America-Israel Patent Law

Why Doesn't the Israel PTO List the Amount of Renewal Fees in Its Reminder Letters?

Most practitioners who are responsible for patent renewal fees include these deadlines in their docketing systems. Nevertheless, as with everything else for which there's a deadline, redundancy is a good thing. Which is why it's nice that the Israel PTO sends warning letters a few months before patent renewals are due. This isn't just out of the goodness of their hearts: the Regulations in Israel require that such a letter be sent (although in those rare cases in which the ILPTO fails to send such a letter, the ILPTO takes the position that it is not bound by that Regulation, and that the onus is always on the patentee to docket its renewal fees). The USPTO, by contrast, only sends a letter after a renewal fee payment has been missed, saying, "Nyeah nyeah, you missed the payment, now you can pay but only with a penalty."

But why can't the Israel PTO include the amount of the renewal fee due in its reminder letter? The notice of allowance letter that the office sends to applicants says how much the issue fee (allowance fee) will be. And the renewal fee reminder letter tells the reader how much each month of extension will cost. So why can't the renewal fee reminder letter include the cost of the renewal fee itself? Granted, it's only a few mouse clicks to look up the fee schedule, and you can save a pdf version of the fee schedule for quick reference later, but still, it shouldn't be a big deal to include the amount of the renewal fee itself in the reminder letter.

“Clarification” Letter About Suspensions From Israel PTO

Today I received from the Israel PTO identical letters in two different patent applications. In both applications, we requested suspension of examination back in 2023, when the procedure was for the applicant to first request suspension and for the Israel PTO to then send a letter shortly before the commencement of examination, telling the applicant to pay for the suspension or examination would commence.

In the interim, as I reported here, last June the ILPTO announced it was changing its procedure: applicants would henceforth need to pay for suspension at the time the suspension request is made, and the deadline for requesting (and paying) for the suspension would no longer be the actual commencement of substantive examination, but three months before the date on which substantive examination is expected to start. And how does one determine that? By looking at the ILPTO’s public database, which unhelpfully states “Pendency for exam XX Months”, without stating when counting of the XX months starts.  (Turns out it’s from national phase entry or, if the application isn’t a PCT national phase application, from the actual filing date in Israel.)

In both of the applications in which I received the letter, the expected examination date is less than three months away.  This, apparently, is the proximal cause for the letter being mailed specifically in these two cases. The letter mentions that within the next month, the ILPTO’s electronic filing system will be updated to implement the new procedure for requesting suspension, and states that “during the next month, it will be possible to request suspension for applications for which the expected examination date is less than three months away”.  This is a ham-fisted way of the Office saying, “Pay up now, or we’re going to start examining your case.”  That these two cases are due to be examined soon, and that suspension was requested in them in 2023, also explains why I received the letter specifically in these two cases, and not as part of a general email blast to the ILPTO’s mailing list.

The fact that the letter wasn’t sent to the general readership is puzzling, inasmuch as it’s worded as a general letter, not a case-specific one, and it includes, in a yellow-highlighted passage, the helpful notation that “the Office will inform the applicant of changes in the expected examination date, to the extent there are any”, a statement that seems to be directed to the entire applicant population, not just to these two applicants of mine.  As to the substance of that statement itself, I loosely paraphrase it as really saying: “The deadline for requesting suspension is a moving target, and maybe we’ll let you know if the date changes, but if you really want to be safe, you should request and pay for suspension as early as possible so that you don’t get screwed by us beginning examination before you want us to”.

The letter also mentions that if anyone has questions, they should contact Ora Sasson, and then the letter then helpfully doesn’t provide her telephone number or email address. I happen to have both in my phone’s address book, as does pretty much anyone who deals with the ILPTO on a regular basis, but how hard would it have been to include that information in the letter?

None of this changes the fact that, as I have discussed previously, the ILPTO is not authorized to collect fees for suspending examination.

