenting the mercurial records of the PTO.

And it also illustrates why the ILPTO's intention to force everyone to file patent applications electronically, instead of allowing for filing in paper, fax, or electronically, is folly.  But that's a future blog entry.

(Readers familiar with Israel patent prosecution will note that the penultimate entry shown above, a March 10 letter from the ILPTO warning of potential abandonment of the application for lack of response, was also sent prematurely.  That's a common problem with the ILPTO but one that is readily remedied.  Also, the May 17 ILPTO letter was not uploaded to the web site prior to its being sent to us, which is probably a good thing considering it was sent in error.)

The New-Look USPTO Site: "New" Isn't Necessarily "Improved"

This morning the USPTO launched a revamped version of its website, www.uspto.gov.  They'd had a beta version up for a month or so, but when I took a look at it I found that fewer than 60 people had actually commented on the new-look site, and the site as launched doesn't appear to have taken into account the comments left on the beta site.  

I haven't done a full exploration of the new site yet, but from the home page it looks like some things will be easier to find.  For example, there's a drop-down "quick links" menu right near the top of the home page that includes links to PAIR, EFS and EPAS and the MPEP, as well as the forms page and the patent/patent application databases.  These are frequently used pages, and it used to take some clicking (or some bookmarking) to get to EPAS, for example, so this new feature is pretty convenient.  The PTO tweaked the PAIR interface a few weeks ago - not to the better, to my taste - but it looks pretty much the same as it always did.  The patent search page is now slightly different, landing you on what used to be the "quick search" page, but you still have the choice of searching by patent number or using the "advanced search" option.  

Most of the older pages I've looked at still have the same look as the old version.  And that's a good thing, because the single most noticeable change for me was the poor - REALLY POOR - choice of colors on the home page, which is now also present on the patent forms page, the how to contact OED page (but not the OED page itself, which curiously links to a different, old-looking how to contact OED page), and many other pages.  They went with a gray/light blue/white color scheme, but light blue or gray letters on white are difficult to see (even if one enlarges the letters):

 

What gets me is that they received negative feedback about the font colors and sizes at least 12 days ago and did nothing about it.

The other thing I've noticed thus far is that the search engine is poor. Really poor. Inexcusably poor, as in "Throw-it-from-the-one-instead-of-handing-it-to-Marshawn-Lynch-what-were-they-thinking?" poor. For example, one of the comments complained about the apparent disappearance of the attorney and agent roster.  So I typed in "attorney roster" in the search box and got back the following:

Huh? I get the same thing when I type in "agent roster". If I type in "Office of Enrollment and Discipline" (which I only type in knowing from the past that the list of practitioners is found there, I'd have been clueless if this was my first time on the site), the OED's page is...the sixth result listed:  

What on earth is the matter with the search engine? Perhaps the fact that it's still a beta site - see the upper right corner of the screen shot above - has something to do with it. But it's still inexcusable. Perhaps some day we'll learn why the USPTO didn't just cut a deal with Google to power its search engine; it shouldn't be hard to do with an ex-Googler (some would say a still-Googler) at the helm.

Subscribers to Carl Oppedahl's usenet lists mentioned a number of other desirable changes to the USPTO's web site, which we may blog about on a different occasion.  In the meantime, this roll-out of the new site, while offering a few nice features, on the whole seems to have hit the ground with a thud. 

What Don’t They Want Us to See? ILPTO Web Site Hides Decisions and Announcements (Despite Press Release Claiming Greater Transparency)

In order to fulfill his duties, which include deciding inter partes disputes concerning patent and trademark applications and registrations (e.g. oppositions and cancellation proceedings), the ILPTO Commissioner has quasi-judicial powers.  Once upon a time, as in back in the days when typewriters were still the standard, various of his quasi-judicial decisions were collected and published every few years.  These days, about once a month the ILPTO posts batches of recent decisions on its website. 

That’s all fine and good as long as the website works, and when I last checked the site a few months ago, one could find a list of decisions and scroll them.  But I found this week that instead of having all the decisions available for scrolling through, with a search engine to help locate decisions of interest, the site now only makes the decisions available through a search engine – there’s no list of decisions to scroll through.  While a search engine is a nice thing to have, the ability to look at a full list is also a good feature.  So why’d they get rid of it? 

