America-Israel Patent Law

On National Security Review, The ILPTO Has The USPTO Beat

There’s a thread today on Carl Oppedahl’s EFS listserv about the processing of new US patent applications being delayed while a national security review takes place. Many people may not realize it, but every US patent application is reviewed to see if its publication, and dissemination outside the US, should be forbidden on national security grounds. The overwhelming majority of applications, of course, aren’t flagged; this is reflected in the filing receipt issued by the USPTO, which says, “Foreign filing license granted.”

Such review makes sense for applications originating in the USA. What has been pointed out in the discussion in the listserv is that this review is also conducted for applications that originate outside the US and then enter the national phase of PCT. Such applications, if filed at the 30 month deadline (as nearly 100% of them are), have already been published by WIPO 18 months after the priority date, i.e. a full year before national phase entry is effected in the USA. In such circumstances, what’s the point of reviewing such cases? Conducting such review in such cases is a complete and total waste of time and money.  Moreover, what's the point in telling the owner of a foreign-originated application that it's ok for him to file outside the USA?

Carl posited that the USPTO conducts such review because someone at the USPTO said, “All cases will undergo review” and that no one in the USPTO wants to say that the emperor has no clothes, because (a) the USPTO itself republishes those national phase applications after filing, (b) in many instances, this will be the first English-language publication of a previously-published PCT application, and (c) no employee wants to be the guinea pig for the “it already published in a foreign language” defense if a foreign-originating application is published by the USPTO and some nitwit at DOD says, “You shouldn’t have published that”.

It appears that on this score, the ILPTO has the USPTO beat by a mile (1.61 km for you metric speakers). The ILPTO also reviews applications for national security issues, but it only reviews locally-originating applications, over which it has jurisdiction. Moreover, not only does the ILPTO not waste time reviewing national phase PCT applications, but it usually makes those applications publicly available within about two months of filing. Contrast this to the USPTO, which takes at least 18 months from national phase entry, and sometimes longer, to publish national phase applications.

Perhaps we shouldn’t be surprised by the USPTO’s wasteful behavior. This is the same country whose defense department gave us the $37 screw and the $640 plastic toilet seat (those are 1980’s numbers). Charging patent applicants for worker time to unnecessarily review already-public documents to see if they should be subject to a secrecy order just seems to be business as usual.

Israel PTO Now a PCT Search and Examination Authority For US PCT Filers

The notice below, announcing that as of today the Israel PTO will be available (on a limited basis - nor more than 75 applications per quarter) as an International Search Authority (ISA) and International Preliminary Examination Authority (IPEA) for US-based PCT filers, presently appears here on the USPTO web site; it was apparently posted on September 16, 2014, as that's the day on which Harry Kim of the USPTO sent a notice around to an email subscriber list. 

I think that on the whole, this is welcome news for US-based filers, as it presents them with a cheaper alternative (presently $1021) to the expensive-but-largely-worthless USPTO-as-a-PCT-search-authority-which-is-really-farmed-out option.  There's a PPH program in place between the US and Israel, so a favorable ISR from Israel can be used to jump-start examination in the US.  And since, unlike the EPO, which gives credit to PCT searches conducted at the EPO, the USPTO doesn't honor its own searches, and the savings incurred by searching in Israel are greater than the premium one pays upon national phase entry in the US for having the search done elsewhere, it may in some cases make sense to have the search done in Israel.  In addition, since it's actual examiners rather than outside contractors who do the searches, if you're willing to pay an Israel practitioner to do so, you can probably arrange a meeting with the examiner who conducted the search, if you think the ISR misses a point or want to clarify something during IPE before the IPRP issues.

Curiously, until today I wasn't able to find a corresponding notice on the ILPTO's site.  Usually the ILPTO trumpets these sorts of announcements pretty loudly.  On the other hand, since the searches are intended for US-based filers, there wasn't much point in announcing this beforehand to an Israeli audience. The present IL announcement, posted today, appears here in Hebrew and here in English, and while the content is largely the same as that of the USPTO announcement above, the ILPTO announcement includes the requisite "See, they really think we're good!" self-congratulatory line.  Memo to the ILPTO: when it comes to search and examination quality, the USPTO ain't the standard to aspire to.  Despite my many digs here at the ILPTO administration, I actually think that the ILPTO has the potential to be a better examining office than the USPTO. 