Israel PTO's Electronic Filing System Again Rears Its Fascistic Head

Last year we submitted claims in an application identical to those allowed at the EPO, and told the examiner that when the European Patent granted, we'd file a request for allowance under section 17(c) of the statute. The examiner then issued a notice of allowance under 17(c). Since the notice was premature - the EP hadn't been granted yet, and 17(c) says such allowance must be based on a granted patent (which the ILPTO takes to mean not a mere notice of allowance) - we requested withdrawal from allowance. The ILPTO acquiesced.

In the interim, the European patent granted. I went to submit the 17(c) request now, and the system tells me, "Nyeah nyeah nyeah, you can't file that right now, pfffffft!" Why not? There's nothing in the statute that says we can't file such a request. Oh right, the people at the ILPTO and programmers didn't ask us users for input. And, in their omniscience, they can anticipate all possible situations, and dictate when we can file certain document and when we can't. Even if it's not in accordance with the statute.

So I submitted the document under a different heading that the system did let me file. I then called the examiner's ILPTO phone number to leave a voice message telling her what's going on, so she'll pick up the case and allow it. But I don't get voicemail, I get the examiner, so I mention the application number and she cuts me off and says, "It's after business hours." To which ask, "So why did you answer? I called your work phone expecting to leave a voice message." She explained that there are certain days on which she works from home, in which case calls to her office phone are forwarded to her personal cell phone, and she has no way of knowing if it's an incoming office call or an incoming personal call. Nice. Even nicer, she tells me that she doesn't check her voicemail anyway, so it wouldn't have mattered if the call had gone to voicemail.

I sent her an email explaining the situation. I hope she reads it.

Israel Patent, Design and Trademark Fees Going Up January 1, 2025

Yesterday the ILPTO sent out a notice regarding revised fees that will come into effect on January 1, 2025. All fees are rising by about 3.5%, rounded to the nearest shekel. Thus the fee for a new patent application (or national phase entry) will go from 2264 shekels to 2344 shekels; extension fees for patents will go from 226 shekels per month or portion thereof to 234 shekels per month or portion thereof.  The new fee schedule can be seen here.

Israel PTO: Suprise! We're Closed Tomorrow!

In case you wanted to speak to someone at the Israel PTO tomorrow, they just announced via an unsigned email that they're closed for business. No, not in anticipation of snow. Something about an end-of-year meeting for all ILPTO personnel.

Does this mean deadlines are pushed off? Of course not: the online filing systems will still be (nominally) working. Just don't call for help if the system goes wonky on you.

Follow-Up to "Letters Crossing in the (e-)Mail"

As a follow-up to yesterday's post:

1. I eventually got the acknowledgement of the filing of the POA.

2. The ILPTO sent out the same notice again today, so the problem still isn't fixed.

3. Thank you Israel Patent Office for sending out a notice. At least now we know there's a problem, it's not just me, and since the ILPTO is aware of the problem, it will be fixed at some point. In contrast, the USPTO's electronic systems often go on the fritz, and the USPTO doesn't bother to tell anyone or update its "systems status page" to reflect the outage or problem. Or, if it's a particularly egregious screw-up (like systematically mis-calculating patent term adjustment, or allowing third parties access to files that are not yet meant to be public, both of which happened in the past year), it sends out a notice after the fact saying, "We messed up, we fixed the issue so that it won't recur, but now the onus is on you to make sure that our mistake didn't injure any of your clients."

Letters Crossing the (e-)Mail

I have complained in the past about the time it takes for the Israel PTO to generate acknowledgement receipt for things that are filed electronically (as well as the fact that the ILPTO sends the filer a copy of the document filed, instead of issuing a hash function value like the USPTO used to do under EFS, before the introduction of PatentCrapper).

This morning I filed a power of attorney in a national phase filing that I effected last week. Then the ILPTO sent out a notice:

I'm not going to translate it, but it says that there is a temporary disruption in ILPTO's electronic patent filing system, so that it's slow to process incoming documents and issue filing acknowledgement receipts, and the Office is working on the matter.

