PCT Filing Fee Reductions in January 2015

December 14, 2014

wipo_pct_logo270savings

The official fees incurred for filing, prosecuting, registering and renewing patents, designs and trademarks in Israel are linked to the cost of living index. Twice a year, on 1 January and on 1 June, they are adjusted. It seems that living in Israel is ever more expensive, and each adjustment makes each fee a few Shekels more.

WIPO works differently. From time to time their fees for PCT related services are adjusted, but not necessarily upwards.

As of 1 January 2015 the basic international filing fee for a PCT application will drip from $1471 to $1384. Excess page fees will drop from $17 a page to $16 a page.

If one elects the EPO as the international Search and Examination Office, the search will cost $2366 instead of the current $2545.

Using PCT Easy saves $104 per application, and filing electronically as XML or similar saves $208. It is possible to combine these and file electronically using PCT Easy, saving $312.

 

 

 

 


LLM in Patent Law at Haifa finally on its way

December 11, 2014

haifa university law school

Back in June 2009, I reported on the ceremonial launch of Haifa University’s Masters in Law program in Patent Law – see here.

Recently fired Minister of Justice, Tzippy Livni, authorized the Commissioner of Patents to rule on whether such programs would provide a dispensation from patent office exams for would-be patent attorneys. In September of this year, I reported about the standards for obtaining dispensation from the theory exam for patent attorneys. See here and here. Essentially, so long as the degree covers all subject matter, such as trademarks, designs, basic foreign requirements, international treaties and procedural issues, the top 20% graduating will be entitled to a dispensation from the theory exam.

The long awaited Master’s Degree in Patent Law at Haifa University is finally on the Patent Prosecution Highway on its way. The first intake is this January. Some candidates have already signed up, but there are apparently places available.

It occurs to me, that someone interested back when the program was launched has had time to do the prerequisite science or engineering degree, and to have then done two years on the job training (hitmachut). No doubt however, there are some additional wannabe patent attorneys out there who think that this degree is the key to fame and fortune.

We wish the faculty and students every success with this endeavour!


Holiday Closures

September 11, 2014

Closed

The Israel Patent Office is closed from 24-27  September 2014 (inclusive) for Rosh Hashana and from
8-18  October 2014 (inclusive) for Suckot.

Yom Kippur is Friday evening and Saturday, so the patent office is closed anyway, however we note that the UN is not merely closed anyway for Yom Kippur, but is actively closed since it is being recognized as a holiday.

Any official Israel Patent Office deadlines due to expire during these holidays will automatically be extended
to the next workday.  This includes Paris filing dates so PCT applications falling due on Rosh HaShana or Suckot may be timely filed immediately afterwards. However, the USPTO may have reservations for a PCT application claiming priority from a US provisional application.

Please note: Sundays are regular workdays in Israel.


Haifa University’s WIPO Credited Masters in IP Law

September 10, 2014

אוניברסיטת חיפה- הפקולטה למשפטים

Haifa University have announced their Masters’ Program in Patent Law. It’s WIPO accredited.

Looking at the draft circular from the patent office regarding such programs giving dispensation from the oral exam, it does not seem that it will be an easy way to get licensed as an Israel Patent Attorney. It may, however, be a good systematic way to learn the material.

It is actually an interesting point whether WIPO which is a broad-based section of the UN and gives an equal voice to all member states is necessarily relevant for general practice, where only a handful of regimes are of interest. No doubt in time, we will see if graduates of the program are better patent attorneys. I would hope that it gives a broad understanding of patents and that its graduates become counsel to firms.

 


Israel IP 2013, a Quantitive Overview

June 17, 2014

 Israel Patent Report 2013

The Israel Patent Office has published its summary of 2013. Their focus is on their efficiency. I have culled and am reporting the information that I believe is of more value to IP practitioners. My interpretative comments are in italics.

To enjoy the graphs and the graphics – a hot air balloon lifting a paper car, and no-doubt signifying hot air, recycling, creativity, and fen-shui, or something, readers can access the original here. I think that this literary digest is more user-friendly. Each to his own.

