On 8th December 2011, the Israel Knesset passed an amendment to the Israel Patent Law 1967.

There appear to be two changes, the first cosmetic and the second substantive.

Firstly, all references to the Israel Patent Office “משרד הפטנטים” or uses of the word “לישכה” meaning ‘office’ are amended to “רשות הפטנטים”  and “רשות” , i.e. Patent Agency and Agency.

More substantively, there is an amendment to reflect that the Israel Patent Office, whoops, Agency will henceforth provide PCT style International Search Report compliant search reports (ISRs) and will also be able to provide International Search Reports for applications received by the Israel Receiving Office of the PCT, where one or more inventor or applicant is an Israeli Citizen or corporation, and also for citizens or corporations of other countries having a relationship and appearing in an appropriate appendix to the Law, to be updated from time to time.

COMMENT

The Israel Patent Office (it’s OK, I can still use the old name until 8 January 2012 when the amendment comes into force) has been styling itself Israel Patent Agency for a while now, but this is now enshrined in the Law. There don’t seem to be punishments for people who forget, but I will do my best to comply.

Regarding the Searches, there are a few questions that require clarifying and no doubt the Commissioner of Patents will issue a Circular in due course:

1. Can Israel applicants still elect the USPTO or EPO to search their applications as they can at present?
2. What happens if applications are filed at the International Receiving Office in Geneva? – at present, this does not affect the authorized International Search Authorities, but maybe this will change.
3. How much will an Israel PCT search cost?
4. When will this come into effect – not the amendment to the Law, but that Israel will provide ISRs?
5. Now that the Israel Patent Agency  is to provide ISR type searches, does that mean that at last they will start searching and examining all claims, at least for the first invention as defined by PCT Law and Regulations, and not just the independent claims as they generally do at present.

Time, and Patent Office Circulars, will no doubt tell.

We applaud Li Maor who sits at the WIPO desk handling Israel, for pushing to host the event in Israel and for the work she must have done behind the scenes in persuading WIPO to fund the program. Bringing academics and civil servants to Israel is good for Israel’s image, and good for tourism.

WIPO sponsored the flights and hotels, and also a reception for the participants. Ono provided the venue and refreshments, and raised additional funding for some touring. The Israel Patent Office also chipped in, hosting a final session in Jerusalem, with a second reception.

Part of the program, consisted of closed sessions where official delegates debated how to advance the agenda of an international treaty on traditional knowledge. The first day and a half were open to the public.

After speeches by WIPO and Ono representatives, Prof. Braverman, an economist who is a member of the Labour Party gave a nice welcoming speech, slightly marred by him acknowledging that he wasn’t really sure what the event was about or what he was doing there.

The main program was opened by Prof. Shuba Ghosh of the University of Wisconsin gave the keynote address, explaining what Traditional Knowledge is. Dr. Shlomit Ravid, the coordinator of the event from Ono gave a second general lecture, posing questions rather than providing answers. She illustrated her position with examples from local culture and concluded that traditional knowledge cannot be considered as property per se. but can perhaps be considered as being a type of quasi-IP. We note that Intellectual Property is itself only a quasi property right, and feel that an explanation of what she meant by a quasi-IP right and the ramifications thereof would have been useful.

Each speaker was followed by a respondent. One Russian representative actually attempted to respond to points raised, but was handicapped by poor English. Other respondents simply presented their work to protect or capitalize on their national traditional knowledge resources.

What was unfortunate is that the program lacked balance. There was a clear agenda to create rights for indigenous peoples in their traditional knowledge (or TKs). Wend Wendland, the Director of the Traditional Knowledge Division at WIPO, went so far as to explain that there is a timeframe to create a treaty within the next 12 months and that the event is perhaps the most significant IP development since TRIPS.

There was, however, no rigorous philosophical underpinning presented to justify the new right. The traditional IP rights attempt to strike a balance between the creator and the public domain with the patent system and copyright both being designed to reward creativity, thereby providing an incentive to create and to expand human knowledge and cultural expression. The rationale for rights in traditional knowledge was not adequately explained and I suspect, is not there.