But it gets better: the search engine doesn’t work.  The search engine has a “free text” field”, an “area of interest” field which is divided into “expenses”, “designs”, “trademarks”, “patents” and “compensation and royalties” sub-fields; a “type of proceeding” field which is divided into “service inventions and defense inventions”, “revocation and cancellation”, “requests for cancellation”, “requests for revocation”, “competing applications”, “expenses”, “reinstatement”, “opposition”, “ex parte”, “apellations of origin”, and “extension orders” sub-fields; and a “type of decision” field that is divided into “interim” and “principal” sub-fields.  One can also search by date range.   But even though the engine allows searching based on various criteria, none of them return hits, even when search criteria are used that are supposed to provide hits. 

For example, on December 30, 2013, the deputy Commissioner granted a request to restore patent no. 196651 after this patent had lapsed for non-payment of a renewal fee.  The decision was circulated a few days later to the ILPTO’s email list.  But when you search on the “decisions” part of the site for this patent number, the search engine says there are no hits (see screen shot). 

In fact, if a search for decisions during any time during the last seven or so years yields no results (see screen shot).

This change-and-failure is true not only for the ILPTO’s quasi-judicial decisions, but also for various administrative announcements and circular memoranda as well.  Those too used to be posted in list format; now all that’s there is an inoperable search engine.  So if you want to see recent decisions or announcements, tough. 

Is the ILPTO is trying to hide something from the public (and if so, what)? Or did the ILPTO hire the same people who designed the Obamacare site do this “upgrade”? 

Ironically, this sequestering of information from the public comes on the heels of a January 1 press release – which IS visible on the ILPTO’s site – announcing greater transparency in the site itself.  Supposedly, for example, one can now search the patents database on the basis of classification per the latest international classification scheme.  But when we clicked on the “international classification search” tab in the ILPTO database, all we got was an error message: “Not Found  The requested URL /tacsy/ was not found on this server”.  What was posted, on a different site, was what appears to be xml data from old Patents Journals – name of applicant, title of invention, application number, address for service.  Which is nice historical information to have, but of little use when one is looking for ILPTO decisions on a particular topic. 

We're waiting in great anticipation to know how the ILPTO defines opaqueness.

Fawning Over Francis?

As reported in an earlier post, last fall the Israel patent community was left scratching its head as a result of the Commissioner’s about-face regarding Australia.  Specifically, in December 2008 the Commissioner indicated that applicants would no longer be able to piggy-back on an allowance in Australia to obtain allowance of a corresponding patent application in Israel, because the ILPTO’s experience had shown that Australian examinations weren’t reliable.  In September 2009, the Commissioner reversed course and again recognized Australia for this purpose, announcing his decision in a tersely worded statement that provided no reasons for the change of heart.  At the time, some speculated, jokingly, that there had been a pay-off of some sort to the ILPTO, perhaps a junket to Australia.

 

The joke wasn’t far off the mark.  In late September, the WIPO general assembly decided to grant Israel the opportunity to become a PCT International Search and Examination Authority.  The reinstatement of Australia a few weeks earlier was done in anticipation of the WIPO meeting at which this decision was taken: Dr. Meir Noam, the Commissioner of Patents, reasoned that by reinstating Australia, he would curry favor with Francis Gurry, the head of WIPO and an Australian national.  While it’s impossible to know if the ruse worked without asking Mr. Gurry himself, it’s hard to believe that the head of WIPO would condition support for recognition of any particular country as an ISA on how that country regarded the WIPO head’s home country, rather than, say, that country’s competence at prior art searching and analysis.  It’s even more difficult to believe that Mr. Gurry actually pays attention to details of Israel patent practice such as whether or not one can piggy-back on Australia to gain allowance in Israel. 

 

While Dr. Noam has admitted that he was trying to get in Mr. Gurry’s good graces for purposes of having Israel named as a potential ISA, it’s hard not to wonder if, in reversing his position on Australia, Dr. Noam wasn’t also angling for a job at WIPO.  He has been pushing for stronger ties with WIPO, and during his tenure hired an Israeli national from WIPO’s administrative ranks to be an adjudicator at the ILPTO.  In February 2009 the Cabinet decided to limit the terms of high-ranking civil servants across the board, so by last September, it was probably clear to Dr. Noam that he would be out of a job at the end of 2010.  Maybe he was hoping that by placing politics, both ILPTO and personal, above substantive concerns about the quality of patent examination in Australia, Mr. Gurry would be more likely to offer him a job.

