America-Israel Patent Law

The Patent Law Treaty And Succot’s Four Species

Ten and half years ago (exactly!) I wrote about the connection between the (quasi-) legal fiction used in selling leavened products before Passover and US copyright law. Today I’m going to discuss another (quasi-) legal fiction, one that arises in the context of Succot, and its similarity (or rather, dissimilarity) to a situation that arises under the Patent Law Treaty.

The Patent Law Treaty (PLT) is a treaty from the early 2000’s that seeks to harmonize certain formal aspects of patent law. Both the USA and Israel are signatories, as are 41 other countries.

One of the more salient parts of the PLT is that it enables the restoration of priority. Although normally an applicant has one year from the date of its first-filed application (FFA) to file a follow-on application claiming priority from the FFA, the PLT and associated regulations establish conditions under which such priority may be “restored” in a limited window after the one-year period.  See Article 13 of the treaty.

The “restoration of priority” provisions of the PLT raise an interesting question with respect to Paris Convention Article 4, which is the part of the Paris Convention that establishes the whole priority regime. Namely, Article 4 says that if you file a first patent application on an invention, and then less than a year later file a second patent on that invention, your deadline for claiming priority to either application is 12 months from the first filing, unless at the time the second application was filed, the first application “has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority”. 

Hence, if on January 1, 2025, Applicant files application A that discloses invention A, and on February 1, 2025, Applicant files application B, that discloses invention A and some variations thereof, the deadline to file an application that claims priority to either A, or B, or both, is January 1, 2026. If the Applicant deliberately waits until February 1, 2026 to file an application claiming priority to A or B, under Paris Article 4 that priority claim is no good: more than 12 months have passed since the filing of A, and Applicant isn’t entitled to claim priority to B, since B was filed while A was still pending.

However, if prior to filing application B, Applicant had expressly abandoned application A, leaving A unpublished and with no rights outstanding, then B would be considered the first filing, and Applicant would have until February 1, 2026 to file an application claiming priority from A.

Now let’s suppose that (1) A was filed on January 1, 2025 and B was filed on January 15, 2026, and (2) both A and B were filed as US provisional applications. US provisional applications are not examined and not published, and they automatically expire after one year.  Under these facts, A would have expired by the time B was filed, and thus B could serve as a priority application for an application filed by January 15, 2027.  Or so it would seem.

Enter the PLT. Under the PLT, it’s theoretically possible that (1) an application claiming priority from A could be filed within 14 months of the filing of A (e.g. on January 15, 2026), and (2) the failure to file that follow-on application and to make the priority claim to A within 12 months of the filing of A was unintentional, in which case priority to A could be restored per the PLT.  This theoretical possibility thus gives rise to the question, “Under Paris Article 4, can application B, filed as a US provisional application within 14 months of the filing of A and after A’s ostensible expiration, serve as a priority application for an application filed on February 15, 2027?”

I’m not aware of case law that deals with this question. My gut feeling is that no, that hypothetical situation of restoration of priority doesn’t negate the ability of B to serve as a priority application – at the time B was filed, A had expired, unpublished, with no rights outstanding. Hopefully no client of mine will be the guinea pig for resolving that question, in any jurisdiction.

So what does any of this have to do with Succot, the holiday that Jews are currently celebrating (for one more day)?

Well, one of the mitzvot (commandments) associated with Succot is the “taking of the four species”: the Torah, in Leviticus 23:40 says, “On the first day you shall take unto yourselves the fruit of hadar trees, branches of palm trees, boughs of leafy trees, and willows of the brook, and you shall rejoice before your God seven days.”  It was determined long ago that the fruit referred to is the citron (Citrus medica), the palm branches are actually palm shoots, the “boughs of leafy trees” are three myrtle twigs, and willows are two willows. (There are various criteria for each of these to make them suitable for fulfilling the mitzvah, but those aren’t germane here.) To fulfill the mitzvah, the person bundles the species together and picks them up (and traditionally, shakes them around a bit; there are certain parts of the morning prayers that are also accompanied by such shaking). The apparently superfluous “take unto yourselves” in the verse is understood to mean that on the first day of the seven-day holiday, these four species must belong to the person taking them – on the first day, you can’t borrow someone else’s species.

That’s all fine and good when all four species are readily available, which they are in modern-day Israel (where there’s a whole industry for supplying these four species), but historically that hasn’t always been the case, and it’s still not always the case in other places. In Michigan, for example, where I grew up, the only place you’ll find palm trees will be in a greenhouse in a botanical garden.

So if on the first day the four species must be belong to you in order to fulfill the mitzva, but you’re in a place where only a few people can get ahold of all four species, what do you do?

Well, a person who has all four species could give his own species to the next guy. But then the original owner will be species-less on day 2, and maybe he won’t be in a place where he can borrow from someone else. Or maybe the original owner wants to be able to help multiple people fulfill the mitzvah, to enable all of them to fulfill the mitzvah on the first day.