Why It Still Makes Sense for Israelis to First File Their Patent Applications as a US Provisional (and Not at the Israel PTO)

Suppose you’re an Israeli company with a newly-drafted patent application.  You think it’s got an enabling disclosure and clear claims, and it’s not something likely to get flagged as defense-related (which would preclude foreign filing).  Where should you file first?

Before the enactment of the AIA, the answer was a no brainer: you file first in the USA, to take advantage of 35 U.S.C. §102(e) during US domestic prosecution.  And if getting a quick allowance isn’t critical, you file your application as a provisional rather than a non-provisional, because:

1. It’s cheap - $130 filing fee for a small entity, versus over $500 to file in Israel (over $300 if you qualify as a small entity under Israel law, but the cost of proving small entity status eats into the savings).  In fact, you don't even need to pay the fee to get a filing date for your provisional application - for small surcharge you can pay the fee later.  So if you decide not to proceed with the application, you can just not pay the fee.
2. You get an extra year of patent protection, since the one year that the provisional is alive doesn’t count against the 20-year patent term.  True, if you file first in Israel you can re-file the within a year and claim priority from your original Israel filing, but most people don’t do that; and you still wind up paying more than you need to in order to gain the year, see (a) above.
3. You can file electronically, something you still can’t do in Israel, and if you’re a registered filer you can see your filing on PAIR almost instantly, something you can’t do in Israel either.
4. When you go to file your PCT application at the end of the priority year, if you file at the International Bureau, WIPO can electronically pick up the priority document, thus precluding the need for you to provide a certified copy yourself.  In contrast, if you file first at the Israel PTO, you’ll need to order a certified copy of the priority application and provide that to the PCT Receiving Office when the time comes – even if that PCT RO is the Israel PTO itself.  
5. Filing first in Israel precludes the filing of a non-publication request when you eventually file in the USA. 

(Amazingly, these advantages were lost on some local practitioners, who wrote about the benefits of filing first in Israel.)

Post-AIA, with the elimination of §102(e), the first advantage is gone: now under US law, a first filing in any Paris Convention country is equally good for purposes of US prosecution.  But I still think that in most cases, it makes sense for Israeli entities to make their first filing a US provisional application, because reasons 1-5 above still apply. 

All this assumes, of course, that you file yourself, or with a licensed US practitioner who charges a reasonable fee for this (like yours truly).  If you file through a US-based firm that takes $1500 just to file the provisional – and apparently there are such firms – then you’re getting taken to the cleaner’s.

ILPTO Leaves Practitioners Scratching Heads Over Its Requirement To Provide It With Documents It Already Possesses

Last week the Israel PTO published two more “Commissioner’s circulars” (חוזרי רשם in Hebrew) to add to the burgeoning number of such expressions of ILPTO policy.  A jar of Jelly Bellies to anyone who can indicate off the top of their head a complete list of circulars that are currently in force.  An extra box of spicy cinnamon jelly beans if you can also tell us which “Commissioner’s notices” (הודעות רשם) are still relevant.

One of the new circulars deals with cases in which an Israel patent application serves as a priority document for another Israel application. 

A preliminary note: early in his tenure, the present Commissioner published a “circular on circulars”, in which he said that he would publish drafts of new circulars and allow a comment period (usually two weeks) before finalizing them.  He didn’t do that for either of the two new circulars, but that’s nothing new, as many (or most? I haven’t counted) circulars published by the PTO since that time have not been subject to comment beforehand.  In the present case, aside from exposing the ILPTO’s hypocrisy in talking a good game about “transparency” but clearly having no idea what the word means, comments beforehand would have spared the ILPTO some embarrassment.  To wit:

Since around 1995, the Israel patent statute has allowed an applicant to claim Paris Convention priority from an earlier Israel patent application.  Prior to that, priority could only be claimed from a non-Israel application, a rule which in effect penalized Israeli applicants with one year less patent term than foreign entities.  Nowadays, the most common situation in which priority to an earlier Israel application is claimed is in the filing of a PCT application: a first application is filed in Israel, a PCT is filed claiming priority from the Israel application, and then a national phase application is filed in Israel.  In such situations, a certified copy of the priority application must be submitted to the Receiving Office, so there’s no need to file a copy of the priority application with the ILPTO upon national phase entry.  Of course, if the ILPTO is the Receiving Office, the applicant can just indicate on the PCT Request form that the RO should provide a copy of the priority application, and the RO/IL will comply.

