This morning the Israel PTO announced that, beginning January 1, 2022, applicants for patents may receive their substantive examination reports (aka “office actions”, or “OAs”) in English. This service is only available for patent applications for which substantive examination has not yet commenced. Although the Office indicated that this is a pilot program, neither an end date for the pilot program, nor criteria for deciding if the program is to become permanent, were announced. I would include a hyperlink to the announcement, but if it’s on the ILPTO’s web site as of this writing, I can’t find it, so at the end of this post I include the full text of the email announcement.
There are two ways an applicant can request to be enrolled in the English OA program. The first is by writing an email to Ms. Ora Sasson ([email protected]) by December 7, 2021, in which case all of an applicant’s applications will be enrolled in the program. Truthfully, the notice is a bit vague on this point, because it’s worded “Those who are interested in participating in the pilot and to commence to program with respect to all of their applications” [emphasis in the original] are requested to notify Ms. Sasson by email. So it may be that by “Those who are interested”, the Israel PTO means those patent practitioner firms, rather than individual applicants. I’ll return to this point in a moment.
The alternative is to enroll in the program on a case-by-case basis, by filing a paper via the Israel PTO’s electronic filing system under the heading “request to complete/amend an already-filed specification”, requesting enrollment in the program. You might ask, “Why does a request for English OAs need to be submitted under the heading “request to complete/amend an already-filed specification?” For those of us who have been forced to use the IL-EFS for nearly five-and-half years now, the answer is self-evident: IL-EFS makes the user pick one of a limited number of pre-defined actions, and since “request to complete/amend an already-filed specification” is (a) already defined, (b) one of only a handful of actions that one can take at any time (most actions are only allowed at certain periods in an application’s life, in accordance with definitions in the EFS), and (c) something that an examiner must look at prior to commencing examination, it’s easier for the Israel PTO to it this way than to define a new action, viz. “request that OAs be issued in English”.
Inasmuch as the vast majority of patent applications filed in Israel are filed by non-Israeli entities, it’s likely that most applicants will want to take advantage of this program, because the issuance of an OA in English will presumably reduce costs – applicants can just receive the OA as-is from the Israel patent counsel, and then ask counsel any questions the applicant wishes to ask. This stands in direct contrast to the interest of many practitioner firms, for which the translation of OAs is a source of income. So what will those firms do now?
My prediction is that the firms that process lots of Israel OAs, and generate revenue by translating those OAs to English, will do the following:
First, sometime this week, firms with lots of clients from outside Israel will send a letter to those clients, informing the clients of the option to receive Israel PTO OAs in English, and asking if the clients wish to receive their OAs in English. The firms will bill those clients for those letters.
What might be conveniently omitted from those letters is possibility of giving the Israel PTO a standing order to issue OAs in English. This omission might be justified (or maybe “rationalized” would be a better word) on the grounds that the wording of the notice is vague about whether the program can be applied to all of an applicant’s applications or to all of a practitioner’s applications, and if the firm doesn’t get buy-in from all of its clients, it can’t give a standing order to the ILPTO to issue all OAs in English.
Then, what some firms will subsequently do is not email Ms. Sasson, but instead make a note in their own docketing systems that clients X, Y and Z want OAs in English. Those firms will then request English OAs individually, in each application in which examination has not yet commenced, and in each new application filed. Because that’s another billable task, one that can be multiplied many times over if you’re filing several dozen or several hundred applications at the Israel PTO each year.
For myself, I’ll be contacting my clients and letting them know of this possibility, but I don’t see any of my clients from outside Israel not wanting their OAs in English.
I do wonder about one thing, though: until now, it’s often been the case that OAs written in Hebrew have been unclear on certain points. I don’t know if switching to English will affect that, as for many examiners both Hebrew and English are second languages.
ציבור המבקשים, עורכי הדין ועורכי הפטנטים שלום רב
רשות הפטנטים מתכוונת להתחיל פיילוט במסגרתו הודעות על ליקויים לפי תקנות 41 ו-43 והודעה לפני קיבול בבקשות שטרם החלה בחינתן יופקו בשפה האנגלית וזאת לבקשת המבקש או בא כוחו.
הפיילוט יחל ב1.1.2022
השירות נועד להקל על המבקשים ולייתר את הצורך בתרגום הדו"חות שמפיקה הרשות לשפה האנגלית, על מנת שניתן יהיה להעבירם למבקשים
המעוניינים להשתתף בפיילוט ולהחיל את האפשרות באופן גורף על כול בקשותיהם, מתבקשים להודיע זאת על-ידי פניה במייל לגב' אורה ששון לכתובת : [email protected] עד ליום 7.12.2021
בנוסף ניתן לבקש להחיל את הפיילוט לגבי בקשה מסוימת בלבד וזאת ע"י הגשת הודעה בפניה מסוג "בקשה להשלמה/תיקון פירוט שהוגש"
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