Hence there is a discussion in the Talmud of the use of the legal device called matana al m’nat l’hakhzir – a gift given on condition (or with the intention) that the gift be returned to the giver. This is the quasi-legal fiction to which I alluded earlier. There are several ways that this concept is understood, but the most basic one is that the receiver of the gift is only considered the owner of the species retroactively, upon his returning those species to the original owner/gift giver, and thus, at the time he shook the species together, he was the legal owner. But if he doesn’t return the species, then he was never their owner, even though he was in possession of them. Another view is that the gift is an outright gift, but only for a limited amount of time, after which the receiver must return the species to the original owner/gift giver. (How is this latter view different from a loan, which everyone agrees doesn’t solve the problem? Ask someone who knows this issue better than I do.)

Regardless, what’s going on is an attempt to make the non-owner a temporary but bona fide owner…while enabling the original owner to effectively maintain ownership. That is, a sort of legal fiction.

Thus, in a sense, the idea of matana al m’nat l’hakhzir in connection with the four species presents a mirror image of the PLT-provisional filing problem discussed above. There, the issue is that the applicant doesn’t want his first application A to be alive – he wants it to be expired at the time he files B. But the law creates a hypothetical possibility that A is still pending, and therefore the B filing, made when A is formally expired, might not be considered good enough to allow priority to B to be claimed. It would be like having a bundle of the four species that you can’t get rid of even if you want to.

Moadim l’simcha (what’s left of it) and חג שמח.

Why Did the USPTO Make Half of Form SB38 Disappear?

In March I wrote about WIPO's DAS system for the electronic exchange of priority documents in patent, trademark and design applications, and wondered why the Israel PTO charges a fee for making one's Israel application available to other countries via DAS – especially when the USA, for example, doesn't charge a fee (and in fact, for patent applications filed using an application data sheet, makes those applications available available in DAS, unless the applicant checks the opt-out box on the ADS). 

Today a colleague pointed out that the USPTO now appears to be playing games with DAS retrieval, by changing its form for instructing the USPTO to retrieve a document from DAS.

The form in question is called “SB38”.  In the previous version (Sb0038 old), the form had two parts: part A, which let the applicant instruct the PTO to retrieve a priority application via DAS (including an application from a country that only recently joined DAS); and Part B, in which the applicant could instruct the PTO to retrieve from the EPO or JPO a copy of a priority application from a country that doesn't participate in DAS, which copy was already deposited with the EPO or JPO.

In the revised form (Sb0038 new 2023), Part A has been removed.  Now the form can only be used to tell the PTO to retrieve a non-DAS country priority document from the EPO or JPO.

Trying to get into the warped minds at the PTO, I suspect that someone reasoned, "Well, if you want to retrieve a priority document via DAS, you can do so in an ADS (originally-filed or "corrected"), so we don't need to provide space in the SB38 for this".  Indeed, if one files an ADS that includes a claim for foreign priority, and in addition to the name of the foreign patent office, patent application number and filing date, one includes the relevant confirmation or access code, the USPTO will try to retrieve that foreign priority document.  So maybe someone has now decided, “Hey, we don’t need a separate form, we can just tell ‘em to do it on an ADS.”

Alternatively, maybe the USPTO has suddenly adopted a new way of reading 37 CFR 1.55(i)(2) (which has not changed since at least 2015).  That section reads,

2) The claim for priority is presented in an application data sheet (§ 1.76(b)(6) ), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and the applicant provides the information necessary for the participating foreign intellectual property office to provide the Office with access to the foreign application;

The way I understand that section, and the way the USPTO has understood it until now, is that to make a foreign priority claim, the applicant must file and ADS that includes the foreign filing office, the application number, and the filing date, but that the access code for the foreign application may be submitted separately, e.g. in the old SB38.  Maybe now someone at the USPTO has decided that this section should be read as saying that the access code must also be submitted in an ADS as well, rather than separately. 

God forbid the PTO make applicants' lives easier.

Ironically, both the old form and the new form say they're approved by the OMB for use through 31 May 2024, even though the link on the PTO's "forms" page only leads to the new form.

Anybody else encounter this or have thoughts on it?  I do not make frequent use the SB38, and I always file with an ADS, but still, this is annoying.

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”.

Online Session re: Provisional Patent Applications In Israel

On Thursday, May 20 at noon eastern time, the AIPLA Israel Practice Committee, in conjunction with the Israel Patent Attorneys Association, will be putting conducting an online session about provisional patent applications in Israel and some related matters.  Yours truly will be one of the speakers.  There is no cost, but registration at https://www.fee.co.il/aipla/0/en is required.

Hyper-Textualism at the Israel PTO: Parallel National Phase Applications Aren't "Corresponding Applications"

Two years ago, I blogged about how something that started out as a good idea of the Israel PTO was eventually written into the statute and then interpreted by the ILPTO in too limiting a way.  As I wrote then:

“The story begins in the late 1980’s, when the Israel PTO had a significant backlog in the examination of patent applications.  The Commissioner at the time had (or had suggested to him) a bright idea: why carry the load all by yourselves when there are other patent offices examining related applications? 