Less common is the situation in which a follow-on application is filed directly in Israel at the end of the priority year.  The new circular sensibly explains that in such a case, there is no need to provide the ILPTO with a certified copy of the priority document.  Well, no need, unless the priority application was abandoned before it was laid open to the public 18 months after filing per section 16A of the statute. If the priority application was abandoned before being made public, the new circular says that the applicant needs to provide the ILPTO with a certified copy of the priority document. 

Yes, you read that right: the applicant must provide the ILPTO with the priority document that the ILPTO already has in its possession.

What a model of efficiency!  Israeli applicants can now order certified, paper copies of their priority documents, which the ILPTO will mail to the applicants, which the applicants can then send back to the ILPTO when filing a follow-on application.  Because, you know, it would be too much trouble for the ILPTO to give itself a copy of the priority document.

Keeping in mind that the concept of electronic patent filing remains a foreign one to the ILPTO, the guess here is that the ILPTO doesn’t scan the paper copies of patent applications until close to the 18-month publication date, so that if an application is abandoned before that time, there is no electronic copy of the application available.  But I could be wrong about that.

The way the new circular is worded, one can envision several absurd situations arising.  For example, if Israel application B is filed within one year of Israel application A, with a priority claim to A, and then A is abandoned after the filing of B but before the 18-month publication date, then apparently the applicant will have to file a paper copy of application A in the file of application B.  Why the necessity to file papers in B should be contingent on actions that happen in A, a separate case, after B has already been filed, isn’t immediately clear to this writer or to anyone with whom he has spoken, and the rationale isn’t explained in the circular.  If, however, B was a PCT application, then abandoned/pending status of A wouldn’t matter: one could file A in Israel, abandon then next day, then 11 months later file a PCT at the RO/IL claiming priority from Israel application A, and, as noted above, instruct the ILPTO to provide the IB with a copy of the priority document. 

By comparison, while the USPTO is far from perfect in its handling of applications, this particular case is another example where the ILPTO would have done well to see how the USPTO does things.  One of the nice things about making one’s first filing a US provisional application is that you don’t need to provide the USPTO with a copy of the priority application when subsequently filing a US non-provisional application that claims the benefit of the provisional – you just indicate on the Application Data Sheet that the new application claims the benefit of the provisional.  And when filing a PCT application that claims priority from the provisional, it’s easy to tell the US Receiving Office to provide a copy of the priority provisional to WIPO, or to tell the USPTO allow WIPO to obtain a copy of the priority provisional.

I haven’t looked at the numbers, but I suspect that this particular circular will affect a relatively small number of applications.  Which makes one wonder why the Commissioner bothered to publish it in the first place, given the maxim “Better to be thought of a fool than to open one’s mouth and remove all doubt”.  Perhaps someday the Commissioner will solicit input from people who have actually prepared and filed patent applications before publishing his missives.  As his “circular on circulars” asserts is his policy.

More Monty Python at the Israel Patent Office (or is it Mel Brooks?)

Israel has three different procedures for expediting the examination of patent applications. 

One of these procedures, section 17(c) of the statute, concerns substantive examination of the application.  Under 17(c), the Commissioner from time to time publishes a list of recognized patent-granting jurisdictions.  The grant of a corresponding patent in one of these recognized jurisdictions can then be used as basis for allowance of the Israel application (fulfilment of the requirements for unity of invention, novelty, inventive step, sufficiency of description, and basis for and clarity of the claims), if the Israel claims are amended to be substantially identical to the foreign claims and the Israel application shares priority with the foreign patent.   This procedure is only useful once substantive examination of an application has begun; the fact that a corresponding foreign patent has been granted can’t be used to induce the ILPTO to actually examine the application.

