Israel Patent Office to be closed from 29th March to 6th April for Pesach

March 3, 2010

The Israel Patent Office is to be closed from the 29th March 2010 to 6th April 2010 for Pesach (Passover).

As occurs a few times a century, there is agreement between the Western (Catholic and Anglican protestant) and the Eastern (Greek Orthodox) churches that Easter Sunday is 4th April 2010, so the Israel Patent Office is simultaneously closed for Easter. ( am not using the word ‘coincidentally’ - since there is a correlation between Easter and Pesach of course).

Ramadan finishes just before Rosh Hashana so the Israel Patent Office will apparently be open over Ramadan and Idel Fitteh.

Any deadlines occurring over the closure will be extended until 7 April 2010. There is a legal loophole that could be utilized by foreign entities missing a Paris Convention deadline for filing PCT applications to gain an extension. Please contact me if there is a need to do so, and we will explain the procedure.


IP Developments in Jordan and Egypt

February 5, 2010

The Jordanian Government was a little greedy in raising their trademark registration fees, and seemed to have forgotten that in a World Wide Recession, many multi-national corporations can simply forgo Jordanian rights. After successful lobbying from Jordanian trademark attorneys, the Jordanian Government has now decided to reduce the fees from US$930 to US$645. We note, however, that this is still more than the fee for filing a mark in one class in Israel.

Meanwhile the Egyptian “Ministry of Scientific Research, Academy of Scientific Research & Technology, Patent Office” has issued Declaration number 3 in respect of payment of annuities for the PCT national phase applications in which an extension of the time till March 31, 2010 was granted instead of 31 December 2009. The due date for annuities shall be calculated from the filing date of the international application.

We note that in Israel, annuities are only due, post allowance. Thus, this seems better value for money as deferring costs is a saving, and the costs will only be incurred if the application is allowed.

We further note that this past week, the Commissioner of Patents and Trademarks in Israel has issued his 79th Circular. His predecessors, though not quite as productive in this regard as he is, also issued some Circulars.

Not only is filing patents and trademarks in Israel generally cheaper than in Jordan and Egypt, and, we presume, more valuable due to more advanced industrial capability and the higher purchasing power of the inhabitants, but the Egyptians will have to start issuing circulars at a frenetic rate to catch up with the reforming power of Dr. Meir Noam!

We look forward to inviting our Jordanian and Egyptian colleagues to join us in using IP to promoting peace and security throughout the region.


2009: China announces rise in PCT filings, whilst Israel shows drop of 29%

January 31, 2010

Israel, like most of the developed world, suffered a tremendous drop in PCT applications, with the Israel receiving office reporting a drop of 29% between 2008 and 2009. China, however, has announced a rise of 18% in PCT filings, and over a million China patent applications filed at the SIPO in 2009. Israel is still filing more applications per head of population than China, but so what?

One wonders how China will ensure quality examination of this huge number. Time will tell.


Electronic filing; PCT, US and Israel

January 19, 2010

The PCT has announced that its Online Document Upload Facility became fully operational on Monday, 18 January, 2010. This facility permits PCT applicants and/or their agents to submit documents relating to international applications in PDF format, via the WIPO website.

One advantage claimed for this development is that post-filing electronic documents can be submitted quickly and efficiently to the IB, thus avoiding the costs and delays relating to paper mailing whilst overcoming image quality problems that can result from fax transmissions or paper scanning.

However, the service is not to be used for the initial filing of PCT international applications online to WIPO Geneva as a Receiving Office, only for subsequent submission of later-filed documents that are normally addressed to WIPO in its capacity as International Bureau only. Furthermore, the process only works if the International Bureau has already received the Record Copy from the receiving Office and started processing the application.

The long list of documents that may be uploaded includes amendments to the claims under PCT Article 19,requests for recording change of person, name, address, etc., notices of withdrawal, requests for Supplementary International Search (SIS), and where applicable, translations of international applications and sequence listings under PCT Rule 13ter for SIS purposes, informal comments on the written opinion of the International Searching Authority and general correspondence for the attention of the IB. Further guidelines are to be found at http://www.wipo.int/pctdb/en/

 Comment

All the submissions listed are text based submissions that I routinely fax and in addition to the fax receipt generated by my system, I get an acknowledgement from WIPO by return. I’ve never had a problem with the faxed document being considered unclear. Thus I am not sure that this development is in any way significant, except for the possible eventual reduction in paper usage.