"Thus was born Commissioner’s Circular no. 9, which said that if applicants for Israel patents amended their claims to correspond to claims granted in corresponding patents in certain other jurisdictions, notably the USA and the EPO, then the ILPTO would view those claims as meeting local criteria for novelty, inventive step, unity of invention, sufficiency of description and clarity of the claims.

"The idea proved to be so good that in 1995, during a major round of statutory amendments, this policy was written into the statute as §17(c).”

The previous blog post pointed out that although the ILPTO was once liberal about allowing applicants to change method of treatment claims to Swiss-style claims and still allow the application under 17(c), it subsequently changed its view, allowing the statute to destroy the very flexibility and creativity that gave rise to the statutory amendment in the first place.

Today I heard about another case in which the ILPTO is being short-sighted about the application of §17(c).  This time, it has to do with the interpretation of what constitutes a “corresponding patent”.

The relevant wording of §17(c) says, in English translation (adapted by me from the WIPO Lex text, which contained a mistake), that one of the following must be true of the foreign patent and the Israel patent application:

* * *

(a) priority was lawfully claimed for the patent application in Israel under section 10 [Paris Convention priority – DJF], from the corresponding application;

(b) priority was claimed from the patent application in Israel for the corresponding application under the Law applicable thereto;

(c) priority was lawfully claimed for the patent application in Israel from another patent application submitted in a Member State, and such application is the basis for a priority claim for the corresponding application under the Law applicable thereto  * * *

Simply put, the Israel application and the foreign patent must share a priority claim: either the IL application claims priority from the foreign patent, or vice versa, or the two of them claim priority from a common third application.  Do you notice something missing from that?

Suppose one files a PCT application directly as the first filing, then enters the national phase in Israel and another jurisdiction that can in principle serve as a basis for a §17(c) request, say, Japan.  The ILPTO evidently has taken the view that in that situation, if the JP case is granted, it can’t serve as a basis for the §17(c) request, because, strictly speaking, the IL and JP cases don’t share a Paris Convention priority claim, since no such claim was made in the PCT application.

That position is conceptually absurd.  The whole point of §17(c) practice was to enable allowance in Israel based on an allowance abroad, provided there is a nexus between the Israel and foreign application.  There can be no greater nexus than if the two cases are both national phase filings of the same PCT application.  The fact that the PCT application does not itself claim Paris Convention priority should be of no moment, and should not preclude examination of the Israel case under §17(c).  But someone at the ILPTO has evidently decided to be hyper-textual about this, and has told an applicant in this situation that their §17(c) request is a no-go.

This isn’t just a pity in that pre-1995 (or even up around 2008 or so), the ILPTO wouldn’t have batted an eyelash about this, and would have realized that the situation I just described deserves the same treatment as if the two applications shared a common Paris Convention priority claim.  It’s that the ILPTO could be more cooperative about this if it wanted to be. 

For example, it appears that in order to implement provisional application filings in Israel, the ILPTO plans to take a slightly liberal view of what §11 of the statute says, and to split the filing fee into two parts.  (In a previous post, I recommended splitting the filing fee in a different context, and I’ll discuss the ILPTO’s proposal regarding provisionals in a subsequent post.)  Because §11 delegates the fee authority to the ILPTO, the ILPTO will be able to implement provisional filings, without necessitating a change in the statute, but merely a change in the Rules, which are easier to amend.  But the whole thing is still predicated on a particular reading of the statute. 

In the case of a first-filed PCT application, the ILPTO could say that the two applications DO claim a common priority, viz. the PCT filing itself.  Or, it could do an updated version of the old Circular no. 9, for example saying that it regards an application in the situation described above as fulfilling the requirements of §17 and §18 of the statute.  Its decision to be hyper-textual and deny eligibility for examination per §17(c) evinces a particular sort of small-mindedness, the basis of which is difficult to fathom.

The Difference Between a Grace Period and An Extra Year To File

Today the Israel PTO held the second of two Zoom calls about its proposal to enable the filing of a provisional application in Israel.  I participated in the first call and listened in on part of the second call, and will relate to the first call in a subsequent post.  But one point that arose in both times was the assertion that the filing of a US provisional gives an applicant a grace period to file a follow-on application during the priority year, and that, if the provisional isn’t well drafted, that sense that there’s a grace period can be misleading. 

Provisional applications were introduced in the US in 1995 in response to two concerns: university professors who felt that waiting for a patent application to be filed slowed the publication process; and US inventors in general who, because of rules requiring them to file first in the USA, were losing a year of patent protection versus foreign inventors, who could file first abroad, then one year later file in the US and obtain 20 years of protection from the US filing date. 

These two concerns were addressed with the provisional: (a) there are no formal requirements, hence an academic paper that is about to be submitted may be submitted as a provisional and thus protect what is disclosed therein, and (b) applicants have a year to file a non-provisional that claims the benefit of the provisional filing date, thus giving inventors an extra year of protection compared to first filing a non-provisional.

