There was a meeting last week between Israel Patent Examiners and Israel Patent Practitioners. Unfortunately, I missed the meeting so have asked Dr Erez Gur, an experienced sole-practitioner, who attended the event, to report what happened there.
Here is Erez’ report:
The Israeli Patent Commissioner organized a meeting between the Israeli Patent Examiners and Israeli Patent Attorneys on 20 September 2012. Since I was not considering reporting, I did not take notes with sufficient diligence nor did I write the names of the speakers. Accordingly, let me apologize ahead of time for any inaccuracies, lack-of-credit given and misinterpretations on my part. These are all unintentional and I would be happy to correct any such.
At the meeting, the large number of Examiners (my guess close to all 101 who make up the corps) greatly outnumbered the attending Patent Attorneys (about 20).
A Reinhold-Cohn attorney who chaired the meeting selected topics from a list prepared at Reinhold-Cohn and apparently provided to the Patent Office before the meeting. For each topic, a Patent Office representative responded in brief, and then the issue was opened for discussion.
Insufficiently detailed Office Actions
Alleged was that some (first) office actions are incomplete or insufficiently detailed and are, for example, copied from the PCT ISR/WO.
The Patent Office Representative, as well as commenting Examiners, responded that this is against the Office guidelines and should not happen.
Author’s comment: not stated was what can be done when such an insufficient office action is issued.
What level of textual support is required in a specification for a disclaimer to be added to a claim to overcome accidental anticipation.
The Patent Office Representative’s response was not clear to me, although it seems that the Examiners have much discretion and few guidelines.
Author’s comment: I felt that the discussion quickly lost focus, which is unfortunate.
This is a critical issue that should be officially addressed one way or the other. I prefer that the Office adopt the EPO policy for disclaimers (see G1/03 and G2/03).
In the old days, an Applicant was allowed to file as many divisional applications as desired, whenever desired as long as an application was pending, like in the USPTO.
Circulars issued by the previous Registrar, M”N 62 (June 2008), M”N 81 (February 2010, reissued March 2010) severely limited the ability to file divisional applications.
Michal Hackmey of Reinhold-Cohn presented a strong case for canceling these circulars and reverting to the original practice.
Erez Gur’s Comment: I agree with Ms. Hackmey, I think no one loses and everyone gains from allowing the original unlimited divisional filing regime.
Examination of Divisional Applications
The Reinhold-Cohn associates raised an issue of which I was not aware: the use of Article 2 of the Patent Law (right to apply for a patent for an invention) together with Article 8 (a patent shall be granted for a single invention) to reject divisional applications. Apparently, some Applicants have experienced a situation where Article 8 is applied to force filing a divisional application from a parent application, and then the divisional claims are rejected because they are considered the same invention as the parent. The ensuing discussion was focused on what is “the same invention”.
It appears that the Patent Office is considering instituting a policy of rejecting the claims of a divisional application according to Article 5 (lack of inventive step) in light of the parent application’s claims.
De Erez Gur’s comment: I can’t believe my understanding is correct as it contravenes Articles 4, 5 and 6. I believe the Office should officially address this issue.
Here I am at a loss. I suspect that the issue is double patenting and not lack of inventive step over the parent application, since the divisional is entitled to priority of the parent application anyway. Comments from participants are invited.
Dr Erez Gur’s Conclusions:
a. Such meetings are welcome and should be regularly scheduled.
I believe there are misunderstandings between Patent Attorneys and Examiners that could be worked out in such meetings.
I also think this could become a forum to teach Patent Attorneys how to change work practice to help the Examiners better examine the applications.
b. In the future, such meetings should separate pharma/bio/chem from other arts.
c. Perhaps such meetings should be focused on very specific issues allowing more detailed discussion.
d. There should be a formal channel to allow Patent Attorneys to send their conclusions / comments / recommendations to the Registrar.
I have a few additional comments. I note that Michal Hackmey, President of the Association of Israel Patent Attorneys invited us to the meeting, and suspect that the initiative was as much hers as the registrar’s Dr Kling. I note that she asked for topics, and suspect that the topics discussed fairly represented those considered of general importance, and addressing real issues, rather than queries of practitioners who haven’t read patent office circulars, etc. I also don’t have a problem with such questions being provided to the examiners in advance. I’d prefer a reasoned thought out response to knee-jerk reactions.
I am not sure that I agree that separate sessions should focus on separate art areas. I think that where we still have a basically one-size-fits-all patent regime, examination practice should be standardized across the various regimes. This type of meeting should serve as a common ground for Examiners and practitioners in different fields to get together. I would expect that a competent practitioner should have some idea of differences between different technology areas.
I submitted a topic for discussion to Ms Hackmey that apparently wasn’t discussed. As I didn’t attend the meeting, I can’t really complain, nor can I be sure that it wasn’t discussed, and Erez just forgot to report on it. My gripe is that all too frequently, examiners concentrate on the patentability of the main claim, and rarely provide arguments against dependent claims, or an indication of what claims would be considered allowable if made independent.
Where the objection against the main claim is on grounds of inventive step (section 5), it would be very helpful if the Examiner would provide guidance as to which features claimed in dependent claims would, in Examiner’s opinion, provide inventive step. I think that practitioners would be able to advise clients as to whether to fight for wider protection or to settle for a narrower patent for something that the examiner is prepared to accept. Sometimes applicants want a patent quickly but are willing to invest in fighting for wider protection. One way to do this (in the US and elsewhere) is to accept what the Examiner is willing to grant protection for and to withdraw rejected claims to subsequently file in a divisional application. The advisability of this approach in Israel is dependent on both knowing what claims the Examiner is willing to issue, and on knowing examination policy regarding divisional applications – which is apparently less than clear.
We should be grateful to the Commissioner and Ms Hackmey for organizing this event. It is a pity that more practitioners didn’t attend. The meeting occurred in the week of Rosh Hashana when both the patent office and most practitioners were working only a few days – not the best time. I must admit that I was very busy with a tight deadline and actually forgot about the event. I can’t really blame anyone but myself for that. After all, diaries serve a purpose. Neverthless, I note that the Association and / or the Israel Patent Office could have sent reminders. The relatively poor turnout from practitioners can’t be in anyone’s interest.