The upshot of 17(c) practice is that it frees up examiners to spend their time examining other cases, without duplicating the efforts of examiners in other countries.

In this context, it’s worth mentioning that during his tenure from 2003 through 2010, the previous Commissioner expanded 17(c) practice in two ways.  First, rather than making applicants wait for the ministerial act of the granting of the foreign patent, he deemed a notice of allowance sufficient to invoke 17(c).  Second, he stated that a positive PCT examination report could be used to establish the novelty, inventive step and unity of invention of the claims of an Israel national phase application (or an Israel application which was later filed as the PCT that received the positive examination report).   In this way, he further reduced the ILPTO’s workload.

The other two procedures are not directed to substantive examination but to the order of examination, and enable an applicant to have its application moved to the front of the examination queue.   The first of these is the patent prosecution highway.  Israel has bilateral PPH agreements with the USA, Denmark, Japan, Finland and Canada, and PPH-PCT agreements with all these countries except Denmark.  (And I noted yesterday, in a display of multiple personality disorder it also has a PPH-PCT agreement with itself.  Really, I can’t make this stuff up.)  Per the PPH, an applicant can ask to have his application examined out of turn based on a positive PCT WOISA or IPRP from a country with which Israel has a PCT-PPH agreement.

The second procedure for getting one’s application moved to the front of the line is similar to the old “petition to make special” practice in the USA: you ask the ILPTO to move your application to the front of the line.  Historically this was set out in Rule 35, which stated that an applicant could ask that his patent application be examined immediately on the basis of “reasonable grounds”; these were typically the advanced age of the inventor, imminent launch of a product to be protected by the patent, or concern about possible infringement. 

In July 2012 a new statutory section, 19A, was introduced, in which subsection (a) codified, clarified and replaced the prior Rule 35 practice.  Section 19A(a) provides six different reasons one can give for advancing the examination of one’s patent application, but it is the second one listed that is of interest here: “A notice of the Commissioner regarding the possibility of advancing the examination on the basis of examination of a corresponding application under the conditions and in the countries indicated by the Commissioner”.[1]

To date, the Commissioner hasn’t published a list of countries under 19A(a)(2).  However, in a notice published at the beginning of October, the Commissioner said that a PCT-PPH request would be viewed as a request under 19A(a)(2) to begin the examination of a national phase application in Israel.  It’s not clear why the need was felt to explicitly tie PCT-PPH to the new statutory provision.  The Commissioner could have let things stand as they were. 

But at least the October announcement does no harm to the PCT-PPH program.  Where the October announcement took a bizarre turn was when it concluded with the statement that the Commissioner was rescinding the policy of allowing partial substantive examination on the basis of a positive PCT work product, which was published in circular MN 71 of the previous Commissioner.  That’s a non-sequitur: PCT-PPH and 19A(a) concern the order of examination, not substantive examination – a fact the Commissioner himself pointed out in the October announcement!  Why rescind the existing policy regarding partial substantive examination, and force examiners to do examination work concerning industrial applicability, novelty, inventive step and unity of invention, when someone in another respected patent office has already done so?  Unfortunately, no reason was given for this change in policy, which seems to be a case of shooting oneself in the foot. 

If the Commissioner was already going to make an announcement, he could have taken the opportunity to publish a comprehensive list of countries that can be used to invoke the 19A(a) procedure, and on that list he could have included the ISAs of the countries with which Israel has PCT-PPH agreements.  Or even more easily: he could have just said that any country already recognized for purposes of 17(c) substantive examination (including its PCT ISA or IPEA, if it has one) will henceforth also be recognized for purposes of 19A(a).  Which would allow applicants with patents granted in certain other countries to quickly gain allowance of their applications here, and get more pending applications out of the examination queue more quickly.

I’m not sure if the rescinding of the is more reminiscent of the Monty Python sketch in which Graham Chapman wrestles himself and wins in a knock-out, or of Cleavon Little kidnapping himself in Blazing Saddles.   It’s certainly a step in the wrong direction.

