America-Israel Patent Law Blog

One of the nice things about the “electronic age” is that instead of having voluminous paper files to keep records, you can store all those documents on a drive that’s smaller than your hand.  This observation has not been lost on the USPTO or the ILPTO, which now both maintain official patent file records as a series of 1’s and 0’s on some suitable storage medium.  One problem with such records, however, is the ease with which they can be tampered. 

A common example of such tampering, familiar to many who file electronically at the USPTO, is the re-coding of submissions by the USPTO.  When you file a document via EFS, you have to provide a brief description of that document (or its constituent parts) from among a closed list of choices offered by the USPTO.  After you’ve submitted your document, some faceless, nameless creature reviews your submission, and if they don’t like the way you’ve coded it, they’ll re-code it themselves.  Sometimes this makes sense: if you accidentally indicated that a new set of claims was an information disclosure statement, it makes sense to re-code. But sometimes there seems to be no reason for the re-coding, or the re-coding is just wrong.

This morning, however, I discovered a more serious form of tampering, carried out by the Israel PTO.  Perhaps some other time, I will provide the whole story, but the short version is this: on May 17, we received via email a letter in which the ILPTO said an application of ours had gone abandoned for failure to file a response.  That was wrong: a response had been filed on March 29.  We immediately pointed this out to the ILPTO by phone and in writing, and included in our response to the notice of abandonment (a) a screen shot of the ILPTO’s web site, showing the filing of a response on March 29, and (b) a copy of the response we filed on March 29, downloaded from the ILPTO’s web site, bearing the fax imprint and the “received” stamp of the ILPTO.  Below is a partial screen shot from the ILPTO database taken on May 17.  Note the last entry, erroneously labeled “Application for extension” – this was actually the response to the OA.  

This morning I took a look at the ILPTO’s web site, and the March 29 entry had been removed.  Here’s a partial screen shot of the record as it now appears.  Note no March 29 entry, but the May 17 entry is there:

So the ILPTO effectively expunged the March 29 letter from the record, or at least removed the indexing of that letter: a copy of the March 29 letter actually appears in the pdf of the documents filed on May 17, which as of this morning were still accessible.

Is this just run-of-the-mill slipshod work by the people who maintain the ILPTO database (who regularly mis-code the descriptions of the entries), or is it a deliberate attempt to remove part of the file history?  We don’t know.  Aside from reinforcing the self-evident need maintain your own records, the episode demonstrates the wisdom of documenting the mercurial records of the PTO.

And it also illustrates why the ILPTO's intention to force everyone to file patent applications electronically, instead of allowing for filing in paper, fax, or electronically, is folly.  But that's a future blog entry.

(Readers familiar with Israel patent prosecution will note that the penultimate entry shown above, a March 10 letter from the ILPTO warning of potential abandonment of the application for lack of response, was also sent prematurely.  That's a common problem with the ILPTO but one that is readily remedied.  Also, the May 17 ILPTO letter was not uploaded to the web site prior to its being sent to us, which is probably a good thing considering it was sent in error.)