I'm still waiting for the acknowledgement receipt, several hours after filing. But in the meantime, the ILPTO did send me notice, telling me that a POA needs to be submitted in this application.

Thanks, guys.

Israel Patent Office Changes Policy On Suspension of Examination…But Still Acts Ultra Vires

I’ve written several times in the past about suspension of patent examination at the Israel PTO (here, here, here and here). In June, the ILPTO announced a new policy for dealing with the suspension of patent examinations. We’ll get to the new policy shortly, but a brief history of suspensions is in order.

There is nothing in the statute about suspending patent examination. So under the sui generis policy that had been in place for many years, as long as no response was outstanding from the patent applicant, an applicant could request suspension at any time, and the ILPTO would set the application aside. Since nothing was outstanding, there was nothing for the applicant to pay.

Then the ILPTO switched gears, and said that suspensions could only be requested after the applicant filed its response to the pre-examination letter that the ILPTO issued under §18 of the statute (which response consists of the submission of an IDS-type document and a list of corresponding applications outside Israel), and before the mailing of the first office action; once substantive examination commenced, no suspensions would be granted. And a fee for each month of suspension had to be paid in order for the suspension to take effect. 

After a few years of that, some applicants realized they were unnecessarily paying for suspensions (since in some cases the suspensions expired before the examiner would have taken up the case anyway), and they complained about it. So the ILPTO again changed its policy, and said that you still had to ask for the suspension before the first substantive OA, but that the ILPTO would mail a request for money shortly before examination was due to start. If the applicant paid the fee, the case would be suspended; if not, the file would be closed for failure to respond.

Now the ILPTO has again changed tack, in two ways. First, while the window for requesting suspension only opens upon the filing of a §18 response, it now closes three months before substantive examination is due to start. And how does one know when that date is? Well, in the ILPTO’s database, for each case for which examination hasn’t yet started, there’s a notice stating that examination is expected to commence in X months. See the screenshot below.

Problem is, that notice doesn’t say from which date those X months are calculated. The priority date? The PCT filing date? The national phase entry date, or the Israel filing date for non-PCT applications? Inquiring minds want to know!

Second, the ILPTO now demands payment of the fee for suspension up front. And what if the ILPTO refuses your request for suspension? You can then request a refund. This is a fun process that in some cases will cost more in attorney time than the value of the fee paid.

Supposedly, in cases in which the suspension is approved and paid for, the system will automatically delay the start of examination by the number of months of suspension.

Apart from putting the onus for tracking the deadline to request suspension on the applicant and requiring payment in advance, the real problem with this system is that the ILPTO is not authorized to collect money for suspensions. As I explained several years ago, the office can collect fees for extensions of time, viz. when the applicant owes the office a response by a certain date and responds after that date. But in the case of suspensions, the applicant owes the office nothing. Indeed, the suspension can only be requested after a response to the pre-examination letter has been filed, viz. when the applicant doesn’t owe the office any response. Apparently the ILPTO wants to get hit with a class-action suit demanding repayment of improperly collected fees.

The better approach, as I outlined previously, is to tell applicants that they have four months to respond to the §18 letter, and that they can extend that response period not by a mere six months (as is the present practice) but by some lengthy period, like 24-36 months. Applicants could then pay the legally required extension fee at the end of the period; if they don’t file a response with the extension fees, the application goes abandoned.  By allowing a lengthy extension period for responding to the §18 letter, the ILPTO would effectively convert the response to the §18 letter into a request for examination, and the suspension period would be converted into a legal extension period. It’s a win-win.

What do you say, ILPTO?

If you're going to do a job, you may as well do it half-assed (USPTO's new IDS form)

The USPTO today sent out an announcement about its new Information Disclosure Statement (IDS) form SB/08a, the form an applicant uses to inform the USPTO about prior publications that are potentially relevant when considering the patentability of the claims under examination.