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[1]  The other five grounds for advancing the case out of turn are (1) the advanced aged or poor health of the inventor; (3) knowledge or a well-founded suspicion of infringement of a claim of the application; (4) unreasonable delay in the commencement of examination of the application (which may be determined inter alia by comparison to the time from filing to first office action for applications in the same class); (5) the public interest; and (6) special reasons justifying such examination out of turn.

Israel PTO Jabberwocky

Earlier this year the Israel PTO announced that it would be inaugurating a new PCT patent prosecution highway (PCT-PPH) program.

With itself.

Seriously.

Henceforth, if one of the claims of your PCT application is searched by the ISA/IL or examined by the IPEA/IL and found to be novel and have inventive step, you can have the examination of your national phase application expedited.

What a ground-breaking, non-obvious policy decision: the ILPTO will recognize its own work product, at least for accelerating the examination of national phase applications. Oh frabjous day! Callooh! Callay!

Considering that at the moment, only Israeli nationals can use the ILPTO as an ISA or IPEA, it’s a mystery why this needed to be announced as a PPH initiative, rather than in the context of (yet another) Commissioner’s circular.

This new policy initiative might be really impressive had the Commissioner not subsequently announced that the ILPTO won’t recognize its own (or anyone else’s) PCT examination work for substantive examination purposes. But that’s going to be the topic of another blog post.    

21st-Century Technology, 19th-Century Patent Office – A Follow-Up

The previous post here discussed the absurd situation that prevails at the ILPTO, under which one can pay ILPTO fees online but must still send the ILPTO a physical copy of the receipt of payment.  Hitherto the situation regarding PCT fees for applications filed at the RO/IL was no less absurd, as until now these could only be paid in person at the Postal Bank, and a copy of the paper receipt then had to be sent to the RO/IL.   

Today the ILPTO provided some encouraging news for filers who file at the RO/IL, as it announced via its email list (no online notice so far) that beginning July 28, it will be possible to pay PCT fees online for the RO/IL or ISA/IL, as well for the IB, ISA/US and ISA/EP, via the ILPTO’s online payment system.  Moreover, the fees for the RO/IL or ISA/IL will be recorded directly in the ILPTO’s PCT department – no need to provide paper copies of the receipts.  (For those who are nostalgic for the old system, it will still be possible to in person at the Postal Band.)

While this is a most welcome development, there’s still room for improvement.  On the PCT side, many practitioners still prefer to file at the IB or the USPTO, as one can see what has been filed almost immediately through ePCT or PAIR, a feature that the IL/RO does not yet provide.  And the fact that the ILPTO is capable of noting online payments as soon as they are made in PCT international phase applications only reinforces the question, why is it still necessary to file paper receipts confirming online payment of fees in non-PCT cases?

Gotta Love Those Multilateral Treaties

So a news item last week in the patent world was that Saudi Arabia has now joined the Patent Cooperation Treaty (or in the formal language of the PCT, it has now become a PCT contracting state).  Amazingly, the ILPTO saw fit to send out its own email announcement about this and to post an item about this on its website.  I say “amazingly” because we all know that there will probably be a Jewish Pope before the Saudis allow national phase entry of an Israeli applicant’s PCT application, so it’s hard to fathom why the ILPTO is excited about the Saudi PCT accession.  Don’t believe me?  Check out this news story about the kingdom’s blocking access to The Jerusalem Post’s website.  Bottom line: Israeli entities that need to file in Saudi Arabia or other countries that are hostile to Israel (but are willing to adopt Israeli technology) will continue to need to play the part of Clark Kent for their patent application filings.

Israel-USA Patent Prosecution Highway (PPH) Program Expanded to Include PCT Patentability Opinions

Israel and the USA have had a bilateral patent prosecution highway (PPH) agreement in place since July 1, 2011; on June 28 of this year it was announced that this program would become permanent.  This agreement enables someone who filed first in the USA and who has at least one claim allowed in the USA to have his corresponding Israel application jump to the front of the examination queue on the basis of the US allowance, provided the claims pending in Israel correspond (or are amended to correspond) to the claims allowed in the USA.  The reverse is also true for applications first filed in Israel and subsequently filed in the USA, if at least one claim in the Israel application is found allowable.  See here for more details.  