 

What is clear is that although during Dr. Noam’s tenure as Commissioner, the ILPTO has made progress on some fronts, in others it still lags behind, and in some ways things have gone precipitously downhill.  On the up side, many new examiners have been hired, and according to the ILPTO, as of April 2010 the backlog in patent examination had dropped in most areas to between about 2-3 years from national phase entry to the beginning of examination.  Similarly, the backlog in judicial decisions (e.g. patent and trademark oppositions; patent, trademark and design cancellation actions; ex parte appeals within the ILPTO) had dropped significantly – although given the fact that Dr. Noam’s predecessor had failed to render a single substantive patent decision in the over four years he was on the job, things couldn’t have gotten any worse in that regard.  And as discussed in a previous post, there is now a publicly-available online database that facilitates checking the status of Israel patent applications. 

 

Nevertheless, not all is rosy.  The quality of OAs remains spotty, with many examiners, even senior ones, still failing to explain how the art they cite applies to which claims.  In the 1990’s Israel was one of the first countries to introduce electronic filing of trademarks – credit Nurit Maoz, who is still head of the trademarks division, for that – but it still isn’t possible to file a patent application electronically in Israel, let alone to view patent file histories online.  Similarly, the quality of the judicial decisions has not always been on the mark.  Witness, for example, Dr. Noam’s decision in IL 100816, a case in which a patent containing 1 independent and five dependent claims was at issue.  After disposing of claim 1 as being obvious over the prior art, Dr. Noam concluded that the remaining claims, by virtue of being dependent from claim 1, were necessarily obvious and thus invalid – without actually analyzing the additional recitations in those dependent claims to see if they distinguished over the prior art.

 

Of greater concern is the observation that Dr. Noam has become increasingly authoritarian in his approach to the running of the ILPTO.  While it was traditional for Commissioner to circulate letters from time to time clarifying ILPTO policies, Dr. Noam has issued more such circulars, over 80, than any of his predecessors.  (One PTO employee I spoke with said that they no longer keep up with all the circulars because there are simply too many.)  In several cases, these circulars were so unclear that they necessitated subsequent letters of clarification – in some cases several such clarification letters. 

 

Furthermore, whereas in the past those circulars were issued with respect to questions that had arisen regarding interpretation of the Patent statute and regulations, or policies adopted for administrative convenience, Dr. Noam has in some cases tried to impose new policies that are substantive policy-making and thus properly the province the Knesset (the legislature), not a civil servant.  Placing limitations on the filings of divisionals-of-divisionals is one example.  Another, on tap for the beginning of July, is a requirement, newly imposed by the Commissioner without legal basis therefor, that applicants provide copies of OAs from corresponding applications in foreign jurisdictions and their responses to the points raised in those foreign OAs – even if the claims pending in Israel are different or the applicant has not yet filed a response to the original OA.  (American readers: echoes of the Dudas administration?)

 

Nor has the Commissioner made his administration a model of transparency.  The decision to reinstate Australia was done without explanation, as was the decision to attempt to require applicants to do the ILPTO’s work by imposing draconian reporting requirements.  (Curiously, earlier this month, in yet another circular, the Commissioner announced that in the future he would disseminate draft circulars and solicit comments before issuing new circulars.  Yet later in the same week, he issued more circulars without going through such a process; and to date, no draft circulars have been disseminated.)  Until March of this year, the ILPTO’s web site contained telephone listings of all examiners and many other ILPTO personnel; that list is now gone, replaced with a much more truncated list that doesn’t include examiner telephone numbers.  (Here is a copy of the list of ILPTO personnel from March 2009, organized by department.) In addition, in some cases information is sent via email, without being posted on the ILPTO’s web site.  And the web site itself doesn’t contain, for example, copies of all ILPTO judicial decisions.  

 

Given some of his more recent actions, there will probably be many in the Israel patent community who will not mourn Dr. Noam’s exit as Commissioner.  As for his relationship with WIPO, we will have to wait and see if Dr. Noam ultimately lands a WIPO sinecure, and if he does secure such a post, we may never know if he actively pursued it.  One interesting tidbit, though: Mr. Gurry is in Israel this week, and a letter from the Association of Patent Attorneys in Israel (APAI) to its members stated that Dr. Noam urged that there be a “massive” turnout of patent practitioners at a reception for Mr. Gurry to be held tomorrow in Tel-Aviv.  So that we can show our collective obsequiousness?