It is that “extra year” that some Israeli practitioners apparently refer to as a “grace period”.  The problem with that is that, in common parlance, a “grace period” is something you utilize after-the-fact, as in, “Whoops, I disclosed this yesterday, but I still have 364 days to file my patent application”.  In the patent context, for US practitioners, “grace period” refers to the one-year period that, before the AIA, was granted under §102(b) against certain disclosures by others and by the inventor or applicant:

35 USC §102 (pre-AIA)

A person shall be entitled to a patent unless —

* * *

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, * * *

(Under the AIA, that grace period was severely curtailed in most respects.)

So while it’s true that, to the extent that a provisional application complies with the written description and enablement requirements, it allows the applicant to disclose to others what was disclosed in the provisional during the priority year, US practitioners, and English speakers in general, don’t refer to that period as a “grace period”.  They simply refer to it as...the priority year.  Just like Israeli practitioners refer to the year following the first filing, in Israel or anywhere else, as the priority year.

I don’t know who introduced this mis-use of the term “grace period” into discussions in Israel, but I wish they would cut it out.  It’s both unnecessary and confusing.

Why Can’t I Claim Priority From A PCT Application At the Israel PTO?

Ok, that question is unfair.  Obviously, a party CAN file a patent application in Israel that claims priority from a PCT application, as opposed to being the national phase of that PCT application (and/or in addition to being the national phase of a different PCT application).  A PCT application, after all, is really a patent application that has been simultaneously filed in all PCT member states, all of which are also Paris Convention signatories.  Since a party can claim priority from an application filed in any of those states, it follows that it can claim priority from a PCT application.

Unfortunately, this fact may have escaped the attention of the people who designed the Israel PTO’s electronic filing system.  To wit: this week I nationalized a PCT in Israel.  The PCT application had two priority claims, one from an application filed in country X, and the second from another PCT application filed at the receiving office in country Y. 

When Israel switched to electronic patent filing in June 2016, it eliminated the equivalent of an application data sheet that you can fill in on your computer before filing (expect for pro se inventors).  The ILPTO’s electronic filing system requires filling in a series of fields online.  The field for priority claims asks for a priority number and date, as well as the country of the priority application.  There’s a drop-down list of countries, listed in alphabetical order as spelled in Hebrew.  But conspicuously absent from the list is the Hebrew equivalent of “PCT” or “WO”. 

Curiously, one of the jurisdictions that is listed in the drop-down list is the PCT International Bureau. This is curious because the IB can only be used as a receiving office for filing PCT applications; there’s no such thing as a patent application with filed the IB that’s not a PCT. 

The facts suggest two possible explanations.  The first is that the person who designed the IL-EFS didn’t understand that a PCT application is a PCT application regardless of the receiving office used, and thus expected applicants claiming priority from a PCT application to list the PCT receiving office as the country.  That would explain why there’s an entry for the IB, but no listing for PCT or WO.  The second possibility is that the person who designed the system understood that a PCT application is a PCT application, but instead of listing “PCT” or “WO”, listed “IB”.  This could be because this was an oversight, or because the person didn’t understand the subtle difference between “IB” and “PCT/WO”.

In my case, I listed the PCT priority application number and filing date, and chose country Y as the country, and that is what is shown on the filing receipt.  I have since contacted the powers-that-be at the ILPTO about this, and asked them to correct my filing receipt to show WO or PCT as the country for that priority application, and to fix the system itself to allow the selection of PCT/WO as the filing country.  We’ll see how they address the issues.

A Tale of Two Patent Offices

Over the years, in this blog I have written more than a few complaints about the Israel PTO.  But one of the good sides of the ILPTO that I have consistently emphasized is that, being relatively small, it’s usually possible to get problems at the ILPTO fixed. 

Hence yesterday, I blogged about the ILPTO’s web site being inaccessible, at least to some users.  Enough people reported problems that the ILPTO acknowledged there was an issue and looked into it.

During the course of the day, the ILPTO sent out an email containing a list of direct hyperlinks to each of the four different online filing systems – patents, TMs, designs and PCT.  This fixed the problem for most people, but not for your truly.  It also didn’t address the fact that the ILPTO’s home page was down – as were, apparently, other pages on the Justice Ministry’s servers.  I let the ILPTO know this.

I was therefore pleasantly surprised when around 5 PM, I got a call from the IT person at the ILPTO, who asked me to describe what problems I had.  After that, until I went to sleep much later, I had several email exchanges not only with him but with a whole team of IT people who apparently are responsible for part of the Israel government’s online services.  I would try to access sites, and send my screen shots of the responses I got. 

By the time I went to sleep, they had fixed the access to the patent filing system, but when I checked this morning the main ILPTO page was still inaccessible.  Then I checked a short time ago, and voila! There it was.

So thanks to Dror, Elad, and the rest of the crew who worked late into the night on Friday (like working Saturday in the USA) to fix this.

