America-Israel Patent Law Blog

As has been discussed here before, under the leadership of the previous Israel Patents Commissioner, Meir Noam, in 2008 the ILPTO announced that – contrary to what was required at the time by statute – it would no longer publish its notices in paper format, and instead would publish only via its website.  Among other things, this resulted in the validity of thousands of patents being left in limbo, since by statute paper publication of certain notices was a prerequisite for patent grant.

Although the problem was solved early last year by a statutory amendment that retroactively approved the online-only publication, the shenanigans of Dr. Noam and the senior PTO staff who supported his moves aroused the ire of Knesset Member David Rotem, the chairman of the committee through which patent-related legislation must past.  As a quid quo pro for fixing the mistake of Meir Noam et al., Mr. Rotem required the Justice Ministry to agree to refund the publication fees of patentees and applicants whose applications published during the period in question.  The substantive need for such refunds is dubious – the amount of work involved in publishing online was nearly the same as publishing paper copies, and the retroactive legislative amendment dispensed with any uncertainty about the status of any patents otherwise affected by the online publication – but demanding refunds of this nature makes for good political posturing.

After much wrangling and untold wasted man-hours figuring out how the ILPTO would refund the fees, the ILPTO has now announced (in Hebrew only) that refunds of fees for publications and other announcements in the Patents Journal that were published exclusively online between March 20, 2008 and June 30, 2010 will be made available.  Affected parties must fill out a form (also only available in Hebrew, and only useful if you have an Israeli bank account), which must be returned to the ILPTO by September 5, 2012. 

It’s unclear just how many refunds will be requested.  The attorney time involved in notifying clients, requesting refunds and disbursing the money (or even just crediting clients’ account) will likely surpass the amounts in issue, which are only several hundred shekels per instance.  Moreover, in what appears to be an obvious effort to reduce the number of refund requests to be filed, the ILPTO has indicated that separate forms must be submitted for each refund requested; each form also requires three different signatures from the requesting party.  Given the superfluousness of the refund program, this may be one instance where bureaucratic red tape is welcome – there are better things the clerical staff at the ILPTO could be doing with its time than processing unwarranted refund requests.