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 On 14 January 2010 President Barack Obama told technology executives at the Forum on Modernizing Government:

 ”Believe it or not, in our patent office — now, this is embarrassing — this is an institution responsible for protecting and promoting innovation — our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system…This is one of the reasons why the average processing time for a patent is roughly three years.”

It’s a great quote. So what if Barak is apparently wrong and the USPTO stopped doing that back in 2006???

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Another great quote: Dr. Michael Bart, the Head of the PCT Receiving Office in Israel told me that a colleague at the EPO stated that “A paperless patent office is like a paperless toilet. “

Incidentally, the Israel Patent Office is also gearing up for electronic filing.

What of the ecological issues? Well the following story is absolutely true: whilst working at the UK National Physics Laboratory, NPL, in the early Nineties, I used to receive the internal newspaper of the Department of Trade & Industry. Then secretary of State for Trade & Industry Michael Hesseltine requested ideas for minimizing the paper-chase to be submitted on the requisite form in triplicate.

And finally, the ultimate all-in-one machine – one of my inventions, that I considered filing - the combined fax, printer, photocopier with shredder and bin. Does the whole process without human intervention.


USPTO provides a Chanucka present to other patent offices

December 19, 2009

Patently-O has reported an interesting development. the USPTO have published a spreadsheet that uses historical data regarding the number of examiners, backlogs of pending applications and the like, to simulate the effects of hiring and firing and new filings on USPTO backlogs.  

See http://www.patentlyo.com/patent/2009/12/play-the-patent-office-director-game.html

The Israel Patent Office has been hit by the world-wide recession with a large drop in new filings. However, to reach the magic 100 examiner number to become an International Search Authority for the PCT, has recruited new examiners and is still looking for more.

Unfortunately, due to a complicated geopolitical reality, Israel cannot join forces with her neighbors and set up a regional examination group.

I suppose cutting the number of new filings by 99% to adjusting the USPTO model to the Israeli reality and making similar adjustments for the number of examiners was a little unfair, but it does have interesting repercussions. The model needs some tweaking, but it is one way to examine if applicants are likely to be issued a Notice Before Examination prior to filing their applications, for example.

This is not that far-fetched. The EPO issues a European number to PCT applications on the off-chance that the applicant will file in Europe. Israel could perhaps do the same, and maybe inform potential applicants that if they file their ‘green’ applications and invoke Section 17c, the patent could issue prior to being drafted or something. 

Unfortunately, like all modelling software, there are bugs that need ironing out. For example, there is no RCE in Israel. Nevertheless, the program does offer some fascinating insights into what goes into running a patent office. With the head of the USPTO blogging, I see no reason why I can’t use his software to make predictions. Of course, none of us predicted the world-wide recession even as late as June 2008, and we don’t know how the soon-to-announced Bilski ruling will shuffle the deck. Perhaps I’ll stick to the tea-leaves…


Israel PCT Receiving Office – have your say!

November 3, 2009

The Israel Patent Office has published a questionnaire offering users of the PCT Receiving Office in Israel the opportunity to express their satisfaction or dissatisfaction with the service provided and to comment on tentative plans to go paper-less. 

I, for one, have always found Head of Receiving Office, Dr. Michael Bart and his staff forever courteous and helpful, and, apart from filing in Geneva on Mondays where the Paris deadline was Saturday or Sunday, or for saving clients excess page fees for gene sequences, prefer filing in Israel. 

I can’t link to the questionnaire, but Liat King liatki@justice.gov.il at the Israel Patent Office will send one to interested parties.  The deadline for responding is the end of November. 


Israel to become an International Search And Examination Authority for PCT

September 25, 2009

I am delighted to inform all readers this morning that the CTC has recommended to the PCT Union to appoint the Israel Patent Office as an International Search Authority ISA and an International Preliminary Exaination Authority IPEA of the PCT System

Apparently the decision passed with near-unanimous support followed by some political excitement. Syria, backed by Sudan and Algeria, opposed the initiative which passed after US led linkage to the Egyptian Patent Office being accorded similar status.

From an Israel Patent Office communication, it appears that implementation may take 2 years followed by a trial period where Israel Applicants will be able to elect the Israel Patent Office as International Search Authority. The incentive to do so will be reduced search fees, of about half that asked by the USPTO and EPO.

According to the official Documentation http://www.wipo.int/edocs/mdocs/pct/en/pct_a_40/pct_a_40_5.pdf Israeli applicants will be able to continue using the services of the EPO or the USPTO, however it is not clear whether in the long run Israeli Applicants will still be able to use the US and/or European Patent Offices.