PATENTS 

The number of patent applications in 2013 was 6184 which is down 9% from 6793 in 2012, and is the lowest number since 2003. Approximately 600 of these applications are Divisional Applications and 6 are patents-of-addition.

The Israel Patent Office notes that since 2012 there has been a 40% discount for local applicants having a turnover of less than 10 million Shekels, but fails to note that there was a massive jump in filing fees of about 40% back then. My take – the Shekel is very strong so Israel is a more expensive destination than some others.

The number of first filings in Israel is 889, which is also a record low, less than at any time in the past decade. It is possible, however, that more Israeli start-ups are first filing in the US, either as Provisionals or regular US applications since the US fees have been going down, and the dollar is weak.

The pendency period prior to examination starting has been dropping steadily and is now 28 months on average, with biotech being especially fast. This may be explained by the increase in Examiners due to the Israel Patent Office becoming an International Search Authority of the PCT, which required the IPO to employ at least 100 examiners.

Second office actions typically issue 5-6 months after a response is filed, which is similar to last year and rather better than in the past. 

On average, examination takes 2 to 27 months, with Biotech taking rather longer on average – 37 months.

The Israel Patent Office has issued 3698 patents in this period, which is more than for any other solar calendar year in the past decade except 2011. 

The number of PCT applications filed in Israel was 1199 which is up from 1113 in 2012, but still below 2011 levels.

658 out these (55%) filing in Israel, have taken advantage of the relatively low International Search Fees and elected Israel as the Search and Examination Authority. 321 selected the EPO and 220 selected the USPTO. 

The report claims that the total number of applications filed by Israelis has remained constant, but more are filed in Israel as opposed to in Geneva. I don’t thing this is true, but do accept that the service provided in Israel is at International levels, with 91% filing electronically. 

What is clear is that in both absolute numbers of originating countries and by Receiving Office, Israel ranks 17, and clearly has a smaller population than any of the countries that have more filings.

Israel is the second fastest receiving office at getting applications to WIPO, with 99.3 applications getting there in les than four weeks, only lagging behind Denmark. This is a fairly useless statistic for the Israeli inventor, but no doubt gratifying to Dr Michael Bart and his team. I have been presently surprised by the quality of Israel generated International Search Reports and have recommended them to clients. In the past the USPTO often failed to provide the International Search Report (ISR) in a timely manner, but they have got better and also better at searching, even occasionally finding relevant art in non-US patent literature. The US fees have dropped somewhat and they may be more popular.

Israel is proud of the speed of PCT examinations, with 90% being examined within 3 months, ahead of the US and EPO. Furthermore, they blame security related examinations being forwarded to the Ministry of Defence for clearance, for the remaining 10% which take 4-5 months to issue.

There is an interesting of table of where incoming patent applications originate, that shows both Paris Convention filings and PCT national phase entries. This is of value when planning overseas marketing strategy.

Lists of the more prolific local and international filers into Israel had few surprises.

Some 20% of patents are issuing by modified examination under Section 17c, relying on a foreign issued patent from one of a list of examining authorities. This number has been dropping steadily since 2010, and is below 2008 levels. 

Some 130 applications were examined out-of-turn by one or other acceleration mechanism. This is higher than in previous years and no doubt reflects the various fast lanes of the Patent Prosecuting Highway, since only 18 applications were considered ‘green’ and fast-tracked thereby 

Of the 3887 applications allowed, 32 were opposed. 27 oppositions were dropped by the opposer and 14 resulted in the applicant dropping the case. Of the four patent oppositions that went full term to decisions, 2 applications were allowed to issue and two were rejected, with the ruled on oppositions taking an average of just over 4 years to be resolved.

Five applications to cancel issued patents were filed with the patent office. 21 final rejections were appealed. 9 requests for patent term extensions were filed and 4 were granted. 41 lapsed patent requests were considered and there are 8 pending decisions for employee inventor compensation. 