Rigorous academic analysis was most conspicuous by its absence.  For example, Dr. Nicholas Bramble of Yale University noted that Vincristine, extracted from the Madagascan Periwinkle is used to treat Hodgkin’s disease. Though the plant’s beneficial properties were known in folk medicine for hundreds of years, the Madagascans never received anything from the development of the drug by Eli Lilly resulting in them doing significant ecological damage to their environment to generate income.  Bramble’s position is based on an assumption that the natives of Madagascar have rights to financial compensation for research into plants that were used in traditional Madagascan folk medicine and a further assumption that there is a causative link between the lack of compensation and ecological damage to Madagascar. Eli Lilly discovered the bone marrow suppressive properties in experiments on mice with leukemia. One can assume that the Madagascan population had no traditional knowledge of  leukemia or of the function of bone marrow. I suspect that the same ecological damage over the past 50 years since this discovery would have occurred regardless of whether the indigenous population would have received some type of royalty, since having one source of income does little to deter exploitation of other sources.

I found myself wondering why no one had thought to extract some payment from Disney on behalf of the indigenous population, subsequent to their depicting the fauna, flora and beaches of the island in the animated movie Madagascar?

One of the clearest and most interesting presentations was by Dr. Sheila Foster of Fordham University who gave some insights into land use decisions in an urban context. She admitted that she had no background in IP, but felt that her field of research could provide some insights. Unfortunately this is not the case. The insights learned from her field of research relate to maximizing usage of limited resources, and to the value of providing property rights to such resources so that they are managed properly. Knowledge is, however, not a limited resource.

There is value in conserving biodiversity and cultural expressions of all sorts to enrich the human experience. This could place a responsibility on countries and populations, but is not a justification for their having commercial rights to their traditional knowledge. I think the mandate for so doing is not WIPO’s but really belongs to UNESCO.

It’s not merely that knowledge is not a limited resource and that present day indigenous people have not created their traditional knowledge and providing rights over it does not encourage the creation of additional traditional knowledge, although could certainly encourage the classification of more knowledge as such.  No one addressed the issue that the flow of knowledge and wealth occurs in both directions. The third world can access vast amounts of knowledge created in the developed world and published in patent literature and academic journals without contributing substantively to its creation. This knowledge is paid for using Western taxpayer’s money. The developed world also contributes to health in the developing world via the World Health Organization, via charities such as Medicines Sans Frontiers (Doctors Without Borders) and Oxfam. The great capitalists like Bill Gates often donate vast sums to philanthropic works. I suspect that the funding for this conference originated in the developed countries as well…

The program was advertised in the Israel press.  WIPO also sent direct emails to Israeli IP practitioners and ONO contacted their graduate lists. Unfortunately, the attendance on the first morning was, by my count, around 50, which dropped to 30 after lunch. (One of the orgnaizers from ONO claims 65 dropping to 40, but I was counting people in the room). WIPO provided a reception on the first day, catering for some 200 participants. Apparently less than 30 people stayed for this. Due to a family Bar Mitzva celebration, I couldn’t stay for the WIPO reception, but attended the academic program, or at least as much of it as I could, since everything was running appallingly late.  The second day also attracted a mere 30-40 participants. In other words, apart from speakers, organizers and guests flown in by WIPO, the event was patronized by two other patent attorneys, one of whom left at lunch time on the first day, and one professional from a tech transfer company.

I think that there a number of reasons for the poor turnout by local practitioners. These included a clear political agenda to the event, rather than a proper academic inquiry. This was evident from the adverts in the press, linking the event to social justice demonstrations, through the invitation to a Labor Party parliamentarian to open the event, to the lack of balance in the program without any presentations suggesting that traditional knowledge is not a commercial property.  The topic of traditional knowledge is also fairly esoteric and of less practical relevance to practitioners than, say, the recent patent reform in the US.

In the wrap up session on the second day before adjourning to tour the sites of Jerusalem, patent examiners and Dr. Moshe Tritel, who heads the life sciences division of our firm, related to where patent law is with regards to medical treatments and traditional knowledge. Moshe spoke excellently, clearly and with authority, but, as would be expected from a patent attorney rather than a political activist or academic, described the rationale for the current system and explained how the patent issues for the contribution over that previously known if not previously revealed, and doesn’t award all previous contributions. He suggested that IP law wasn’t the place to address third world grievances. Not surprisingly, the representatives of Ecuador and Tanzania, found his position a little unpalatable.

Adv. Eliamani Laltaika of Tanzania gave an excellent and impassioned response. One point he raised was that the geographic source of plants of animals whose tissues were used in a product should be acknowledged in the patent specification. This idea was rejected by Dr. Tritel as placing additional burdens on inventors.

It occurs to me that it should be hardly more difficult from the duties of disclosure of prior art existing in Israel and the US, and on the practice of the EPO and other offices to require certain information such as closest publications, referenced in the background of the patent specification. Judaism  has a long tradition of recognizing the moral rights of sources of traditions, knowledge, intelligence and sayings, to be named. Occasionally, where individuals are not known, the nationality or ethnic source of knowledge is recognized. The academic community references sources of ideas. Where something is traditional knowledge or where a plant comes from a geographic location, I see no reason not to reference this.

