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Why Not Use Global Dossier To Comply With Israel Prior Art Disclosure Requirements?

Someone I met at the recent AIPLA meeting (the same person I mentioned in my previous post, who serves as in-house patent counsel for a company with a tight budget) complained about the duty of disclosure requirements for patent applicants in Israel, particularly in light of the advent of the Global Dossier program.

For the uninitiated, Global Dossier is a program in which several of the world’s large patent offices (colloquially known as the IP5) participate: USPTO, EPO, JPO, SIPO, and KIPO. It’s available for free and allows users to easily access documents from patent application files in these countries, usually including English translations of non-English documents issued by those offices.  Both WIPO’s Patentscope and the EPO’s Espacenet enable users to see patent examination files via Global Dossier.

One example of the usefulness of Global Dossier is a way in which the Israel PTO already utilizes it. When making a request to expedite prosecution under the Patent Prosecution Highway (under which an application will jump the queue if the claims pending in Israel are amended to correspond to claims allowed by a foreign patent office with which the Israel PTO has a PPH agreement), an applicant can provide a copy of the necessary documents, or, if those documents are available via GD, instruct the Israel PTO to obtain the documents via GD.  In a recent PPH request I filed in which I told the Israel PTO to obtain the document via GD, the PPH request was granted the next day.

This takes us back to my interlocutor’s question/complaint: given the availability of GD, and the disclosure requirements in other countries, why can’t the Israel PTO simply make use of GD and rely on the searches and applicant disclosures in IP5 countries, instead of requiring applicants themselves to submit the information and documents? It’s a legitimate query, especially in light of the facts that (a) based on Israel PTO office actions, it seems that examiners already make use of GD, and (b) the disclosure requirements in the USA are similarly stringent to those in Israel, and thus could probably safely be relied upon.  

The unhelpful answer to the question is, Applicants have to jump through hoops because the statute in Israel (still) requires that applicants provide these disclosures. §18(a)(1) and §18(a)(2) of the statute say that, in assessing the allowability of claims of the patent application, the examiner may rely on publications cited against foreign patent applications for the same invention or known to the applicant to be relevant to patentability. §18(b)(1) says that the examiner will require the applicant to furnish the documents mentioned in §18(a)(1) and §18(a)(2). And §18A imposes an obligation on applicants to update the Office regarding the lists in §18(a)(1) and §18(a)(2) up until the time of acceptance of the patent application.  So at present, there’s not really a way around the statutory language that was written in pre-GD times.

Except, of course, that a lot of what is required is dependent on the Israel PTO, and it sometimes relaxes the requirements, at no detriment to the applicant or the public. The most obvious case in point is that the statute says that applicants must provide copies of documents relied upon by foreign patent offices, but in practice the Israel PTO has for a good number of years said that applicants only need to provide copies of such documents that are not patent documents (like journal articles), as ILPTO can themselves easily access patent publications. This relaxation of the requirement doesn’t meet the letter of the law; but I have not yet heard of a situation in which an opposition to the grant of a patent, or a challenge to the validity of a patent, was upheld on the grounds that the applicant merely provided the ILPTO with the number of a cited patent publication and not with an actual copy of the cited patent publication. 

So in the present case, the ILPTO could say something like, “With regard to disclosures under §18(a)(1) and §18(a)(2), we will consider the applicant’s duty to be fulfilled if the applicant refers the Office to the documents cited by, or provided by the applicant to, IP5 offices, which are available via Global Dossier.”  Inasmuch as this would reduce costs for patent applicants in Israel, it would make filing in Israel a more attractive proposition for some applicants. The onus would still be on the applicant to make sure that its IP5 prior art disclosures were up to date, and there would be the risk that something relevant wasn’t reported to the ILPTO, and thus could serve as grounds for a challenge to the grant or validity of a patent. But the overall workload for the applicant would be lessened. And if indeed the examiners already use GD, there would be no loss of information provided to the ILPTO either.

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