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If For Some Inexplicable Reason You Want To File A PCT Application In Hebrew, Where Can You File?

ILPTO logo The Israel PTO will accept patent applications filed in Hebrew, Arabic or English (as discussed in an earlier post), but I’ve never filed a patent application in Hebrew. Nor, as far as I know, has any local practitioner with whom I’ve ever worked or come into contact. Unless you’re only interested in protection in Israel, there’s not really much point: as soon as you go to file elsewhere, you’re going to have to translate to a more commonly-used language. To the extent I’ve encountered Hebrew-language patent applications, they’ve been filed by local pro se inventors.

Which brings up today’s trivia question: if for some inexplicable reason, you have an insatiable desire to file a Hebew-language PCT application, where can you file?

If you’re not sure, here’s a hint: it’s not in Jerusalem. (Don’t ask me why not, I’m still looking into that one.) Not the Vatican either, where you might expect someone to speak Hebrew.

Still not sure? The answer is at that bastion of Hebrew, the PCT International Bureau, in Geneva.  (Switzerland, not New York.)  It's good to know someone out there is defending the use of Hebrew. Unfortunately, since Hebrew isn’t a language used by any of the PCT International Search Authorities, you’ll still need to file a translation so the ISA can do its job.

My question is, if Israel eventually becomes an ISA itself, as is the plan, will the IL-ISA search Hebrew-language applications? Or Arabic ones? Or will Israelis need to file English translations to have their PCT applications searched at their own ISA? It may make business sense to allow searching of Arabic-language applications, thereby giving the only other potential Arabic-language ISA, the patent office in Egypt (that well-known IP powerhouse), a run for its money. Especially since Arabic, unlike Hebrew, is one of the languages in which PCT applications are published. That means that once there’s an Arabic-language ISA, in principle translations of Arabic-language applications won’t need to be prepared until national phase time.

EBY In contrast, since Hebrew isn’t a PCT publication language, even if the IL-ISA searches Hebrew applications, a translation will still need to be filed to enable publication. And given the miniscule number of Hebrew-language applications filed, there’s probably no need to enable Hebrew-language searches.  Sorry, Ben-Yehuda.

6 responses to “If For Some Inexplicable Reason You Want To File A PCT Application In Hebrew, Where Can You File?”

  1. Shabtai Atlow Avatar
    Shabtai Atlow

    I’ve wondered about this, too. Does the IL Patent Office have examienrs set up to exam an application filed in Arabic?

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  2. Dan Feigelson Avatar
    Dan Feigelson

    Good question. In general the examiners at the ILPTO don’t speak Arabic, but there may be some individual exceptions. My guess is that if an application were to be filed in Arabic, and there was no examiner in that technology who was fluent in Arabic, the ILPTO would order a translation to Hebrew or to English and use that as the basis for examination.

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  3. Joe Felber Avatar
    Joe Felber

    At one ILPTO seminer I attended a year or two ago, I met a new examiner. Because she was wearing a hijab, I will assume that she knew Arabic.
    So there you go; there is at least one examiner who knows Arabic.
    Dan, it’s funny that your post appeared today, because just this morning a client asked me if his PCT application had to be filed in Hebrew at the ILPTO. Honestly, I cannot understand why such would not at least be an option here in Israel.

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  4. Daniel Feigelson Avatar
    Daniel Feigelson

    Joe, everyone I’ve spoken to about this (include ILPTO personnel) thinks it’s funny/ironic that you can’t file a Hebrew language PCT at the ILRO. As I said, I’m not sure why you’d want to, but considering it’s an official language (along with English and Hebrew, see my earlier post on that topic to which I’ve now inserted a hyperlink), you should be able to. Come to think of it, this might make a good baga”tz for someone with too much time on their hands: can the ILPTO refuse to accept a PCT application filed in one of Israel’s three official languages?
    Here’s another quiz for you: can an Israel national phase application of a PCT be filed in Hebrew? The answer to that one appears in the statute itself.

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  5. Dalia Jayes Avatar
    Dalia Jayes

    This is an interesting issue. If Hebrew does become a language in which a PCT is published and assuming an ISA will search using the Hebrew language there may be strategic value in filing in Hebrew in certain circumstances. It may make it harder for a competitor. The competitor would need to obtain a translation of your PCT, which is expensive. The cost may deter a competitor from translating at this stage, providing you in effect with a pseudo extension of some of the benefits of an unpublished application.

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  6. Daniel Feigelson Avatar
    Daniel Feigelson

    I agree that if PCT applications were ever to publish in Hebrew, this would present a way of making it more difficult for competitors dig out information, but not impossible. CAS/STN and Derwent, for example, will still index the Hebrew-language publications and provide their own English-language abstracts, just as they do for Chinese, Japanese and Korean applications, as will WIPO. Plus the subsequent translation costs would have to be justified. In any event, I don’t foresee Hebrew-language PCT searching or publication any time in the near future – there are other statutory changes higher on the priority list.

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I’m Dan Feigelson. I’ve been practicing patent law for over 30 years. I’m also opinionated, as you may discover in reading my writings here.