Recent Israel Oral Exams Illegal and Candidates who Failed Should be Allowed to Resit

According to Section 143 of the Israel Patent Law, potential candidates have the right to be examined by a committee that does not include more than one licensed patent attorney. The law is as follows:

143. (a) If a person wishes to be registered in the Register of Patent Attorneys, then he must pass an examination in the prescribed manner in order to prove that he has an appropriate knowledge of the Law of patents, designs and trade marks of Israel and in foreign countries and of other relevant enactments, all as prescribed, and that he has command of the Hebrew language and of at least one other language required for his work, as prescribed.

(b) The examination shall be conducted by two or three examiners, among them not more than one patent attorney, and in each case they shall be selected by the Minister of Justice – or by a person appointed by him for that purpose – from a panel of examiners determined by the Minister.

(c) The Minister of Justice may exempt categories of candidates from the examination if it can be proved in some other prescribed manner that they possess the knowledge required in an examination under subsection (a).

The rationale for the committee not including more than one patent attorney is not given. I suspect that it is that licensed attorneys have a vested interest in keeping the profession exclusive. Particularly in the current market where there is less work than one would like.  Currently there are a mere 340 licensed patent attorneys, and only patent attorneys or attorneys-at-law may offer IP related services to the public.

The Basic Law of Freedom of Occupation 1980 indicates that cartel considerations should not prevent qualified people from entering the profession. It appears that the Minister of Justice can exempt candidates from the exam, but wannabee patent attorneys are entitled, by law, to be examined by a committee that does not include more than one patent attorney.

It has reached my notice that in the recent sitting, some candidates were examined by a committee that included, in addition to Adv. Ran Fogel, two patent attorneys: Cila Hess Milotin and Yossi Barkai.

It appears that this committee, which contravenes Section  143 of the Law, is illegal. The decision of the committee is therefore void and apparently candidates who failed the Exam have a right to immediate re-examination by a judicially competent committee.

This is not to be construed as a criticism of the judges themselves who I assume are individually competent. The triumvate isn’t.

To be accurate, there is a minor, intrinsic criticism: the ordinances list the material that the candidate is supposed to be familiar with. This includes the Israel Patent Law. The fact that none of the committee members noted that the committee was illegally composed somewhat disturbing. It is black and white law, after all.

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5 replies

  1. I took the oral exam 3 times, and each time 2 of the examiners were introduced to me as patent attorneys.

    • If your memory is correct the problem seems to be endemic.

      Last time the Patent Office flagrantly ignored the Law was with the obligation to publish bibliographic details of new applications in the Patent Office Gazette. In that instance, the Knesset retroactively amended the Law in January to come into effect three years later.

      With publication in the gazette, the law was antiquated and arguably then Commissioner Dr Noam’s position of Internet publication was a valid interpretation, although a class action was filed.

      Obviously I can’t comment on whether you should have passed on your merits or not, but I don’t see that a viva should be repetitively failed by intelligent people who have passed at least first degrees and worked for a couple of years in the field. Many candidates are licensed in the US or elsewhere, some are attorneys at law. Many have higher degrees.

      Did you pass eventually?

      Incidentally, the guidelines that Dr Noam drafted regarding when candidates can sit the exam, though sensible, were probably ultra vires as well.

      • I passed the third time.
        On all three occasions, there was one person who was a patent attorney, one person who was a lawyer, and one person who was both, as Richard noted, so I guess this is policy.
        Before I passed, I asked patent attorneys how this law could simply be ignored, and usually the answer was (jokingly) “why don’t you tell the examiners that they’re breaking the law?”. I did not try this.

  2. In my experience, the committee almost always includes one patent attorney, one attorney-at-law, and one person who is both a patent attorney and an attorney-at-law. I took the exam three times, not on consecutive occasions. Ironically, the time that I passed, the committee that actually sat was legally valid because one of the patent attorneys had recused herself due to the existence of a business relationship between us.

    The problem, of course, is that no one who has not yet passed is going to complain, because that will only guarantee that he or she never passes.

    My real complaint with the oral exam is not that the committees are generally illegal — why should the patent attorney examination be any different than anything else in Israel — but rather that the examiners are free to ask whatever they want, which means that they can adjust the difficulty of the exam based on whether they want the candidate to pass. In one blatant case, a committee passed one candidate after 7 minutes, the exam consisting of “Explain to us what ‘inventive step’ means,” while a second candidate was kept for 45 minutes because that was how long it took them to find a question he could not answer (neither of those candidates was me). It seems to me that if we need an oral exam at all — and it’s not at all clear to me why we should, since oral argument is not part of a patent attorney’s job — then the committee should agree in advance on a single set of questions. By that I mean, a menu of, say 15 “easy” questions, 15 “intermediate” questions, and 15 “difficult” questions, and each candidate will be asked 3 questions from each list.

    • Actually Richard, the patent regulations does give some indication what candidates should be tested on. However, one of my friends who served as an examiner not too long ago was surprised when I told that. Apparently, and this is worrying, she never bothered to check. She also thought that an examiner who was both an attorney and a patent attorney could be considered as being an attorney for purposes of this law. Then, on conferring with her partner who is a litigator, she got back to me to say that she’d chnaged her mind.

      When I raised the issue of this past sitting being apparently illegal and thus void with Michal Hackmey, the eternal chairperson of the Association of Patent Attorneys in Israel, she contacted the Commissioner who also stated that in his view, a committee including a patent attorney and someone with both licenses was OK. The problem is that every litigator I’ve spoken to thinks that that is not an acceptable interpretation of the Law.

      Technically, the appointment of Commissioner of Patents is supposed to be equivalent to a District Court judge, and requires 10 years post license attorney-at-law experience, but it seems that the Commissioner has no status regarding the exams. I think that Dr Noam’s attempts to create order a couple of years back were ultra vires.

      I don’t think that if anyone were to challenge the validity of the recent exams in a court, the interpretation of ‘not more than one patent attorney’ as meaning not more than one patent attorney who is not also an attorney-at-law would be accepted. Someone having both licenses because of being in the field prior to 1967, like Adv. Arnan Gabrieli, who is an accomplished IP lawyer and who does not have a science or engineerign degree and to the best of my knowledge has never written a patent, would also not be able to sit on a committee with a regular patent attorney. We’ll see if I am right if anyone bothers to take this further.

      As to the question of what is inventive step, I think one could write a doctoral dissertation on the subject. It is not defined in the Law or the regulations, but there is rather more to the topic than Shamgar’s musings in Hughes Aircraft. In my opinion, not the best question for an oral exam.

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