Since Israel has a large number of scientists and engineers that speak many languages, it is not unlikely that with appropriate training, Examiners at the Israel Patent Office could become the best search authority. If they do a recruitment drive of Arabic speakers, they could eventually compete with Egypt to provide Arabic language searches (to those Arabic countries that will approve Israel as a search authority).
Indeed, in terms of skills and salaries, it makes sense for other countries to subcontract searches and perhaps examination to the Israel Patent Office in a similar manner to R&D being conducted here for many international organizations.

In a shrinking world, we believe that Israel should export search and examination searches (and also academic degrees). Firstly, the Israel Examiners will have to prove themselves.

There are only a very few Internationally approved Search and Examination Authorities. Even the United Kingdom Patent Office is not included in the list.

We see this as a great achievement for Dr. Meir Noam, the Israel Commissioner of Patents, and the examiners and support staff of the Israel Patent Office, Ms Li Maor who sits on the Israel Desk of WIPO and thank everyone who supported the initiative.


Thailand to Join PCT Treaty

September 23, 2009

In a welcome development, Thailand is joining the Patent Convention treatment (PCT). It will be possible to file PCT applications in Thailand as of January 2010.

Phucket: Please note – PCT applications filed elsewhere prior to that date cannot be ratified in Thailand. Indeed, care must be taken to prevent the PCT application from becoming prior art, i.e. the Thailand application should be filed within 18 months from the priority, document of the PCT and within 12 months under Paris to claim priority.

Personally, I’ve never filed or prosecuted in Thailand. Indeed, I dont’ recal being asked by a client to quote for filing in Thailand, although apparently the firm has filed pharmaceutical applications there for various local ethical clients. I don’t imagine this new development will have much of an impact on my day-to-day work. Will there be a flood of Thai national phase applications into Israel? Who knows.


Israel Applies to be PCT International Search Authority

August 4, 2009

Having reached the magic number of 100 examiners, the Israel Patent Office has, according to Maariv Newspaper’s website, applied to join the exclusive list of International Search Authorities.  The request will be considered by the UN in September.

The list of international patent offices includes the EPO, USPTO, South Korean, Chinese, Russian, Canadian and Australian patent offices, and a collaboration of Nordic patent offices.

Apparently the Egyptian Patent Office is also looking to join the exclusive club. Since Arabic is a recognized official UN language there is certainly a need for an Arabic search authority despite the relatively small numbers of patents filed in Arabic and originating in Arabic speaking lands. Israel has a diverse population speaking many languages and there are a lot of Arab science and technology graduates from Israeli universities.

Whether or not Egypt gets the job, one wonders if Arab patent offices will elect to send applications to Israel. At present, Israeli examiners are probably less competent at searching than their EPO or USPTO counterparts. This will presumably change if they are required to do first searches more often.

At present, Israeli PCT applicants can chose between the EPO or the USPTO for searching. Recently the USPTO have got much better and more efficient at meeting deadlines. It is not clear if Israel gets ISR status, whether Applicants will be able to choose the USPTO or EPO as the International Search Authority - ISR.

On the other hand, it is relatively easy for Israeli inventors to accelerate examination in Israel. Until now, an Israel Patent Office substantive examination was not generally highly regarded and many applicants preferred to invoke section 17c of the Israel Patent Law and get an Israeli application allowed based on a patent issuing elsewhere in any of a large number of patent offices with appropriate examination standard. Presumably Israel examination standards will improve if this initiative goes through.

Another ramification is that Israeli inventors may presumably choose to file in Arabic which is an official Israeli language and UN language. this will enable to go international via the PCT mechanism, but still keeping their inventions effectively secret as Arabic language applications are not generally monitored.

If this happens in large numbers, I suppose I will be out of a job as I draft in English…


Israel Patent Office Clarifies “Due Care” for Missed Patent Filing Deadlines

August 2, 2009

Missed deadlineIn IL 187147 to James Howared, the Applicant missed the 30 month deadline and filed in the 31st month. Israel is a 30 month regime. The Applicant, represented by Reinhold Cohen (RCIP) appealed the decision and the Adjudicator of Patents, Noach Shmulovich Shalev, ruled that unintentionally missing the deadline is not enough; the Applicant is required to show Due Care. 

The case is very similar to IL 175104 (one of my clients), where I cited Read the rest of this entry »


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