One of the banes of patent practice before the USPTO is having to provide the office with such lists of prior publications and, if the publication is not a US patent or published US patent application, a copy of the document (and a translation thereof if the document isn’t in English). Although US examiners are supposed to act on their own to look for the publication lists submitted in parent applications, if you want to those publications to appear on the front page of the patent that issues in the child case, you need to file a new IDS in the child case.  And, per Rule 1.98(d), if you want the examiner to look at publications submitted in the parent case, you need to tell the examiner where to look, as recited in the rule:

• (d) A copy of any patent, publication, pending U.S. application or other information, as specified in paragraph (a) of this section, listed in an information disclosure statement is required to be provided, even if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by, the Office in an earlier application, unless:
• (1) The earlier application is properly identified in the information disclosure statement and is relied on for an earlier effective filing date under 35 U.S.C. 120 ; and
• (2) The information disclosure statement submitted in the earlier application complies with paragraphs (a) through (c) of this section.

So what’s the big change in the new USPTO-supplied IDS form? It seems that the only change from the previous form is that now there's a checkbox to indicate that publications were already disclosed (and if not a US patent publication, submitted) in an earlier application, per 37 CFR 1.98(d).

But does the new form include a place to list the prior application? No. It merely includes a checkbox to state the following:

"An identification of an earlier application pursuant to 37 CFR 1.98 (d) (1) is attached."

And today's email announcement says, "When selecting the new checkbox, attach a paper to identify the prior application in which the previously submitted or cited information can be found."

Seriously? We still need to prepare a separate paper to tell the examiner where he can find copies of the non-US patent publications in the parent cases? The PTO couldn't have fixed the form to include a place to list the prior application? And it’s not like the PTO still uses paper files. To look at the publications submitted in the parent case(s), the examiner just has to press a button or two.

It seems that the people who design the PTO’s forms are the separated-at-birth twins of the people who designed and are coding Patent Center Crapper.

It should be noted that one can make up his own IDS form using a word processor, and thus could include in the IDS a reference to the parent case in which copies of publications were previously submitted.

No More AI Prior Art Searches at the ILPTO (at Least for Now)

Yesterday, the Israel PTO sent out a notice that, in translation, reads as follows:

“After several years of successful cooperation with the company Similari in the area of prior art searching by means of an AI-based tool, the engagement with the company has concluded.

“The Authority [viz. the ILPTO] is expected in the coming months to issue a new tender for an AI-based search tool. As a result of this, we are terminating the search service of the Similari company on the Authority’s web site, effective 11 June 2024.

“We apologize for the inconvenience which may be caused as a result of this, and invite the public to continue to utilize the variety of databases that are available on the Authority’s web site for searching prior art.

“We take this opportunity to thank the Similari company for a fruitful collaboration.”

I wasn’t sure what to make of this, so I poked around on the ILPTO’s website. It turns out that the website has a page that includes links to various databases that are available to users free of charge. Below is screenshot of that page taken yesterday.

As one can see, the link to “Similari” is at the top. Clicking on that link (https://app.similari.com/ilpo, which after today will no longer function) takes one to the company’s site. Below is the screen that greets the user:

What I found disconcerting was that, clicking through, the system appears to prefer that users input an entire patent application for search purposes. To me, that’s just bizarre: (a) if I’m interested in a prior art search, why would I go to the trouble of drafting a full patent application before I’ve done the search? (b) Why would draft a full application that discloses the client’s invention, and then give that application to a third party, thereby disclosing the client’s invention to that third party, which has no obligation – contractual or otherwise – maintain that disclosure in secrecy? Even if I had drafted a patent application and filed it, and used that filed application as the basis for my search, presumably the idea would be to use the search results to draft an improved patent application, in which case the delta between the two applications would be unprotected vis-à-vis the first application that was disclosed to Similari. 

So in trying to help individual inventors and small applicants by providing a link to Similari, the ILPTO may have inadvertently put those inventors’ and applicants’ IP at risk.

Similari apparently has a subscription service available. Maybe a non-disclosure agreement is included as part of its contract with paying clients. On its website the company includes a blurb about data privacy, and it’s hard to imagine a company like this gaining a significant number of paying customers without protecting clients’ disclosures.

