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.
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.
On October 31, it was announced that the Israel PTO and the Canadian Intellectual Property Office (CIPO) had entered into a pilot PPH program. That's probably not so relevant for Canadian applicants filing in Israel: for years applicants have been able to gain allowance of their Israeli applications on the basis of the allowance of a corresponding case in Canada, in accordance with Section 17(c) of the Israel patents statute. While that's not quite the same as having an application jump to the front of the line, which is what the PPH does, it's almost as good, since a 17(c) request can reduce the period of substantive examination in Isarel to almost nothing.
For Israelis filing in Canada, though, the PPH procedure may be worthwhile. If your first filing worldwide is in Israel, the ILPTO will examine your application quickly, so you can get your case allowed early; and since you can delay national phase entry in Canada to 42 months, it's entirely conceivable that an Israeli applicant could file in Canada with the corresponding Israel patent application having been allowed.
What I found intriguing was that I only learned of this pilot PPH program via a Canadian associate. It seems that this news was posted clearly on the front page of CIPO's website on October 31 (see snapshot taken today).
The ILPTO's website, on the other hand, doesn't even list the new PPH program under its "news" headings: the most recent item on the "news" banner on the front page is from October 28 and concerns changes in US patent law:
When one clicks on the "news" tab on the front page, a list having a most recent entry of October 17 is what appears.
Playing with the search engine on the website, I eventually found this announcement regarding the new pilot PPH program.
It's nice to know that the Canadians appreciate Israel, even if the official Israeli response amounts to, "Take off, eh!"
Following the recent announcement that Israel and the United States had reached a PCT-PPH agreement, yesterday the Israel PTO announced via its website and its email distribution list that on October 17, 2012 it would be holding a workshop regarding PPH practice from 8:30-13:30. Presentations will be given by both ILPTO and USPTO officials. A detailed program will follow. People wishing to attend should send an email to Michal Logasi: [email protected]
The fact that the ILPTO saw fit to announce the PPH program via its website, but not the upcoming meeting with the examination corps, only heightens the strangeness of the latter non-announcement.
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.
The Israel PTO’s push to become a PCT search and examination authority is slowly moving forward. This past March saw the publication of a Government-sponsored bill that would make the statutory changes necessary for the ILPTO to become an ISA. This Tuesday, November 22, the Knesset’s Constitution, Statute and Law Committee will be discussing the bill. In fact, it has allotted nearly three hours for this discussion, which raises the question, why? Making Israel an ISA would seem to be a straightforward enterprise. What’s the problem that requires so much time to address?
Rumor has it that, in classic Israeli disrespect-yourself-and-shoot-yourself-in-the-foot fashion, some decision-makers have gotten it through their heads that Israel being an ISA would be a bad idea. Apparently they reason that the ILPTO can’t handle the amount of work it currently has, or that it does a poor job of examination, and therefore it can’t possibly take on the additional work of being a PCT ISA.
To anyone who’s done patent prosecution in Israel over the last ten years or more, it’s clear that that line of reasoning is about as fallacious as yours truly expecting to be elected Pope. During the tenure of the previous the Commissioner, the ILPTO went on a hiring spree and added dozens of new examiners to its existing corps of several dozen. The results have been palpable: waiting times between filing or national phase entry and the commencement of examination has dropped. That’s not just anectodal. Every October the ILPTO publishes statistics on the status of examination, and in general the lag between filing and examination has dropped. Similarly, a look through the Patents Journal shows that the delay in publications under Section 16 (which is a reflection of how quickly the office processes new applications) is on the order of a few months, instead of a few years like it was back in 2005. Although some of that may be attributable to an overall drop in patent filings worldwide in 2009, the fact is that the examination situation today in Israel is better than it was five years ago.