As reported today on the PatentDocs blog, earlier this month the USPTO announced that the PPH program with Israel was being extended to include the results of PCT search and examination: a favorable Written Opinion or International Preliminary Report on Patentability issued by the USPTO or the ILPTO, indicating that at least one claim is novel, has inventive step and industrial applicability can in certain circumstances be used as a basis for expediting the examination of the corresponding case in the other country.

As noted in an earlier post, the expansion of the PPH program to include PCT work product was a desireable goal, so the announcement of the expansion of the program is a welcome one, and the ILPTO leadership is to be applauded for its work.  Now that the ILPTO is a PCT Search Authority - one that at present only conducts searches for Israeli applicants, and therefore is expected to issue its search reports in a timely manner - and PCT searches in Israel presently cost about half of what they cost at the USPTO, Israeli PCT applicants for whom the grant of a US patent is important (in other words, nearly all of them) will now to need to seriously consider choosing the Israel ISA.  

[Corrected] Curiously, there wasn't an announcement of the PCT-PPH program with the USA on the front page of the ILPTO's web site or via its email distribution list, even though the ILPTO is usually quick to inform the public of agreements like this, but an announcement about the PCT-PPH program was buried on the PPH page itself (see below for a screen shot of that page taken today).  Moreover, the form for requesting PPH treatment has been revised to allow for PPH requests based on the results of PCT search and examination.

Israel PTO Issues Notice Concerning Implementation of Amendments to Statute

Following the adoption of significant amendments to the Israel patent statute on July 9 and their coming into force (mostly) on July 12, on July 25 the Israel PTO published a notice concerning the implementation of the amendments.  Among other things, the ILPTO plans to make new file histories available online about once a month, coincident with the monthly online publication of the Patents Journal (the equivalent of the USPTO Gazette), as soon as possible after 18 months from an application’s earliest priority date have passed.  File histories of already-filed applications will also be made available in this manner, although no more than 4500 old applications will be made available per Journal publication. 

The plan is for the ILPTO to notify applicants or their legal representatives that the file history will be made public one month prior to this occurrence; if applicants do not wish for this to happen, they will have a week from notification to inform the ILPTO that the application has been abandoned, in which case the file will not be opened to the public.  Realizing that one week to respond is short notice, the ILPTO has indicated that applicants may be informed of impending publication by e-mail and may respond to such notices by email.  On the one hand, this represents a step forward for the ILPTO, which still is not set up for electronic filing of patent applications (more on this below); on the other hand, there was no notice or comment period for this new procedure, which undermines statements by the ILPTO that it wants its procedures to be transparent.

Interestingly, and commendably, the notice indicated that the ILPTO has adopted the suggestion made in the previous post on this blog, namely that the ILPTO will not open the files of PCT applications that enter the national phase until those applications have been published by WIPO, i.e. until 18 months from the earliest priority date have passed.  (According to the amended statutory wording, the opening of the files in such cases should occur within 45 days of national phase entry, irrespective of the earliest priority date, so that early-entry national phase applications would be made public before 18 months had passed.)

The notice also indicates that, exercising powers conferred on the Registrar by the amended statute, patent applicants filing in Israel will be required to submit a copy of the application on CD-ROM or DVD; the CD or DVD will have to contain separate files for the specification, claims, drawings and sequence listings.  Given that the notice shows that the ILPTO now understands that notices of abandonment can be filed electronically, why does it insist on requiring physical copies of patent applications to be delivered to the ILPTO?  The practice is prejudicial to applicants and practitioners who live or work far from Jerusalem, since they need to send their applications for filing several hours before Jerusalemites do; it’s environmentally unfriendly because it requires delivery by automobile or motorbike; and it aids countries that aren’t friendly toward Israel that supply the gasoline that powers those vehicles.  Why not just let people email in their applications, or set up a designated electronic filing portal? 

Electronic Filing Of PCT Applications at the Israel Receiving Office

Yesterday, the Israel PTO circulated a notice via its email list stating that beginning July 1, 2012 it would accept full electronic filing of PCT applications in its capacity as a PCT Receiving Office (RO).  The ILPTO’s announcement last year that it would accept partial electronic PCT filing, by way of filing on a CD-ROM, was met with a lukewarm reception, but the implementation of full electronic filing is a most welcome development.  Coupled with the fact that since last week, filers at the IL/RO have been able to choose to have their PCT searches conducted by the ILPTO, at a cost of about $1000 (as opposed the approximately $2000 for a search at the USPTO or $2400 at the EPO), this makes filing at the IL/RO a more attractive option. 