The availability of a subscription service from Similari raises an interesting question: has the ILPTO been using Similari to assist in conducting (or to conduct in full) prior art searches?  It turns out that the answer is “yes”. The statute allows the ILPTO to engage third-party search services, and the wording of the ILPTO’s announcement (specifically the part about a new tender) implies that yes, the ILPTO has been using Similari. More importantly, tucked in the Office’s annual report for 2020 includes the following statement:

“In 2020, patent examiners began using the "SIMILARI" artificial intelligence-based search tool. Examiners use this tool as a primary search tool, after which the examiner completes the search using additional commercial search databases available at the ILPO. The new tool improves efficiency and quality of the search. It is worthy noting the search is run automatically for each application before the examiner starts the examination.”

Payment by the ILPTO for Similari’s services would help explain why the company has been willing to provide (at least in part) its search services to the public for free, and termination or non-renewal of a contract with Similari would explain why that public search service will no longer be available.  

Another question that arises is, Why did the ILPTO wait until the end of the contract with Similari before even beginning the process of issuing a new tender to provide similar services? How are examiners going to conduct searches at this point? Or are searches such going to languish until a new contract is signed with a different company?

Israel PTO Announces Expedited Examination of Patent Applications Claiming Priority from Provisional Applications

Revised June 6

The Israel PTO announced yesterday that applicants who file applications in Israel that claim priority from a provisional patent application may on that basis request expedited examination under section 19A(a) of the statute. The idea is that applicants who have filed a provisional application but wish to obtain an examination report before the end of the priority year may take advantage of this program in order to do so.

For reasons that will be explained shortly, I don’t understand the attraction of this program versus making one’s first filing a filing at the Israel PTO.

To give a little history, in 2010 then-Commissioner Meir Noam instituted a policy that an application that was filed first in Israel, and that was intended to serve as priority application, could be moved to the front of the examination queue.  While at that time no fee was involved, it was necessary to submit an affidavit in support of the request.  In 2012 the statute was amended an introduced section 19A; the implementing regulations added a fee for some such requests to jump to the front of the line. In 2019, then-Commissioner Ofir Alon instituted a policy whereby the Office waived the requirement for a declaration in such situations.

Yesterday’s announcement says that applications filed in Israel not as PCT national phase applications, but that claim priority from a provisional application, may also be moved to the front of the queue under the same statutory provisions.  I understand the announcement to be saying that no affidavit will be required. However, unlike applications first filed in Israel under the 2010/2019 policy, for these applications, a two fees of 337 and 786 shekels respectively will be required.  ThisThese isare in addition to the 2284 shekel filing fee.  At the present exchange rate, that’s about $90 + $215 + $620 = $835925 to get an examination report.

So it’s not clear to me what the advantage is in filing a provisional application followed by an Israeli filing shortly thereafter, versus just making a first filing in Israel, and saving the extra $215 fee, or even filing in other another jurisdiction that doesn’t charge much. In the UK, for example, one can file and pay for only a search report.

Additionally, in many cases, an applicant that makes its first filing a provisional application does so because it has a limited budget and is trying to keep costs down. And if the Israel application contains additional material versus the provisional, and the applicant later wants the Israel application to serve as a second priority application, it will be necessary to pay a fee to make the application available electronically via DAS, whereas the USPTO doesn’t charge money to do this.

The announcement is also a bit strange in that it doesn’t specify US provisional applications – it says, in Hebrew, a “bakashat ara’I”, which translates as “temporary application”, then uses the English term “provisional application”. Presumably this is meant to refer to US provisional applications, but are applications from any other jurisdiction meant to be included?

One useful aspect of asking for an examination in Israel is that Israel has PPH agreements with several important jurisdictions, including the USA, Japan, China and the EPO. So getting a favorable examination report in Israel can be used to expedite examination in some other countries. But again, why first file a US provisional and then file in Israel, so that one can pay extra money?