Were it that things were so simple at the counterpart patent office in the USA.  This week, the USPTO announced it that it’s making Patent Center available to all for beta-testing.  Patent Center is meant to replace the current PAIR and EFS systems.  Sort of like WIPO’s ePCT.  Which makes you wonder why they didn’t just adopt ePCT.

The announcement stressed all the great ways in which Patent Center will facilitate the filing of documents in docx format.  But a bunch of us signed a letter to the PTO last year in which we explained why the PTO insisting on filing in docx format is asinine. (OK, David Boundy, who wrote the letter, did not use the word “asinine” anywhere in letter – our communications with the USPTO must follow rules of decorum – but in thee words, “this is asinine” is what we told the PTO.)  Clearly, the PTO intends to move forward with this docx filing thing irrespective of its being ready for roll.  Or even a good idea.

Then there are reports of bugs in the system itself.  Carl Oppedahl has reported about some of these on his blog: about how the system messes up reel and frame numbers for assignments, how it doesn’t allow users to claim priority from applications filed at the EPO, and how it provides fillable forms that are then mangled by the PTO’s own systems upon submission.

I guess that’s what beta-testing is for, to work out the kinks.  But that assumes someone is listening.  And there’s nothing in the USPTO’s behavior to indicate that anyone is listening.  The USPTO’s announcement said that comments should be made through something called IdeaScale.  The PTO has collected comments via IdeaScale before. And neither I nor anyone I know who has made comments via IdeaScale has ever heard anything back from the PTO.  Moreover, Carl was an alpha tester for Patent Center, and some of the problems now being experienced by others are problems he mentioned to the USPTO more than a year ago. 

The USPTO’s failure to listen to the input it’s given by the people who use its systems most reminds me of Miracle Max (Billy Crystal) running around the table with his fingers in his ears yelling, “I’m not listening!” as he’s being chased by his wife (Carol Kane) yelling “Humperdinck! Humperdinck!” Except that scene was funny, and this one isn’t, and we practitioners aren’t trying to annoy the USPTO, we want it to serve the public better.

I still have criticisms of the ILPTO. But I also appreciate the fact the ILPTO is still small enough that you can usually find someone to fix problems.

English Translation of Israel PTO Notice About Work Arrangements Under Coronovirus Shut Now Available

Further to yesterday's blog post, today the ILPTO published an English translation of its notice about work arrangements during the Coronavirus shutdown.

Update March 27: the ILPTO published a further clarification on March 25. English version here. If you're recording a pledge against a patent, the 90-day limit to do so still applies, and the office will record the pledge. If you are a patent practitioner trainee on now unpaid leave, you should read the update.

Updates from Israel PTO Re: Work During Coronavirus Shut-Down

On Saturday night, March 21, the Israel cabinet agreed to reduce the number of public sector employees still working.  Yesterday, March 22, the Israel PTO published a four-page explanation of how it is implementing this decision, which remains in effect until May 1, 2020 or until the ILPTO publishes a new notice, whichever comes later.  [Update, March 24: the ILPTO has now published its own English translation of the notice.]  The main points are that:

• many employees were already working from home, and will continue to do so; registration certificates will continue to issue, and the Patents, Trademarks and Designs Journals will continue to publish at the end of each month;
• the ILPTO will strive to meet its obligations under treaties (e.g. providing PCT search reports on time), and to issue renewal certificates on time, but certain services (recording assignments, licensing new practitioners, notices of formal defects in PCT national stage applications, daily notices of outgoing correspondence) will be delayed at least until after Passover (April 15, 2020);
• the ILPTO will continue to accept submissions electronically and, for those parties permitted to do so, in person or by regular post, but in-person meetings and proceedings before the ILPTO, including hearings in adjudicatory proceedings, will remain in suspension;
• deadlines for filing new applications, responses to office actions and the like will not be held in abeyance, but non-statutory deadlines in adjudicatory proceedings will be suspended;
• applicants or other parties in proceedings before the ILPTO who are unable to timely make submissions as a result of coronavirus-related circumstances may request extensions or reinstatement based on those circumstances, which will be taken into account when deciding whether or not to grant the extension or reinstatement;
• in cases in which the ILPTO has an announced policy capping the number of extensions, that cap will be temporarily be waived, but statutory deadlines (e.g. for opposing a patent application or requesting a patent term extension) cannot be waived;
• in order to allow applicants/owners to file requests for extension/reinstatement, at least until May 1, 2020, no files will be closed for an applicant’s/owner’s failure to take an action, nor will the ILPTO send pre-file closure notices (which in many instances are a prerequisite for closing a file).

We elaborate on each of these below.

There are two ways in which the coronavirus outbreak affects the ILPTO: fewer people are physically in the ILPTO, and by order of the Cabinet, the ILPTO’s workforce needs to be reduced; and parties with matters before the ILPTO may be unable to meet deadlines.  Yesterday’s letter clarifies how the ILPTO is dealing with both of these aspects.