More to the point, though, is that (a) as I’ve argued before, in terms of their ability to analyze the patentability of claims vis-à-vis the prior art, Israeli examiners compare favorably to their counterparts in the USA or most other PCT ISA’s, and (b) making Israel an ISA, coupled with the signing of patent prosecution highway agreements, could augur well for both Israeli applicants wishing to obtain patents abroad, for foreign entities seeking patents in Israel, and for the ILPTO itself. To explain:
First, many of the examiners in Israel speak both English and Russian, and in some cases additional languages. And a fair number of them hold advanced degrees. Compared to some of the absolute garbage that passes for a USPTO office action these days, the ILPTO examination corps on the whole looks positively brilliant. To the extent I have a criticism of the Israeli examining corps, it’s that they don’t always do a good job of expressing themselves, saying things like “I cite publication X against the novelty of claim 1”, without further explanation. But that’s not an inherent flaw in the ability of Israeli examiners. It’s something that can be addressed through proper training – training, which presumably, Israel examiners would receive from WIPO, as they are trained in how to prepare and issue PCT search reports, written opinions and international preliminary examination reports. Inherently, examiners here are on par with examiners in many other countries (and better than the examiners in many parts of the world.) (It would be nice if I could say that WIPO wouldn’t accede to Israel becoming an ISA if the ILPTO wasn’t up to the task, but the fact that it gave Egypt the same opportunity undermines that particular argument.)
Second, there’s a worldwide problem in patent examination: the total number of applications is rising, and the world’s patent offices simply can’t keep up with the work. One of the ways to reduce the overall examination burden is to facilitate work sharing between the offices. Since the substantive requirements for patentability, viz. novelty and inventive step, are similar throughout the world, there’s no reason why work in this regard done in one competent office can’t be utilized by another office. In fact, as discussed in an earlier post, Israel was one of the first technologically advanced countries to recognize this, as for years the ILPTO has facilitated the allowance of patent applications on the basis of the allowance of a corresponding application in the EPO, the USA, or certain other countries. But until recently, Israel has been only a taker in this regard: it has accepted other countries’ examinations in lieu of its own, but no one else accepted Israel examinations.
That began to change earlier this year, when the USPTO and Israel entered a bilateral patent prosecution highway (PPH) agreement. Now the USPTO will accept the results of Israel examination on Israel-first-filed applications to expedite the examination of a corresponding U.S. application. Making the ILPTO a PCT ISA would enable Israel to take this a step or two further. Presumably, once Israel becomes an ISA, the USA will be willing to extend the PPH program to include favorable PCT searches conducted in Israel. Similar agreements could be negotiated with other countries. In and of itself, this would provide an incentive for Israeli applicants to have their PCT applications examined by the Israel ISA, as a favorable examination could then be used as a springboard to faster and presumably shorter examination elsewhere. And those same applications would not need to be examined again once they entered the national phase in Israel. In other words, with respect to Israel applications, becoming an ISA might result in some shifting in the order of examinations, but it would not create a backlog.
Beyond that, by opening itself as an ISA to non-Israeli entities, PCT examinations could prove to be a self-supporting business. The cost of paying an examiner in Israel is less than the cost of paying a USPTO or EPO examiner; the ILPTO could thus set the price for ILPTO PCT examinations below that of the USPTO or EPO, but at point where the ILPTO would profit enough that it could afford to hire additional examiners if necessary, thus offsetting any potential increased local workload.
Where Israel could really set itself apart is if it would offer to refund the PCT search fee if the search isn’t completed on time. This is something that has vexed PCT applicants for a long time: the search is supposed to be part one of the reasons for filing a PCT application, and you have to pay the search pay as part of the filing process, but there’s no mechanism under the PCT to get that search fee back if the search isn’t conducted in a timely fashion. Thus most U.S.-based practitioners have seen cases in which U.S. PCT search results were sent after the 30-month national phase entry date, with no mechanism under the PCT to redress this wrong. (I’ve sometimes wondered how a class action suit under Virginia state law against the USPTO for such a failing would fare. I would expect that a jury of laymen would respond positively to the notion that if you pay for a service to be performed by date X and it’s performed more than a year later, after the it’s no longer needed, you’re entitled to your money back.)