Presumably, electronic filing will be an option even at times when the ILPTO itself is closed.  Thus the availability of electronic filing may herald the end of the occasional practice of filing PCT applications after the end of the priority year on the first day the ILPTO is open thereafter, even though under PCT rules filing under such circumstances would appear to continue to be permissible without loss of priority rights.  Then again, electronic filing at WIPO has been available for some time, but post-priority year filings at the IL/RO when the office re-opens after Succot and Pesach have continued, so maybe the new option in Israel won’t matter in this regard.

No word yet on when electronic filing of Israel patent applications will become a reality, but hopefully this announcement is a harbinger of a similar announcement concerning local filings.  After all, it’s pretty silly that on July 1 an applicant will be able to file a PCT at the ILPTO electronically, but if that same applicant wants to enter the national phase in Israel on July 2 he’ll have to do so by providing the ILPTO with a paper copy of the application that’s already in the ILPTO’s possession.

 

Israel PTO To Be PCT Search and Examination Authority as of June 2012

This morning the Israel PTO (officially the Israel Patents, Design and Trademarks Authority) released an announcement by email that as of June 2012, it will offer services as a PCT search and examination authority.  (As of this writing, the announcement does not appear on the ILPTO's website, but presumably it will be posted there soon.  UPDATE: on April 5 this link to the announcement appeared on the ILPTO's site; no English version seems to have been prepared.)  This follows the announcement in September 2009 that Israel had been selected, along with Egypt, as a candidate to become such an authority - although, as today's announcement notes, it is unknown when (if ever) Egypt might actually become a PCT search authority; one suspects that this isn't the Muslim Brotherhood's highest priority.  (The announcement also took a dig at India, noting that India has had the opportunity since 2007 to become a PCT search authority but still hasn't become one.  Score one for the little guys.)  

The fees for PCT searches and examinations at the ILPTO are not mentioned in the announcement, but that doesn't stop the announcement from stating that initially the search fee for Israeli PCT applicants will be reduced.  Presumably even without the reduction for local applicants, the fees will be less than the search fees at the EPO or the USPTO, the two ISAs that PCT filers at the Israel Receiving Office must presently use.  Also, although the announcement does not explictly say so, in other contexts the powers-that-be at the ILPTO have made it clear that initially these services will be available only to filers using the Israel RO.

Comments: First, congratulations are in order.  The administration at the ILPTO is proud, and rightly so, that it has achieved PCT ISA status in just over two-and-half years from the initial announcement, which is about the time initially predicted; rarely are projects of this sort in Israel executed in a timely fashion.  Nevertheless, there are at least two mildly concerning aspects to today's announcement.  

The first is the statement of the Commissioner in the announcement that "The operation of the [search] service will obligate Patents Authority to upgrade its work practices in all fields and to adapt them to the highest standards in everything related to the search and examination of patents, both with regard to international applications and Israel applications."  One can't disagree with that sentiment, and there are certainly examiners in Israel who already work at that level, but there are many who aren't there yet, and one would have hoped that the upgrade in standards would have occurred BEFORE going online as a PCT search authority, as a predicate thereto rather than as a consequence thereof - especially since there's no guarantee that search quality and reporting will improve as a result of this change in status.  On the other hand, there are many Israeli applicants for whom the quality of the PCT search is not of great importance, and who will welcome the option for a lower-cost alternative to the search fees charged by the EPO (which are generally a worthwhile investment) or the USPTO (which often are not), an option that hitherto has not been available to them.

The second issue is that the announcement is silent as to whether or not filers using the Israel RO will now be precluded from using the EPO or USPTO as a search authority.  For applicants for whom the search is important, such as applicants who value patent protection in those jurisdictions and who are willing to pay high search fees now in exchange for reduced search fees upon national phase entry, it would be a pity to lose the opportunity to have the PCT search conducted at these patent offices.