Lord Chesterfield once wrote to a friend. “I’m sorry that I have written you a five-page letter; I didn’t have time to write a one page letter.”
In Opposition to Israel Patent No. 16800 to PMS Armor LTD Opposed by DSM IP Assets, Ms Yaara Shoshani Caspi requested that the summaries be submitted on no more than 45 pages with standard margins and font.
Adv. Mati Barsam, representing PMS Armor LTD seemed to misunderstand the cap of 45 pages and filed 52 pages. Also, since he did not use double-spacing, the summary submitted was much wordier than it should have been.
Ms Shoshani Caspi considered that it was well-known that standard format was double spacing, David font at 12 point with margins of at least 2 cm on all sides. She ruled that in consequence of the over-long submission by PMS Armor LTD, DSM IP Assets could file up to 50 pages.
Citing the relevant case-law 16840/06 P .A. N. vs. Public Guardian, 20 Apr 2007, it is stated that:
“inter alia, limiting the amount of summary material is designed to ensure equality between the litigants in their access to the courts, the use of a smaller font is an attempt to overcome the limitation imposed by the court and to obtain an advantage over opposing counsel thereby”
So as to be absolutely clear, although the respondent was allowed to submit 50 pages, they were required to do so in double spacing, David font at 12 point with margins of at least 2 cm on all sides. PMS Armor LTD was ordered to pay 1200 Shekels + VAT to DSM IP.
If I was sitting in judgment on this case, I’d have been tempted to send the summary back and asked for it to be shortened, giving maybe 3 days, with the alternative that only the first 45 pages would be considered. If the summary is in single spacing, would reformat in double spacing and accept the first 45 pages only.
That said, Ms Shoshani Caspi’s approach is, of course, both reasonable and in line with Israel Patent Office policy to charge excess fees for filing long applications, and with WIPO’s policy of charging per page for PCT applications with more than 30 pages (including forms).
45 pages seems to me to more than enough to summarize just about anything. Particularly in Hebrew which generally requires only about 65% of the space taken by the same material in English. Once arguments are constructed and written up, it should be possible to cut down verbage and to edit down at least 20%. When I recycled reedited IP Factor blog entries for columns in various magazines such as WIPR, MIP and IAM, each one had its own word allowance, and by careful editing, it was always possible to cut articles down to size. It’s a question of being succinct and focused. Writing a 400 word précis of an article was a standard requirement to matriculate in English Language ‘O’ levels in the UK. It is a useful skill.
Since the advert of word processing, patent applications have become longer. Whilst it is not always possible to submit PCT applications in 30 pages, avoiding excess claim fees, for many inventions, this is more than adequate.
It seems to be easy to fall for the temptation to copy-and-paste and to write more, than to use the available editing facilities to shorten one’s work. I suppose when one employed scribes and wrote on expensive material like vellum, things were different.
Some clients and attorneys seem think that the longer the submission, the better. However, the opposite is usually the case. It is unlikely that a 50 page summary can be read in one sitting and for the adjudicator to work from a submission this long, the adjudicator really needs to summarize the summarize, and this is ridiculous. It is not just summaries of course. There are some IP firms that seem to file telephone directories for every application. This is generally unnecessary.
As an aside, as someone who regularly wades through IP decisions, I think that it would be nice if IP adjudicators and judges tried to cut their rulings down by 20% as well. Then again, no doubt my blogging could be focused and succinct.