I read in the weekend edition of Israel’s Mekor Rishon newspaper that the USPTO and the IPO have announced a super-highway, designed to streamline patent examination. The author of the article, Ori Israel Paz, informs us that the wait between filing and issuance of Israel patents is notoriously long and that this initiative will make a difference.
Not for the first time, the journalist responsible, has taken a press release from the patent office at face value. Sorry to sound like an epicurean, Doubting Thomas, agnostic, or plain cynic, but I don’t believe a word of it.
Here’s why:
In Israel, Section 18 of the Patent Law requires applicants to submit citations and search reports from other patent offices in a timely manner from when a Notice of Imminent Examination issues, until allowance. The USPTO examination is open to the public over the Internet from 18 months from priority. The Examiners can and do check up what is happening in the US.
Under section 17c of the Israel patent law, once a US patent issues, an applicant in Israel can request allowance on the basis of the US patent, unless there some bar, such as the US patent claiming method of therapeutic treatment or relating to something that was documented in a publication within the grace period of a year prior to first filing that exists in the US but not in Israel.
In order to comply with WIPO requirements as an International search Authority, the Israel Patent Office has been recruiting examiners at an accelerated pace to have 100 examiners on their records. There are about 7000 applications filed in Israel annually and more than half are allowed under Section 17c, without substantive examination. This means that there are more than enough resources for the Israel Patent Office to examine applications in a timely fashion and on the whole it does. Backlogs have dropped in all technologies.
In contrast, the USPTO is in a mess with an enormous backlog, but the entire Israel Patent Office staff won’t make much of a difference. Under current Israel Law I don’t see how the Israel patent office can share submissions made by applicants before the end of the examination process when the granted patent is made available for opposition purposes, as the application and file wrapper are not available for inspection until then. Additionally, since the examination documentation that is sent back and forth between the examiner and the applicant’s representative are in Hebrew, one wonders how useful access to the Israel patent prosecution file will be to most US Examiners.
“Under current Israel Law I don’t see how the Israel patent office can share submissions made by applicants before the end of the examination process when the granted patent is made available for opposition purposes, as the application and file wrapper are not available for inspection until then.”
Not sure I follow this. The PPH is basically just a reverse of 17c, allowing USPTO to accept a US patent based on a granted Israeli patent family member. So, why should it matter that the examination process in Israel cannot be seen prior to acceptance? The way I understand it is that PPH is only relevant after Israeli acceptance/grant (now that I think of it, I am not sure which one. Do you know?)
Thanks, .
Iris
Once the Israel application is accepted it publishes. At that stage there is no neeed for a SuperHighway or anything else to enable a US examiner (or anyone else) to examine the file.
Since the prosecution is in Hebrew, this doesn’t neccessarily help.