America-Israel Patent Law Blog

[Revised October 5, 2010, about 12 hours after the initial posting.  Thanks to Dr. Richard Korn of Potter Clarkson in the UK for catching the obvious – the provisional application number that wasn't redacted from the document sent out by the ILPTO.  That's what I get for blogging after midnight.]

At the end of last year I posted about the plight of an Israeli PCT applicant for whom the USPTO refused to accord priority from his earlier US provisional application.  The provisional was filed on October 11, 2005, but the one-year anniversary this date fell on a day on which the Israel PTO was closed, so the applicant filed its PCT at the ILPTO/RO on the next day that the ILPTO was open, viz. October 15, 2006.  The catch was that the USPTO was open on October 11, 2006, as was the PCT International Bureau.  So upon entry into the national phase in the USA, the USPTO adopted the view that the provisional had expired on the one-year anniversary, and therefore the applicant lost the benefit of that US provisional application.

Subsequent to that post, in February of this year the applicant petitioned the USPTO to accord priority from the provisional.  In August the USPTO issued a decision on the petition, in which it again said, “Sorry, Charlie”.  That’s not the interesting part of the story.  What’s interesting is that this tale has been making the rounds in the community of Israel patent practitioners for some time, but only yesterday did the ILPTO send out the attached notice warning practitioners about this potential problem, along with a copy of the petition decision in which identifying information was redacted.  (Click here to download a copy of the redacted petition decision; click here here for the unredacted petition decision.)   So while the Commissioner is to be commended for publicizing this issue, one wonders what took him so long to notice there’s a problem and/or to only now see fit to warn Israel practitioners of this potential pitfall. 

Even more interesting is the fact that the USPTO itself is inconsistent in its application of the U.S. patent statute and the PCT.  The application in question, Yissum’s PCT/IL2006/001187 (published as WO 2007/043057; the US national phase application is USSN 12/078,317 – see the filing receipt - and the provisional application number is 60/724,904) isn’t the only one having a provisional filing date of October 11, 2005 and a PCT filing date in the ILRO of October 15, 2006.  There are three others that fit that bill.  But this is the only one of the four in which the USPTO refused to recognize the priority claim. 

Thus, for example, PCT/IL2006/001179, published as WO 2007/043051, also claims priority to a US provisional filed on October 11, 2005, and was filed at the ILRO on October 15, 2006.  But in this case, the USPTO accorded the priority claim for that national phase application, USSN 12/089,421: the filing receipt reflects the priority claim to USSN 60/724,875, and the published patent, US 7,795,887, even shows the priority claim on its front page.  Similarly, the filing receipt for USSN 12/088,896, the national phase application of PCT/IL2006/001176 (published as WO 2007/043049), which was filed at the ILRO on October 15, 2006, shows the priority claim to USSN 60/724,794, which was filed on October 11, 2005.  And the same is true of PCT/IL2006/001174 (published as WO 2007/043048), filed at the ILRO on October 15, 2006: the filing receipt for the national phase USSN 12/083,222 shows the priority claim to USSN 60/724,790, filed October 11, 2005. 

I don’t know if Yissum plans to request reconsideration of its petition and to eventually appeal to the courts.  If the USPTO’s position with regard to Yissum’s application is ultimately upheld as being correct, then the putative granting of the priority claims in the other three cases is erroneous, and those applications are not entitled to the priority claims.  Conversely, if the USPTO’s position is wrong – a distinct possibility, given its recognition of the priority claims in three other applications in identical circumstances – why is the USPTO hassling Yissum?