In absolute terms, there are fewer applications filed in Israel than in South Africa, New Zealand or Malaysia. In terms of patents per gross national product, Israel lags behind Korea, Japan, USA and most of Europe. 

When normalized for the size of population, Israel remains surprisingly attractive. Israel remains a must-file country for pharmaceuticals, biotechnology, organic fine chemistry (whatever that means) and medical technology. It holds its own in computing. Interestingly, Israel is also noticeable as originating PCT applications for medical technology and pharma, so Israel’s innovative companies are no less significant than the Israeli generic suppliers.

DESIGNS

The number of design applications was 1353 which is the lowest for a decade. 492 of these come from Israel. Of the 861 foreign cases, the US is the most prolific filer, followed by Brazil (104 applications, mostly Stern Jewelry), Europe, Korea, Japan and China.

TRDEMARKS

There were 9580 trademark applications into Israel in 2013. This number is less than 2006 to 2008 but higher than the other years of the last decade. Part of the drop is due to the introduction of multi-class applications, since there is an overall growth in the number of classes being filed in. Multi-class filings and the fact that of the 9580 applications, some 4930 were Madrid Protocol applications, implies less work and income for Israel trademark attorneys in basic filing. There are, however, some 176,978 issued trademarks in force, that need renewing. (Costa Rica has 183,226, and I suspect a better mark to attorney ratio).

As of the end of 2013, there were 20 competing mark cases, 98 trademark oppositions, 14 single party appeals and 40 cancellation or registry correction cases. Overall, the Israel Patent Authority has managed to resolve more of these than have been initiated.

Based on WIPO statistics, Israel ranks 46 in terms of trademark originators, behind Algeria, Kazakhstan, Bosnia and Herzegovina and Azerbaijan. Hoewever, Israel is only 19th in terms of popularity as a destination under Madrid.


World IP Day Celebration in Jerusalem

April 22, 2014

World IP Day

Tomorrow, 23rd April 2014 is designated by the United Nations as World IP Day.

The Israel Patent Office is hosting an evening at the Bloomfield Science Museum in Jerusalem, where the two students who’ve won the annual IP Essay competition will receive their prizes and Nobel Laureate and self-declared candidate for Israel President, Professor Dan Shackman will be speaking on “Technology Innovation for a Blossoming World of Peace”.

There will also be a video linkup with Francis Gurry, head of WIPO.

An invitation and more details are available הזמנה לציבור יום הקניין הרוחני .

COMMENT

Does a groundbreaking discovery concerning quasi-penta-symmetry in crystals qualify one to be a national president? I note that Haim Weizman was less than happy with being booted upstairs and away from the action by Ben Gurion, and that Albert Einstein had the rare good sense to refuse the presidency (he was a great physicist, but his politics were lousy). Perhaps of more interest than the titled lecture would be a presentation by Professor Shackman as to why the Knesset members should vote for him as President.

 


Entering National Phase in Israel, When the PCT Was Filed Late

January 6, 2014

PCT timeline

Israel Patent Application Number 227201 was timely filed. The problem was that the PCT application PCT/CA2012/000007 from which it was derived was filed late. The PCT should have been filed on 30 December 2011 but was actually filed on 4th January 2012.

The applicant of the PCT successfully persuaded the Canada Patent Office, acting as the PCT receiving office, to recognize the application as timely filed and to recognize priority of the PCT from various US provisionals: USSN 61/428,435, USSN 61/428,676 and USSN 61/428,445. This occurs under Regulation 26bis.3: Restoration of Right of Priority by Receiving Office.

Nevertheless, on entering national phase into Israel, the applicant should have petitioned to have the priorities recognized within one month. Applicant failed to do so and requested priority to be recognized in the second month from filing the national stage application.

The PCT Division of the Israel Patent Office refused to recognize priority. Applicant appealed to the Commissioner who granted leeway and referred the case back to the PCT receiving office to check that there were no other problems.

COMMENT

There are various reasons by which the Paris Convention deadline for filing a PCT application may be extended. Postal strikes and patent office closures are good examples. Sometimes inclement weather is allowed, but it has to be really bad.


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