In the main, the ILPTO is attempting to maintain a “business as usual” approach.  Thus the ILPTO will still do intake on new patent, trademark and design applications; examiners will still examine cases, although the pace of examination will slowed; the Office will continue to publish the Patents, Trademarks and Designs Journals each month; and the Office will issue registration certificates, although the Notice recommends that, given possible disruptions in Israel Post, registrants download copies of the certificates.  The ILPTO will likewise strive to meet its obligations under international treaties, such as PCT examination, and it will deal with requests for immediate processing of applications, e.g. due to the inventor’s age. 

However, certain less-critical functions will be suspended altogether: the processing of changes in ownership or the name of the applicant/owner, recording of liens and the like (except for changes in local address for service, which will still be processed); the processing of registration of new practitioners and registration for practitioner examinations (except for complaints against practitioners); the sending of notices regarding formal defects in PCT national stage applications; and the emails that the ILPTO sends to practitioners, informing them of the cases in which correspondence issued, to enable practitioners to track that correspondence (in case a piece of correspondence wasn’t received). 

For over a week the ILPTO has not been receiving the public, and this will continue, which means inter alia that there will be no in-person examiner interviews, nor will any hearings in adjudicatory matters take place.  The notice states that there will, however, be someone answering the telephone during regular business hours. With most personnel remaining at home, it is unclear if callers will be able to obtain the clarifications they seek, even if they get through to the ILPTO.

Perhaps of greater to interest to parties with deadlines in matters before the ILPTO is the question, “Whither my deadline?” 

The first thing to note is that the Commissioner has discretion about granting deadlines in many matters, but certain deadlines are set by statute and cannot be extended.  Specifically, in patent matters, the following deadlines are not extendible:

• for third parties to request immediate examination of another’s patent application per §18(c);
• for filing an opposition to patent a application under §30,
• for payment of renewal fees per §56 and §57,
• for opposing the reinstatement of a patent under §61,
• for notifying the Commissioner of the granting of extension orders for reference patents in the USA and Europe under §64E(e)(2),
• for opposing the grant of a patent term extension (PTE) under §64F,
• for paying the fees to keep a PTE in force under §64M,
• for submitting a PTE application under §64O,
• to oppose under §73(c) the revocation or cancellation of a patent, and
• to oppose a change in the Register under §170(c).

Similarly, the deadlines for opposing a trademark registration and for paying trademark renewal fees per §24 and §33 of the Ordinance cannot be extended, and the deadlines for certain actions in design registrations are likewise not extendible.  (From the wording of the Notice, it sounds like the Commissioner would like to have the authority to extend some of these deadlines, but knows that he doesn’t, and may seek a change in legislation at a later time to address this.)

Second, in all other cases the Commissioner has discretion to grant extensions.  In some instances, though, he has published notices according to which, a priori, he has limited the number of extension available.  Thus, for example, during the substantive examination phase of a patent application, the ILPTO’ stated policy is that it will grant extensions without a showing of cause upon the payment of a fee, but that it will not grant more than four months of extension at one time, and not more than 12 months’ extension total over the course of examination.  The Notice says that at least until May 1, 2020, these caps will not be emplaced, and that extension periods falling within the period of March 22, 2020 through May 1, 2020 inclusive will not be included in capped period.

In some instances in which the Commissioner has discretion to grant an extension or to reinstate an application or registration, there is a criterion for granting the extension/reinstatement, either by dint of the statute or self-imposed by the ILPTO.  Thus, for example, a patent applicant who fails to file an application within the priority year may request an extension for the priority claim, and per §164 the Commissioner may only grant such extension if he determines that the failure to timely file in Israel was due to circumstances over which the applicant had no control and that could not be prevented.  In other instances, a showing of “reasonable cause” must be made.  The Notice points out that inability to file a document or pay a fee on time due corona virus-related circumstances may constitute circumstances that amount to “reasonable cause” or circumstances over which the applicant had no control, but that each case will be judged on its own merits.  Requests for extension on such basis may be made either before the initial deadline, or retroactively.

The Notice states that deadlines in adjudicatory proceedings are suspended at least until May 1, 2020 or further notice, whichever is later, but that the adjudicators will continue “to work as normal”, which we understand to mean that decisions in cases in which all hearings and submissions have concluded will continue to issue.

The Notice says that, in any event, in order to allow parties that have missed deadlines to make their case for extension/reinstatement, until May 1, 2020 or further notice, whichever is later, no files will be closed for failure to take a required action, nor will the ILPTO send pre-file closure notices, which in many instances are a prerequisite for closing a file.

Finally, it is to be noted that the ILPTO would have been closed anyway for Passover, from April 8 through April 15, 2020, inclusive.  Hence any deadlines that fall on these dates would in any event have been statutorily deferred to April 16, 2020, and thus filings or payments due on these dates will be considered timely if made on or before April 16, 2020.

 

Update, March 27:

(a) the ILPTO published an English version of its March 22 announcement.

