Comments on: Israel Patent Office to allow no more than two independent claims of each type

By: Michael Factor

Michael Factor — Tue, 09 Feb 2010 10:55:34 +0000

We could do that.

In my case, section 17c is doable.

I think this is an issue for the AIPA and / or the AIPPI to handle. I don’t think it is a suitable course of action for going to the Supreme Court over. It’s not the only bad decision made by the Rasham or an Examiner. This one is simply aggravating…

Now if Arbitrator Shmulovits’ mis-ruled Obiter in Giraffa vs. Melnicke had become binding Case Law, I would have considered appealing.

For multiple independent claims? Come on! I don’t generally have them.

It would be nice to have substantive examination of dependent claims though.

By: sharper

sharper — Mon, 08 Feb 2010 11:31:00 +0000

If you two whiners truly believe that, why won’t you file a petition to the High Court of Justice in the matter? Or can’t you afford the fee?

By: Michael Factor

Michael Factor — Thu, 04 Feb 2010 19:47:48 +0000

I’ve had the Metronix decision thrown at me as well. I tried arguing that citing an illogical obiter was no reason to amend the claims. Now we can no longer do that.

By: fred

fred — Thu, 04 Feb 2010 14:01:05 +0000

I have already filed a 17(c) request with 8 independent claims.

Examiner cited Metronix and forced me to choose fewer claims.

Although you are right that the decision is arbitrary, inconsistent and is apparently not in keeping with the law, you don’t need to worry about differences between 17(c) and substantive examination.

By: Michael Factor

Michael Factor — Thu, 04 Feb 2010 07:18:12 +0000

The presumption of Section 17c is indeed rebuttable. However, Unity of Invention is not grounds for opposition purposes. Section 28 of the Law states that allowance is considered as evidence of unity of invention.

By: sharper

sharper — Thu, 04 Feb 2010 06:32:46 +0000

the norms hierarchy is not relevant here. the presumption of section 17(c) is rebuttable, though i would admit i cannot imagine invocation of section 17(d) on the ground of lack of unity… think of it as a form of risk allocation: the Patent Office risks losing divisional fees, while the applicant risks his patent being challenged and perhaps losing damages due to bad drafting (see e.g. section 185).