Academics who should have known better, pointed to the success of various developing countries in amending their IP laws to require incorporation of such sources.  Many Western corporations don’t bother filing in such countries, due to the lack of commercial justification for so doing.

I suspect that the lack of involvement by patent attorneys and IP lawyers in the development of the program contributed to the lack of interest by the profession in the end result. Of course, if an international treaty having more substance than the vacuous drafts currently available from WIPO does get wide ratification, this could change the IP world significantly and lawyers and patent attorneys may be surprised.

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.

An Israeli entity with all Israeli inventors lost priority rights in the US for a PCT application based on a US Provisional Application. This unfortunate incident highlights a trap for the unwary. This decision may be a tempest in a teapot with little practical importance.

Background

My regular readership may remember that, in the past, I have advocated taking advantage of different national holidays and weekends around the world to informally extend the 12 month Paris Convention deadline for filing PCT applications by a day or two.  See  Israel Patent Office Closed for Rosh Hashana, Yom Kippur, Sukkot and Id Ul Fitr

The incident

Apparently, a provisional application was filed in the US on 11 October 2005, and then, just over a year later, on 15 October 2006, a PCT application was filed in Israel. Since the Israel Patent Office was closed over the period 7th – 14th October 2006 due to the festival of Sukkot, the PCT was filed on Sunday 15th October 2006 when the patent office reopened and was considered as timely filed by the PCT authorities who recognized priority from the provisional application.

Eventually, a US national phase entry was filed claiming priority from the provisional application. However, the US Patent Office pointed out that since the priority application was a US (provisional) application, under Sections 119(e) and 363 of the US Patent Law and Section 8 of the PCT Agreement, the issue was whether the USPTO in Arlington Virginia was open or not, or more formally, if there was a holiday in Washington DC.

The USPTO’s decision points out that the application could have been filed on the 11th October 2006 in the US, despite it not being a competent receiving office. More relevant perhaps, it could have been filed at the International Bureau in Geneva that day.

Consequently, the USPTO has ruled that as far as the US is concerned, the priority date has been blown, and the effective filing date of the US application was 15 October 2006 and not 11 October 2005.

The decision is subject to appeal.

Comments

The USPTO seems to be over-ruling the PCT Convention Rules which seem fairly explicit. See http://www.wipo.int/pct/en/texts/rules/r2.htm#_2_4 and http://www.wipo.int/pct/en/texts/rules/r80.htm#_80_5

 Thankfully it wasn’t one of our cases. It could have happened to anyone. Only a week and a half ago we had a Paris Convention deadline over Sukkot for an application first filed as a provisional for one of the Israel Universities, who  also dictated that we file the priority application as a provisional. Luckily, the lawyer who handles our PCT filings double-checked with the patent office, so we filed early.

Where the client can afford it, we recommend filing in the US concurrently with filing a  PCT application as the US is frequently the most important jurisdiction and an early allowance is valuable. By selecting the European Patent Office as the International Search Authority the applicant can decide on where to file with searches from both the EPO and the USPTO, which provides a higher degree of certainly that the relevant prior art has been flushed out.

The Specific Case – storm in a tea cup

As the Israel Commissioner of Patents saw fit to white-out the name of the applicants, the various application numbers, etc. I shan’t publish this information. Others as nosy as me, will have little trouble making a shortlist from the filing date!

That exercise was quite revealing actually. I myself filed an application for Amitech (a chip substrate manufacturer) back on 15th October 2006 for something claiming priority from an 11th October 2005 filing.  In that instance, the priority application was an Israel Application. It is not totally clear how relevant that is. The decision certainly mentions that the priority document was a US provisional, but it is not clear whether this was the reason for the USPTO over-riding the PCT Convention rules.

Furthermore, three PCT applications were filed on that day by different Israel universities, each claiming priority from applications filed on 11 October 2005 - two of them claimed priority from US provisional applications - one was for the same university that I filed an application for a week ago and could easily have filed after Sukkot were it not for a super-efficient back office.

Interestingly, the three university applications filed that day were handled by different firms. There were also two applications filed by Israel industry that claimed priority from provisional applications. This indicates that at least eight fellow practitioners made the same ‘mistake’.

