America-Israel Patent Law Blog

A recurring theme on this blog is the topic of divisional applications
in Israel, specifically the impropriety
of the Israel PTO’s decision a few years ago to limit the time frame for
the filing of divisionals.  A quick
recap: the Israel patent statute allows applicants to divide an application as
long notice of the allowance of the application hasn’t been published.  Hence if I have application A, at any time
before the ILPTO publishes notice of its acceptance I may file divisional
application B.  I may then file
divisional application C at any time before the ILPTO publishes notice of the
acceptance of application B.  And so
on.  The end result is that I can keep an
application pending for the entire 20-year term of the original application A,
in the same way that continuation practice in the USA can be used to achieve
the same result.

For over 40 years following the enactment of the statute in 1967, the
ILPTO followed the statute.  And then, sua
sponte (or maybe at the behest of someone, like a lobbyist for an industry
with a strong patent antipathy), the Commissioner decided that the ability of
applicants to keep application pending in perpetuity was bad policy.  So he unilaterally announced that neither his
predecessors as Commissioner nor the courts that had adjudicated divisionals of
divisionals understood the statute, and that the statute only allows the
filing of progeny applications from application A prior to the publication of
the allowance of A.  Hence C, a
divisional of B which is a divisional of A, can only be filed before notice of
the allowance of A is published. 

Lest one think that the filing of late-stage divisionals might be
possible in response to a lack-of-unity finding in an earlier divisional
application, the ILPTO published a clarification stating that the limitation on
the timing of the filing of divisionals applies even if the ILPTO makes a
finding of disunity in application B: if publication of the allowance of the
parent application A has already taken place, then the applicant has to choose
which inventions to continue to prosecute and which to give up on, because the
ILPTO won’t allow the applicant to file a divisional of application B. 

To date, it appears no applicant has challenged the ILPTO’s illegal
adoption of this policy.

I mention all this – again – because the EPO recently announced
that it is retreating from its similarly ill-advised foray into limiting the
window for the filing of divisionals. 
Once upon a time, an applicant could file divisional applications in Europe
ad infinitum, irrespective of the status of the ancestral cases.  Then it changed its tune, and said that a divisional application must be filed from a pending patent
application by the later of two years from the issuance of a first Examination
Report for a related family, or two years from the issuance of a new lack of
unity objection.  As noted by our
colleagues at Harrison IP, “The two
year period was initially introduced by the EPO to counteract a perceived abuse
of filing long series of divisionals to cause uncertainty to third parties.”

Now the EPO has announced that is
changing tack once again: effective April 1, 2014, EPC Rule 36 will change so that the
only criterion for the filing of a divisional application is that it be a
divisional of a pending European patent application.  In order to dissuade the “evergreening” of
applications by the serial filing of divisionals, the EPO is simultaneously
introducing a progressive fee scale for filing divisional patent applications. A
divisional patent application filed from an original European patent
application will only be subject to the regular filing fee (and of course the
retroactive payment of the EPO’s egregious renewal fees, but we’ll leave that
topic for another day).  But a divisional
patent application filed from a prior divisional patent application (i.e. a
divisional-of-a-divisional) will incur an additional fee (via an amendment to
Rule 38 EPC). This additional fee will increase in accordance with the generation
of the divisional application. Thus a second generation divisional would cost
less to file than a third generation divisional and so on. The actual fees to
be charged have yet to be announced; like the permissive policy regarding the
timing of the filing divisionals, these additional fees will take apply to divisional
patent applications filed on or after April 1, 2014.

Will the ILPTO follow suit?  No predictions here, but it would be
well-advised to do so.  Its current
untenable position flat-out contradicts the statute and is therefore ultra
vires; someday the ILPTO’s position is going to be challenged, and
the ILPTO is going to be slapped down by the courts.  If the unelected and unaccountable higher-ups
in the ILPTO erroneously think that policy-making is part of their job, then
they can try to impose their will via fee setting, just as the EPO has now
done.  Fee-setting is done legally via
rulemaking, with the Justice Minister promulgating the rules, subject to
approval from the Knesset Statute, Constitution and Law Committee.  Given the particular personalities currently
involved, it’s not clear that such an attempt at rule making would be
successful, if it were to even gain any traction at all.  But that’s how things work in democracies,
even that of the People’s Free Democratic Republic of Israel.