Israel PTO, Where’s My Patent Application? (System Takes Money but Loses an Electronically Filed Application)

When the Israel PTO moved to electronic filing in June 2016, no one had thought about the importance of providing the filer with confirmation that a filing had been made and what had been filed. Upon discovering this, at least one veteran member of the profession went to Jerusalem and spoke with the senior ILPTO employee responsible for the new system, explaining that that’s not acceptable. The ILPTO’s response was to have the system create a document called an ishur klitat sal – literally “confirmation of reception of basket” – that would be emailed back to the filer, along with copies of the documents submitted, which confirmed that the files were now in the ILPTO’s electronic system.  And a day or two later, one could see those files in the public database.

Admittedly, it’s a clumsy way to do things. The USPTO’s EFS, for example, simply issued a filing acknowledgement, that listed the documents submitted (including filename) and a hash function value for each document, so that one could prove something had been filed if necessary later on. And sometimes there were delays in issuing the ishur klitat sal. But it worked. Filers also had the option of instructing the system to email them an ishur shlihkat sal, “confirmation of sending of basket”, which showed that a group of documents had been submitted.

Additionally, if a fee is involved, the system kicks the user out of the ILPTO’s filing system and into the general State of Israel payment system. Klunky, but that system immediately issues a payment receipt, and since you can’t get to the payment system until after you’ve submitted your documents, one effectively had immediate proof that something had been submitted and a fee paid.

I’ve been writing about these things in the past tense, but the fact is they’re all still true. You still get an ishur klitat sal for everything you file…except for new patent applications. Last year the ILPTO changed to a new system for filing new applications. There are some nice features in this new system (like the ILPTO populating the data fields for national phase applications with data taken directly from WIPO, and the option to have the ILPTO take the specification, claims, drawings and sequence listings directly from WIPO as well). But it has one glaring drawback, and that is that there’s no ishur klitat sal anymore for newly-filed patent applications. And there’s not even an option to send your yourself confirmation that a new application has been submitted. The best you can do is go into the system and see all the applications listed under your account, and check the status of each. If the status is listed as niklat (“received”), you’re good.

I note that even this is wonky: the system lists the date on which the entry was created, the date on which the entry was last modified, and the PCT application number if applicable.  If you want to see the documents that were filed, you have to go into the entry…but when you exist, the “last modified” date will be changed to the date on which you view the entry. Even if it’s an already-filed application and all you’re doing is looking at the data an documents on file.

This led to a new experience this week, one that’s still unresolved.  I filed a national phase application, clicked “submit”, and paid the fee. I immediately got the payment receipt. But no filing receipt was forthcoming. Not that day. Not the next day. Not the day after. So I went back into the system for filing new applications, and found that this application is listed as “draft”. Not “received”, not “transferred to payment”, not “ready for filing”. Draft. As if it was never submitted.

I wrote to the ILPTO about this, and while I was writing this post, received a response in which the writer told me that the application was listed as “draft” and that I should log in and submit it again. I wrote back and explained that the system would still not list the application as “received” because I wasn’t going to pay the filing fee a second time, and that in any event she hadn’t explained how this could have happened.

For now there’s nothing to do, because as I write the system is haywire and won’t us into the “file a new application” or “my filing” interfaces. (We can apparently still do follow-on filings under the old system.)

The good news is the 30 month deadline is still a few weeks away, so we have time to sort this out.

I wonder if the same programmers who work for the USPTO are working for ILPTO.

Follow up, a few hours later:

The new application part of the system came back online.The ILPTO person said that since payment was made, if I file the application that the system has recorded as "draft", it will take the new application and not request money. And that's what happened. I now have a filing receipt for the application. So the system knew payment had been made for this application, even though the application hadn't yet been filed.

Additionally, the ILPTO person said that in the next version of the system, there will be some way to warn people that an application was not successfully filed. That's good, because I wonder what would have happened if I had done this filing on the 30-month deadline - would I have to petition for late national phase entry? I would argue, no, the payment receipt is itself evidence that I filed, and the fact that the ILPTO's computer system hiccuped is their problem.

Anyway, all's well that ends well.