As a PCT application was filed, one presumes that the specific application was not disclosed prior to filing the provisional and could have been filed in other jurisdictions. If this is the case, the damage is minimal since the US operates a first-to-invent and not a first-to-file regime. Even without formally recognizing priority from it, the US provisional is compelling evidence that the inventors had conceived of their invention and reduced it to practice by the provisional filing date. The filing of the Provisional and the chain of events establishes diligence in pursuing a patent in the US as well. Thus it seems likely that no real harm has been done by this decision and the case is a storm in a teacup. 

Where things could be nasty though, is if the original provisional filing was made on 11th October 2005 for something to be published between 11th October 2005 and 15th October 2005.  That sort of thing can and does happen with inventions coming out of universities where the applicant needs a filing date prior to publishing a scientific paper or conference proceedings. Indeed, of the 6 or 7 applications filed in Israel on 15th October 2006 that claimed priority from an application filed on 11 October 2005, three were filed on behalf of university tech transfer companies. In such a scenario the refusal by the USPTO to accept priority from the provisional will invalidate the US patent. This could be very painful for those concerned.

Another way to look at this is that in essence, the USPTO has so far decided that since the PCT application designating the US was, under US statutory law, a US non-provisional filing, it had to have been filed with an effective date under US law within the statutory one-year life of the US provisional application (if any priority benefits were to be accorded).  The only exception would be if based on US weekends / holidays when a later filing will, under proper circumstances, still suffice under US law. 

To attempt to overcome the decision, the US Attorney of Record tried arguing that the USPTO often creates additional US holidays by executive fiat, such as when record snow fall or some other emergency effectively shuts down Washington DC.  Consequently, the absence of specific statutory authority relief in this instance was not really an obstacle and since the USPTO has taken a position that conflicts with PCT Rule 80.5 as well as with Articles 27 and 47, this seems a reasonable approach. The argument has so far fallen on deaf ears at the USPTO.

Nevertheless, the USPTO does not consider its latest action as constituting a “final” administrative action and therefore a court action under the Administrative Procedures Act would be premature.  In any event, since the current record does not indicate any factual need for the claimed priority benefit, the whole issue of priority in this specific case may be moot, and perhaps could be reconsidered if and when the claimed priority benefit becomes materially relevant.  Should the priority claim for the specific case ever become an real issue, the USPTO’s decision can be challenged at any point prior to 6 years from the “final” agency action.

Dr Meir Noam the Commissioner of Patents and Trademarks, and Ms. Nurit Maoz, Head of the Trademark Department, both briefly spoke, followed by Andre Ntamack, Head of International Trademark Examination at WIPO who was the main speaker.

After endearing himself with the audience by using a smattering of Hebrew phrases, he mentioned that it was his second visit and presentation on the subject, so apparently he was also experiencing deja vu.  Ntamack then went on to explain about Madrid and how to file and prosecute international applications. The chocolate croissants were delicious. The coffee was Elite Instant and Turkish (Botz), and there was no tea.

The lecture hall was comfortable though, and apart from the usual internet hiccups and problems with the microphone, etc. the event went smoothly. Andre Ntamack gave Jerusalem as an example of a location in Israel, which, for a UN employee, was quite refreshing. I am not sure if he knew that Malcha, where the Patent Office is, was under Jordanian Occupation prior to 1967.

When asked, he stated explicitly that there were no provisions for rejecting an application that was also ratified in Israel, or where applicant was domiciled or incorporated in Israel or of Israel nationality. Somehow I suspect that Iran, Syria and other members of the Madrid Protocol that do not recognize Israel’s existence, and apply a third-party boycott, will no doubt create some wiggle-room.

Ntamack estimated that the overall effect of Madrid would be more not less work for local practitioners. What is certain is that it offers local industry and exporters with a cost-effective way to get protection for their trademarks, that they’d be advised to utilize.

As is typical of these events, it offered a good opportunity to exchange greetings with other practitioners.

The Israel Patent Office and WIPO are to be congratulated for puttign together a professional event.

The cost for filing a PCT application will drop significantly in September. The International filing fee is being reduced from $1300 to $1147 from 1 September 2010, and, as of 15 September 2010, the Search fees using the European Patent Office as the International search Authority will cost $2185 instead of $2485. Additional page fees – past the first 30 (including forms) will be reduced from $15 a page to $13 a page.

The official fees for a PCT application, will, therefore be about 15% cheaper which is good news for applicants!

The Patentscope Seminar is to be held on 20th and 21st of July 2010. 20th July 2010 is Tisha B’Av, the fast instituted two thousand years ago to remember and mourn the destruction of the Temple of Jerusalem. 

