America-Israel Patent Law Blog

On October 21, revisions to the Israel Patent Regulations were published, after being approved by the relevant Knesset committee.  Yes, we know that’s truly exciting news for most readers…NOT.  In fact, there is little in the new regulations that will be of interest to most people.  Many of the new regulations give legal imprimatur to ILPTO polices adopted (in some cases without legal authority) over the last several years. Among the changes are codifications of procedures for interim motions in inter partes patent proceedings before the ILPTO, and for the registration of patent practitioners.  (The latter regs impose, partly, an ILPTO policy previously discussed, and criticized, here, although other parts of that policy weren’t adopted as regulations and thus, by implication, remain ultra vires.) [Update, November 11: we forgot to include a link to the new regulations. You can find them on the ILPTO's web site here, including an introductory note from the Commissioner.]

Third Party Requests for Expedited Examination

One regulation that bears watching is the establishment of a fee for requesting expedited examination of someone else’s patent application (what we’ve term third party requests for expedited examination, or TPREE).  This part of the statute was enacted in 2012 and discussed here.  The statute says that a fee must accompany the TPREE, if such a fee has been set by regulations, but when regulations to enable implementation of the new statutory provisions were adopted in late 2012, no fee was set for TPREEs, as discussed here, leading to our prediction that, with no fee imposed, the ILPTO would be flooded with TPREEs.  In point of fact, the ILPTO has NOT been flooded with TPREEs – apparently the number of TPREEs can be counted on one hand – despite the lack of a fee.   

That’s about to change with the new regulations: as of December 20,  it will cost 10,000 shekels (about $2700) to file the TPREE, and, if the request is granted, another 5,000 shekel fee to actually advance the examination out of turn.  So although the new fees are considerably higher than zero, it will still be possible for under $4000 to force one’s competitor’s application into examination, if one provides the ILPTO with a good enough story. 

Fax Filing

The new regulations also clarify, finally, that it’s permissible to file papers in patent cases by fax.  The ILPTO has occasionally been resistant to the filing of documents by fax, so we congratulate the ILPTO upon its entrance to the 20th century.  However, this welcome development is obviated by the electronic filing requirements, which will be discussed below and in several follow-up posts.

Electronic Filing – No Choice

Undoubtedly, the single biggest change effected by the new regulations is the enablement of electronic filing of Israel patent applications.  Sadly, and ironically, after many years of criticizing the ILPTO on this blog for its failure to implement electronic patent filing, we now find ourselves criticizing the ILPTO for the high-handed, ham-fisted way in which it’s decided to go about this. 

The first thing to note is that the regulations stipulate that, effective April 21, 2016, all patent practitioners filing patent applications on behalf of others (including not just the applications but responses, amendments and the like), and all organizations filing the same, MUST file electronically.  No, that’s not a typo.  MUST. FILE. ELECTRONICALLY.  Now, we know from personal experience that both the USPTO and WIPO encourage applicants to file electronically (by providing fee reductions in many cases), but neither body requires electronic filing.  After checking with associates in other countries that have electronic patent filing, we found that Israel will be alone in this regard.  See the table below:

There are several problems with this requirement, but for the moment we’ll focus on just one: what do you when the system is down?  Regular users of the USPTO’s EFS realize that’s a non-trivial question.  And people here in Israel should realize it’s non-trivial as well: see this article and this article about recent flooding in Israeli cities; storms two weeks ago left tens of thousands of homes without power for several days. Suppose the server housing the ILPTO’s electronic filing system loses power, or literally ends up underwater?

The regulations ostensibly deal with this, but in a bass-ackward manner: if the Commissioner declares (via the ILPTO’s website) that there’s a problem with the electronic filing system, then you have until two business two after the problem is fixed, or two days after the Commissioner declares the problem to be fixed, whichever is later, to file the document(s) in paper.  If the Commissioner doesn’t declare such a problem, then you can still file in paper, but the onus is now on the filer to provide a declaration explaining why it was necessary to file in paper.  Interestingly, that part of the regulation doesn’t say that the Commissioner has any discretion in accepting such a paper filing.

What is stunning is the ILPTO’s inability and/or unwillingness to learn from the experiences of other patent offices. As noted, the USPTO and WIPO allow applicants to file in paper, to file by fax, and to file electronically, but they encourage applicants to file certain documents electronically by reducing fees for such filings.  There’s no good reason for requiring that all filings be done electronically.  There is a bad reason, though, for such a requirement: it will ostensibly make life easier for the ILPTO.  And that, apparently, is what these regulations are really all about.  Not serving the public, but instead shunting to the public those tasks that rightfully should be carried out by the ILPTO.  As we go through other aspects of these regulations, and their implementation, in future posts, we’ll see that that concern for the ILPTO itself, rather than the public it’s meant to serve, is a recurring theme.