In Jewish law there’s the notion of going “lifnim meshurat hadin”, which roughly translates idiomatically into English as going above and beyond the letter of the law. Here, the ILPTO could set a new standard by effectively telling applicants that even though the PCT allows patent offices to act like common criminals and steal applicants’ money, the ILPTO will provide search results on time or refund the money. Although something tells me that some of the politicians involved in the legislative process (and perhaps some in the ILPTO) will react much like the father in the 1979 film Breaking Away:
On June 20, the USPTO announced on its web site that it had agreed with the Israel PTO to undertake a pilot Patent Prosecution Highway (PPH) project, beginning July 1, 2011 and continuing until June 30, 2012. Under the project, a patent applicant whose application was first filed in one of the two countries, and for which at least one claim has been found allowable, may request that the other office fast-track a corresponding application in the other country.
As of this writing, the link posted on the USPTO’s site for more information on this project does not contain any country-specific information regarding the program with Israel. However, the Israel PTO site does contain information in English (an explanation of how PPH works in Israel and a form to be filed when making the request), and although this writer wasn’t able to find comparable information in Hebrew from the Hebrew web site’s home page, the Hebrew PPH site is up (as noted in a press release in Hebrew that was sent out via the ILPTO’s email distribution list earlier today).
Some noteworthy points about utilization of the PPH before the ILPTO:
First, according to the information on the ILPTO web site, the claims of the Israel application must be of a scope which is identical to or narrower than that of the claims allowed by the USPTO. (This is the same requirement in place today under section 17(c) of the IL patent statute for acceptance of an application on the basis of allowance of a corresponding application in certain other countries. Note that the English instructions use the word “similar” rather than the word “identical”, which appears in the Hebrew explanation; presumably the Hebrew is in this case more reflective of the ILPTO’s intention.) Presumably, if one’s IL application doesn’t meet this requirement, an amendment may be filed concomitantly with the PPH request in order for the application to comply.
Second, a fee will be required; this is in contrast to applications utilizing the PPH in the USA, where no fee is required. And one may only request PPH status before examination of the Israel application has commenced. It’s not clear if the pre-examination request for additional information that the ILPTO sends before beginning substantive examination counts in this regard; the sensible thing would be for it not to count. Certain documentation will also need to be provided.
Thus, for applicants for whom Israel is the country of second filing, the present PPH program effectively amounts to a speeded-up version of the existing provisions under section 17(c) of the statute; the PPH merely provides an additional way to accelerate examination in Israel, beyond the currently accepted reasons for accelerating examination (e.g. potential infringement, imminent commercialization of the invention, etc.). It therefore appears that applicants for whom the USA is the country of second filing (i.e. who file first in the ILPTO) get the better end of the deal: as has mentioned in a previous post, as of January 1, 2011, an applicant who first files in Israel can have his application examined in accelerated fashion without paying an extra fee, and obtain a substantive office action within three months. Assuming allowance can be gained quickly in Israel, that applicant can use the quick allowance in Israel to obtain PPH status – at no extra cost – for a corresponding application in the much larger and more commercially significant U.S. market.
Although bilateral PPH is not as significant as PCT-PPH, it is a step in the right direction for the ILPTO, and new Commissioner Asa Kling and his staff are to be commended for completing this arrangement less than two months into his term. If Israel succeeds in becoming a PCT search and examination authority, it would stand to reason that Israel will also conclude a PCT-PPH agreement with the USPTO, which would truly be a boon for Israel-based applicants.
The form used for requesting PPH in the ILPTO does raise at least one important question, however: it’s sufficient for PPH applicants to direct the ILPTO to the allowed claims on the USPTO’s public PAIR, instead of supplying a hard copy themselves. That means the ILPTO staff is competent enough to make its way through public PAIR. If that’s the case, why are patent applicants in Israel still required to provide copies of prior art patent publications that can be downloaded from various sites on the internet just as easily as allowed US claims can be downloaded by the ILPTO staff from PAIR?
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