Legend has it that the Emperor Napoleon Bonaparte, passed a Parisian synagogue on Tisha B’Av and heard the sounds of mourning and crying. On enquiring what the fuss was about, “What’s this all about, he learned that the Jews were in mourning the loss of their Temple. “When did this happen?” Napoleon asked.  “About 1700 years ago.” was the answer he received, prompting Napoleon to note that a people who has mourned the loss of their Temple for so long, will merit to see it rebuilt.

In the Modern State, the Fast of Av is  an optional holiday, that workers can choose to take as holiday; the other options being 1 May – the Marxist favourite and Idel Fitteh, the Moslem holiday that finishes the Fast of Ramadan.

Places of entertainment such as theatres, restaurants and cinemas are closed, but many workplaces are open.

Is it appropriate for the seminar to be held that day? I think such a seminar is more like work than entertainment and Tisha B’Av is an optional work day. Personally I think that making the second day (21 July 2010) available for all those observing the Fast of Av is a reasonable compromise and the profession will be able to vote with its feet.

It is, however, unfortunate that the issue wasn’t raised earlier. I imagine an alternative two days could have been arranged with WIPO. Also, how can we complain that the AIPPI held their conference over Simchat Torah last year if the Israel Patent Office is equally insensitive? In some respects it’s like the Israel football team playing on Rosh HaShannah.

Perhaps a suitable gesture would be to not provide refreshments on the fast day?

I hope that other firms will let attorneys take tisha B’Av off as a day of optional holiday, and let them attend the seminar without creating a fuss.

Let us hope that by next year, the issue will be moot.

Dr Francis Gurry, the head of WIPO, came to Israel to receive the accession papers for Israel to join the Madrid Protocol. He addressed the profession in a joint event held at the Dan Hotel, Tel Aviv, and co-hosted by the AIPPI, the AIPA and LES, that was attended by some 60-70 practitioners.

The attendance was a little disappointing but it  will be noted that there is a large overlap between the organizations and a lot of practitioners, like myself, are still jet-lagged from INTA – and some are still in the States.

Dr Gurry was supposed to speak about patent agent privilege and the importance of having international standards. He dealt with this quite quickly and explained why Israel would need both developed and developing world countries to support the move for it to have a chance of being adopted. He went on to relate to international harmonization, and, in light of the growing number of patents filed in the Far East, to call for International Search Reports to be produced by an international team of examiners.

Regrettably, harmonization of patent practice across the globe still seems to be held up by some 150 or so rogue states that continue to illogically resist to conforming their practice to the generally accepted international norms like first-to-invent, grace periods and the like.

Words of welcome were delivered by Tal Band represented the AIPPI, Michal Hackmey represented the AIPA and Hananel  Kvatinsky represented the LES.

Tal Band spoke about Israel joining the OECD and the country’s prominence in creating patents. He suggested that criticism of Israel IP practice (i.e. the US Special 301 report) was more politically motivated than factual and that the correct balance between private interest (patents) and the public interest (generic, non-patented technologies) was jurisdiction specific, and that the Israel balance was reasonable.  

The refreshments were excellent, with a milky buffet including vegetables, rolls, crackers and cheeses. We note that a couple of cheeses were mouldy, but that may have been the point. The coffee was good, the wine disappointing, but there was wine – which is one up on the usual standard of these affairs. There were also a range of fresh fruits and some really excellent chocolate brownies.

Last week, the Israel Government voted to join the Madrid Protocol for the registration of trademarks,and today, on behalf of the Minister of Trade and Industry, Dr. Meir Noam, Israel Commissioner of Patents and Trademarks presented a letter to Francis Gurry, the Director of the World Intellectual Property Office (WIPO).

Israel amended her laws to facilitate this a couple of years ago, but, due to problems with the trademark website, implementation was put off indefinitely. Now the treaty will come into effect in three months time on September 1, 2010.

Dr Noam, Nurit Maoz, Li Maor and everyone else who was involved behind the scenes are to be congratulated.

This seems as good a way as any to mark World IP Day!

Actually, WIPO is merely jumping onto a rolling bandwagon, with the various national Patent Offices becoming Authorities and choosing new badges for themselves.

I hope Frances Gurry, the head of WIPO who kindly sent me a press release about the new branding will forgive me for pointing out that the new logo is reminiscent of a tube of Sensodyne toothpaste.

Anyway, in the interest of avoiding embarrassment for them losing their new image, I hereby offer my services to WIPO to help them register their mark as a trademark in Israel!