(b) on March 25 the ILPTO issued a further clarification in both Hebrew and English: since the statute imposes a 90-day limit to record a pledge against a patent, the ILPTO will continue to process the recording of such pledges. And if you're a patent practitioner trainee and you're now on unpaid leave, you should read the announcement

Israel Joins WIPO’s Digital Access Service (DAS)

The ILPTO announced today that as of May 1, 2019, it will be a part of WIPO’s Digital Access Service.  (An announcement to this effect appeared on WIPO’s site more than a week ago, on March 11.)  This means that patent applicants who file in Israel who claim priority from applications on file with DAS will not need to provide the ILPTO with certified copies of those priority documents, but merely instruct the ILPTO to obtain such copies via DAS.  Given that that vast majority of foreign-originating filings in Israel are national stage PCT filings, where WIPO is already in possession of the priority documents, this aspect of Israel’s DAS accession, while a welcome development, is not expected to have a significant impact.

Where Israel’s DAS accession will likely see more use – but not too much more, for reasons that will be explained shortly – is among applicants who file first in Israel.  Previously, such applicants who were then planning to file applications outside Israel that claimed priority from the IL application needed to obtain physical, certified copies of their patent applications (for a fee of about $25), and send those to the foreign patent offices.  This included applicants who filed their PCT applications at RO/IB.  Now those applicants can just tick a box when they file their priority application at the ILPTO, pay the fee for the certified copy (at the same time they pay the filing fees), and voila, the ILPTO will give WIPO a copy of the priority application, which will then be available to other participating DAS offices.

It’s worth noting that for the last few years, Israel-first applicants who subsequently filed their PCTs at RO/IL did not need to order certified copies their priority applications, but had the option of merely paying the certified copy fee and having the ILPTO give itself a copy of the priority application, which RO/IL would then convey to the IB.  So in this respect, Israel’s DAS accession hasn’t really changed anything. 

In fact, now that applicants with Israel priority applications will be able to get their priority documents to the IB without having to go through the hassle of sending a physical copy to Geneva, I suspect there may be an uptick in the number of PCT applications filed by Israeli applicants at the IB.  This is because one can file at the IB using ePCT, which both allows one to preview what the application documents will look like before filing, and to see them almost immediately thereafter in ePCT.  Filing at RO/IL provides neither of these advantages. 

As noted in a blog post last year, there are several reasons why many Israeli applicants file their priority applications elsewhere.  Lack of availability through DAS was one of those shortcomings, so for people who would like to see more priority filings in Israel, Israel’s accession to DAS is a step in the right direction.  However, the other reasons for initially filing outside Israel remain.  For example, the fee for a US provisional application is still less than the fee for filing an Israel application, and since the ILPTO will charge to provide a copy of the priority document to DAS, whereas the USPTO doesn’t charge to make provisional applications available, the fee difference is now even greater. 

Nevertheless, on the whole the ILPTO, and Commissioner Ophir Alon in particular, is to be commended for this development.

Why We Do Our First Filings Outside of Israel

Israel does not require patent applicants to file first in Israel (unless their inventions concern certain defense or nuclear technologies).  And as a result, more often than not the first application gets filed outside of Israel.  In our office, that first filing is almost always made either at the USPTO (as a provisional application) or at the UK patent office.  The choice between the two is based on whether or not the applicant wants an examination report (i.e. a search) before the end of the priority year.    

The fact that most first filings for Israeli inventive entities are made outside Israel has not been lost on the ILPTO.  Thus, in an attempt to compete with the UK for “quick examination” applications, a few years ago the ILPTO announced that Israeli applicants who first file in Israel can use that fact as a basis for expediting examination of their applications.  But that hasn’t really resulted in much change in the pattern of first filings being made outside Israel.  Neither has the introduction of a small entity fee reduction in Israel. 

I recently heard a high-level ILPTO official voice some dissatisfaction with present state of affairs, wishing that more Israeli applicants would file first in Israel and utilize the expedited examination route.  The following is my explanation for why those of us who counsel our clients to file abroad first do so, but it can be summed up in three words: ease of use.  Or, more user-friendly.    

 

1. No declarations necessary

In order to avail oneself of the expedited examination program in Israel under section 19A(a) of the statute, one has to provide a declaration giving the reasons why expedited examination is being requested, such the fact that the filing is Israel is the first filing worldwide.  In order to establish one’s entitlement to small entity status, one has to file a declaration certifying that the applicant meets the criteria for that status.  Such declarations require signing before a lawyer or patent practitioner.  The preparation of those declarations raises the cost of requesting expedited examination.

In contrast, to obtain a quick examination at the UKIPO, one need not provide a declaration of any sort, but merely to pay a search fee and optionally examination fee upon filing, and and voila! Within about six months, you’ve got an examination report.  If you want it faster, tell them, and they’ll probably oblige.

Similarly, to obtain small entity status at the USPTO, one need file no special papers.  You just pay the provisional filing fee at the small entity rate.  The USPTO assumes that the potential penalties to the applicant and the individual practitioner for deliberately lying about small entity status (unenforceability of the patent, suspension from practice or disbarment) are a sufficient deterrent to false small entity claims.

