Israel Patent Law Retroactively Amended to Take Care of Internet Publication Issue

The Knesset have just passed an amendment to the Israel Patent Law 1967, dated 12 January 2011, that comes into effect from 1 January 2007, that the first publication of biographical details, name of Applicant, title of application, priority and filing date for new patent filings is to be performed on the Internet and not in the Official (printed) Patent Office Gazette.

It would appear, therefore, that Dr Meir Noam did nothing wrong by publishing these details on the Internet from 2007 onwards, after all, the Law supports him!

In the US, retroactive legislation is generally unconstitutional:

Article 1 Section 10 of the Constitution: “No State shall pass any ex post facto Law”.

However, in 1798, the US Supreme Court ruled in Calder vs. Bull, that retroactive legislation is problematic with regard to Criminal Law, but is acceptable in Civil Law. In United States vs. Carlton (1994), the Supreme Court ruled that due process was not violated by retroactive Tax Laws. The retroactive amendments to US Patent Prosecution were thrown out in the GSK appeal as being unconstitutional.

In Israel Retroactive Laws are allowable, although they are considered problematic, and generally should be applied with care.

As Ex MK, Professor Amnon Rubinstein pointed out, in a Parliamentary regime in which the government holds power by virtue of the support of the Knesset, no practical importance attaches to rules regarding legislative guidelines. (Rubinstein and Medina – Constitution Law of Israel 2005, p. 170).

 In other words, the Knesset can do what it likes. 

Yaniv Rosnai believes that retroactive laws that change history are unacceptable and should be unconstitutional. In general, he is correct. I believe, however, that in this instance, the retroactive amendment to the Law is justified.

I note that back on 29 January 2011, I suggested that retroactive legislation was a better solution than refunds. See Dr Guy Rotkopf Appointed Acting Israel Commissioner of Patents. There is certainly a lack of due process. Nevertheless, it seems to be the lesser of the various evils available. 

Other cases where Israel has allowed retroactive legislation was to allow Eichmann to be brought to trial. In that case, universal law was invoked.   Former Knesset Member Asmi Bishara fled the country in 2007 when facing charges of spying for Hezbollah in the Second Lebanon War. Attempts to deprive him of is citizenship and Knesset pension were overturned by the High Court. A current case of interest is taxing the future profits of the private companies that discovered Israel’s newly found gas reserves. Enough ink has been spilled by others on the topic, so I will simply move on.

 The retroactive nature of the present Israel Patent Law amendment is necessary because otherwise the publication of patent application details on the Israel Patent Office Website before publishing a printed gazette is breach of confidentiality and itself illegal.

For formalists who are still not convinced, we note that publication in the Reshumot or Official Gazette is itself a legal fiction. As former Supreme Court Judge Chaim Cohen said of the Reshumot:

Publication in the Reshumot has a special value in that what is publicised there – and only there – is considered as published in practice: even though the man of the street never reads the rishumot, he cannot claim (in his defence) that he was unaware of what was published there, or at least creates the assumption of knowledge since the mass media will bring to the public that of public interest…

…; it creates the legal fiction that despite knowing that the  citizen doesn’t read the Reshumot, it is as if he has read, remembers and knows everything publicized there.

Free translation of Haim Cohen, The Mishpat, Bialik Publishing House 1991. 

Nevertheless, it is not clear that the amendment will hold up if challenged in court.  We note that a class action was filed against the State and against the Commissioner of Patents by a couple of Haifa inventors / applicants Yair Nissan and Yan Lishinsky. Nissan and Lishinsky, if they prevail, are entitled to a large windfall. Since the Knesset has retroactively amended the Law, the grounds for Class Action no longer exist. Arguably this goes against the Basic Law relating to property since the amendment is to the detriment of  the filers of the class action. Alternatively, however, one could argue that the interests of the parties has been dealt with. Nissan and Lishinsky may be estopelled from claiming that there is a problem with the amendment since the basis of their class action is that failure to obey the Law jeopardized their rights, and the Law has now been followed. Apart from Nissan and Lishinsky it is difficult to see who else would challenge this Mapai-like Knesset legislation. Since Internet publication is superior to publication in the Patent Office Journal in every regard.

We note that legislation with retroactive effect that changes historical reality has a long Jewish tradition. The Rabbinical satirical treatment of David and Bathsheba, wherein accidents of circumstance resulted in Uriah having divorced Bathsheba as of first leaving for battle, due to his not returning, is a classical example of this. Under this interpretation, Nathan the prophet’s allegations and King David’s admission that he had sinned are both indicative of the moral problems inherent in retroactive legislation, nevertheless, Jewish law countenances the retroactive effect of legislation in extreme circumstances. 

Meanwhile, it is not clear if the refund of first filing fee to applicants as promised by then Secretary General of the Ministry of Justice and now Acting commissioner Dr Guy Rotkopf, will take place.  the amendment removes reference in the Law to publication in the reshumot at Applicant’s expense. Will previously paid publication fees be considered as part of the filing fee and not refunded, or will the Israel Patent Office provide refunds? We await clarification on this issue.

Categories: IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Related, Patents

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