America-Israel Patent Law Blog

Earlier today I posted about a notice circulated by the ILPTO in response to the USPTO’s decision not to recognize the priority claim of a PCT application filed at the Israel Receiving Office more than a year after the priority US provisional application was filed.  An interesting aspect of that notice that I didn’t discuss in the earlier post was the apparent failure of the ILPTO to grasp the limited scope of the USPTO’s position.  Although the notice can be downloaded here, for those who don’t read Hebrew the following is a translation of the notice; pay careful attention to the second paragraph:

1.             Recently a decision was given by the U.S. Patent Office on July 28, 2010 regarding a PCT application filed in Israel.  Attached is the decision for your review, following redaction of the detils that identify the applicant. 

2.             According to the decision, the USPTO will not recognize the priority claim if a PCT application is filed at the receiving office more than 12 months after the priority date, even if the “lateness” in filing the application was due days of rest, holidays and holy days on which the receiving office was closed.

3.             This decision is based on section 119(e) and 363 of the U.S. patent statute (35 U.S.C. 119(e), 35 U.S.C. 363) and Article 8 of the PCT treaty [redundancy in the original – DJF]. 

4.             I wish to clarify, that mail be submitted to our office until 24:00 of any work day of the [Israel Patent] Office.  It is not possible to submit any documents to our Office on days on which the Office is closed, including Fridays, Shabbat [Saturday] eves of holidays and holidays and days on which an appropriate notice is given to the public.

Dr. Meir Noam, Commissioner

The notice implies that the USPTO will never grant a priority claim when the PCT application was filed more than year after the priority date.  That’s not what the decision says.  The decision says that the USPTO will not accord priority when (a) the priority application is a U.S. application, and (b) the PCT was filed more than year after the priority application was filed (c) on a day when the USPTO itself was open for business – although as noted in the previous post, it appears that not everyone at the USPTO who processes applications is aware of this. 

Where the ILPTO got it wrong is that if the priority application is a non-U.S. application, and the RO was closed on the one-year anniversary, the USPTO may recognize the priority claim.  Thus, in the present case, had the priority application been an Israel patent application filed on October 11, 2005, then the USPTO probably would have recognized the priority claim for the PCT filed at the ILRO on October 15, 2006, the first day after October 11, 2006 that the ILPTO was open.   This is what happened in the case of US 7,700,057, which was filed as a national phase application of PCT/IL2006/001185, which itself was filed on October 15, 2006 claiming priority, inter alia, from two Israel patent applications filed on October 11, 2005.  USSN 12/083,371, although since abandoned, was filed under similar circumstances and likewise accorded the priority date of the Israel application.

It’s not clear if the ILPTO understood this subtle distinction or not.  It may be that the distinction was understood, and that paragraph 2 of the notice is just another example of the Commissioner’s lack of command of the written word (the earlier examples being the numerous times he sent out Circulars, only to have to subsequently send out one or more “clarifications” because he didn’t express himself clearly the first time).  Or it may be that the ILPTO really misunderstood the USPTO’s decision, a sobering thought considering how often reference is made to U.S. case law during proceedings before the ILPTO. 

Although in my original post on this topic, I suggested that the USPTO’s position runs contrary to the spirit of the PCT – a view I still hold – it has to be admitted that there’s a certain logic to the USPTO’s position: a PCT application is meant to replace a spate of national filings within the one-year Paris Convention priority deadline.  Here, if instead of filing a PCT, the applicant had chosen to file only in the USA, then clearly the U.S non-provisional application would have to have been filed by the one-year anniversary of the U.S. provisional application (or the next day on which the USPTO was open), in accordance with U.S. law.  PCT Article 8 addresses this situation in a straightforward manner: insofar as a priority claim is concerned, the effect of that priority claim in the jurisdiction in which the priority application was filed is governed by the local law of that jurisdiction.

What’s frustrating for non-U.S. applicants is that because of both the low cost of filing a provisional, and the fact that a provisional obtains a §102(e) date (as both a sword and a shield, see the recent In re Giacomini decision on this point), many non-U.S. applicants use provisionals as their priority applications.  Since those same applicants cannot avail themselves of the USPTO as PCT RO (although as the petition decision point out, under PCT Rule 19.4, they could also file at the USRO which would transmit the application to the IB), they’re stuck with using their local office or the IB for filing their PCT application.  And lulled into a false sense of security by PCT Rule 80.5, they get bitten when they discover that the USPTO won’t recognize their priority claim. 

I wouldn’t go so far to say that Israeli PCT applicants who file their priority applications in Israel can sleep tight when the one-year deadline for filing their PCT application falls on a date when the ILPTO is closed.  While it would make sense for the USPTO and other national patent offices to honor such ostensibly late priority claims – in order for an international treaty like the PCT to work, some accommodation for local differences in workweeks, holidays and the like needs to be made – prudence dictates that the one-year Paris convention deadline be treated as fixed, so that if the deadline falls when the ILPTO is closed, the PCT should be filed at the ILRO before that date (or at the IB).  Perhaps this is what the Commissioner was trying to say in yesterday’s notice.