 

2. No extra fees

Expedited examination at the ILPTO also requires payment of an additional fee, beyond the regular filing fee, which is not refundable if the request to expedite is denied.  And if the request to expedite is granted, there’s yet another to fee to pay.  No such fees are required at the UKIPO – you just pay the various filing, search and examination fees, and the UKIPO will act quickly on its own. 

 

3. Lower fees

The current fee for a US provisional is $280, $140 for a small entity.  The fee at the UKIPO, with a request for examination, is £385, or about $510; it’s only £285, or $380, if you only request a search, and a mere £60 if you’re just looking for a filing date without a search or examination.  The fee for filing a new Israel patent application is 2014 shekels, about $560 (reduced by 40% to $336 if you’re a small entity), the fee for requesting expedited examination is 300 shekels, about $83 (no small entity discount), and the fee for instituting expedited examination is 699 shekels, about $195 (no small entity discount available).  You do the math. 

 

4. Simpler process

To file a US provisional, you log in once, upload your materials, click “submit” and pay the fees. 

To file a UK application with a search and optionally an examination request, you or your UK associate log in once, file your documents and pay your fees. 

But to do an Israel request for expedited examination, even if you submit the request to expedite as part of the initial filing of the patent application, and you pay the request fee with the initial filing fees, you’ll still need to log in again, because if the request to expedite is granted, you have to pay another fee to actually cause the application to jump the front of the queue.  That’s another round of things to docket and a fee to pay. 

Note also that, unlike the USPTO, the ILPTO doesn’t provide the option of storing credit card data – you have to enter that data every time you pay by credit card.

 

5. Lack of PDAS Accessibility

If you file a US provisional application, by default your application will be available via PDAS, so that when you later file a PCT claiming priority from the provisional, you can tell WIPO to obtain a copy of the priority application, which it will dutifully do.  No mess, no fuss.

The UKIPO is also part of PDAS.  Put in the right information on your PCT Request, and WIPO does the rest. 

Not so the ILPTO.  If you file first in Israel and later file outside Israel, or file a PCT application using any Receiving Office other than the Israel Receiving Office, you’ll need to order a certified copy of that first-filed Israel application and then provide it (probably via FedEx or DHL) to the relevant patent office.  Another administrative task to worry about and additional expense to incur.

 

6. Certainty of non-publication.

A US provisional application will never be open for public inspection unless a follow-on US or PCT application claims priority from that provisional.  At the UKIPO, one can abandon the application and it will not publish.  In contrast, while in principle one can tell the ILPTO to abandon an application so that it doesn’t publish, the ILPTO doesn’t always follow those instructions, as we reported here.  So if you’re unsure about whether you want to proceed down the patent route or attempt to maintain a trade secret, or even just to reset the Paris Convention clock and re-file your application, you’re safer doing it with a US provisional or a UK application.

 

7. More user-friendly electronic filing

Immediately upon filing, the USPTO’s electronic systems gives an e-filing receipt that shows the application number, the fees paid, and names and sizes of the documents filed.  And normally within minutes, the newly-filed application is visible in private PAIR.

In the UK, you can print of screen of everything you’re filing, and you can tell the UKIPO to email you the filing particulars and copies of the documents, which it will do within minutes of filing.

Then there’s the Israel electronic filing system.  If you don’t pay fees, you can ask the system to send a confirmation that something was submitted, but that confirmation won’t list the application number or the names or sizes of the documents filed.  If you pay fees, you can’t even ask the system to email you a filing confirmation, because the system kicks the user out of the filing system into a separate payment system, which doesn’t allow the user to back to the filing system. 

Whether one pays fees or not in Israel, one has to wait at least 10 minutes, usually at least an hour and in some cases considerably longer than that, to be emailed a filing confirmation.  The confirmation document itself only lists the application number, not the documents submitted.  Instead, the ILPTO emails those documents back to the user (or, if they’re particularly large, emails a link to a site to download the documents that the user recently uploaded). 

And it can take over 48 hours for the materials to appear in the ILPTO’s database in the case of already-published application; but since there’s no private PAIR function at the ILPTO, one can’t even see one’s own new application in the database.  That ability will only come when the application is published at 18 months and becomes visible only to everyone, not just the person who filed it.

 

So given all that, why would anyone want to file first in Israel?

There is one situation in which I can see an applicant regularly filing first in Israel in order to obtain an early examination report, and that is where the applicant is one of the universities (or the university tech transfer office).  The universities qualify as small entities, and since they are repeat players in that regard, they can prepare a single declaration to that effect.  Since they have in-house counsel, obtaining a declaration that a given filing is the first one worldwide doesn’t cost them additional money.  And in many cases, they won’t file a PCT unless there’s a commercial partner who’s footing the bill for things like obtaining certified copies of the priority application.  So for these and other reasons, it may make sense for the universities to file first in Israel. 

As for the rest of us, though, until it becomes easier and less costly to get our applications examined quickly in Israel, filing first elsewhere will continue to be the norm.