In the past two weeks, the Israel PTO has published three notices concerning patents via its email distribution list, although as far as I can tell, only of them appears on the Office’s web site. I will discuss all of these notices in turn. In this post I discuss the Office’s notice of October 5, in which it proposed changes in (1) examination procedure for PCT national phase applications; (2) examination of cases in slow-moving examination groups; and (3) the processing of divisional applications. Comments may be submitted by October 29 to arielgu@justice.gov.il.
Proposed change in examination procedure for PCT national phase applications
Presently, most patent applications in Israel are PCT national phase applications. All patent applications, whether national phase or not, are subject by statute to a pre-examination letter (which most of us refer to as a “section 18” or just “S18” letter), in response to which the applicant must provide listings of (a) publications cited against corresponding applications or which are otherwise known to be relevant, and (b) corresponding applications in other countries. While the Israel PTO is quite liberal about the timing of voluntary amendments to the claims, a propitious time to do so is in response to the S18 letter. And in the case of PCT national phase applications, unlike applications which have been filed initially in Israel or at the end of the convention year, by the time the S18 letter is sent, the applicant has always received some feedback on the patentability of the claims in the form of the PCT search report and written opinion.
The proposed policy would work as follows: if the claims in a PCT national phase application are the same or “substantively similar” (whatever that means) to the claims of the published PCT application, and in the international phase those claims yielded a “negative examination report” (a term that is nowhere defined in the proposal), then applicants will be invited to provide comments on those claims when responding to the ILPTO’s pre-examination letter.
The statute doesn’t empower the ILPTO to force applicants to relate the PCT examination report in their S18 response, but per the proposed policy, if an applicant whose claims were subject to a “negative examination report” in the PCT international phase doesn’t relate to that report, then the examiner will be instructed to adopt that PCT examination report (WOISA or IPRP, presumably; again the notice doesn’t specify) as the first Office Action. This will count as one of the three OAs that an applicant gets before the Office will threaten to close the file (per par. 7.1. of Appendix A of the ILPTO’s work instructions). The examiner will have the option, but will not be required, to relate to other aspects of the application and claims when issuing the first OA.
Comment: I’m not sure why this needs to be a stated policy, as this is already what many examiners do. I’ve even had cases where I amended the claims in the S18 response and the examiner still adopted the findings of the ISA, having missed the amended set of claims filed prior to examination. IF there’s something new here, it would appear to be that examiners will be instructed to see if the applicants has commented on a “negative” PCT examination report and if the applicant has done so, to relate to those comments in formulating the first OA.
Requests for examination out of turn in slow-moving examination groups
After initial processing and assignment to an examination group, the ILPTO assigns an expected period of pendency before substantive examination will commence, e.g. 26 months from national phase entry. That number appears in the information for each patent application in the ILPTO’s public database, and the Office now pegs certain deadlines (viz. requests to suspend examination) to that date.
The October 5 notice proposes that, in cases in which the expected pendency is 40 months or more, such a delay will be regarded as “unreasonable” as stated in §15 and §48D of the statute, and thus may serve as a basis for requesting examination out of turn per §19A(a)(4). The standard fee will be required (currently 357 shekels), but since the Office has notice of the delay in its own records, no sworn declaration will be required in support of the request. The Office proposes to do this as pilot program, to determine its effect on the order of examination.
Comment: Although patent examination is not the Titanic sinking, this proposal is like rearranging the deck chairs on that ill-fated ship. If there are examination groups with long pendencies, pulling a case and moving it to front of the line will only cause examination of some other case in that group to be further delayed. Assuming that for some applicants, rapid examination is not critical, this proposed change will provide a slightly easier path for applicants who want their patents more quickly, but whose applications are stuck in slow examination groups, to expedite examination.
Processing of divisional applications
The Patents Statute does not explicitly state the order in which applications will be examined, but Regulation 34(a), presumably enacted under the general rubric of §194(1) of the statute, says that applications will be examined in the order in which they are filed. Regulation 34(b) says that, notwithstanding what is stated in 34(a), a divisional application shall be examined “with the application from which it was divided”.
Those regulations were enacted in 1968, and until now have been understood by the ILPTO (and the public) to mean that for purposes of calculating the examination queue, divisional applications are treated as if they were filed on the same date as the parent case.
The October 5 notice proposes to change this understanding, so that if a divisional application is filed after substantive examination of the parent case has ended (e.g. if the divisional was filed at the time the “acceptance fee” (equivalent to the issue fee in the USA) in the parent was paid), the divisional will be examined in accordance with the date on which it was actually submitted, since, by virtue of examination of the parent case having concluded, it is no longer possible to examine the divisional “with the application from which it was divided”.
Comment: Divisional applications are established in §24 of the statute:
(a) As long as an application has not yet been accepted [allowed in US terms – DJF], the applicant may demand that the application be divided into separate applications.
(b) If an application contains more than on invention, the Registrar may, as long as the application has not yet been accepted, order the applicant to divide the application.
* * *
(c) Subject to the provisions of §23 [which deals with the post-dating of certain amendments to an application – DJF], the date of each of the applications separated out in accordance with this section shall be as the date of the application that was divided.
The Office now proposes that, although
(i) the statute establishes divisional applications and establishes that the date of such applications is the date of the parent case, and
(ii) the regulations state that applications shall be examined in the order in which they are filed (34(a)) and that divisionals shall be examined with the parent case (34(b)), and
(iii) for nearly 60 years that combination of statute and regulation has been understood by everyone, first and foremost the Office itself, as meaning that divisional applications, even those filed after the parent case has been allowed, must be be examined as if they were filed on the same day as the parent case,
nevertheless, the Office should now be free to ignore the long-standing accepted understanding and practice of the statutory scheme, and to pretend that since examination of the parent case has concluded, the Office doesn’t need to expedite examination of the divisional application if that application is filed after examination of the parent case has concluded.
So this proposal is an attempt by the Office to circumvent the established statutory scheme, by offering a novel interpretation of the regulation that undermines the very statute that gives rise to that regulation. Americans call this “doing an end run” on the statutory scheme.
Let’s start with the formalistic analysis: the statute establishes that the date of the divisional is the date of the parent. Regulation 34(a) says applications will be examined in accordance with the order in which they are filed. Ergo, once a divisional application is filed, it needs to be examined in accordance with its filing date, irrespective of whether or not the parent case is still undergoing examination. Regulation 34(b) does not contradict that, let alone abrogate that.
Nor does regulation 34(b) say that if the parent case is no longer being examined, then regulation 34(a) is a dead letter. To the contrary, if 34(b) is not applicable – for example, because the parent case has been abandoned or allowed – then the order of examination of the divisional application has to be in accordance with regulation 34(a).
And of course, Regulation 34(b) does not say that for purposes of calculating the order of examination, §24(c) of the statute is to be ignored, and that the filing date of a divisional is the date on which the divisional actually filed. Regulation 34(b) can’t say that because, as a regulation, 34(b) cannot abrogate the very statute under which the regulation was promulgated.
Yet turning statutory §24(c) and regulation 34(a) into dead letters is precisely what the Office now seeks to do, through a novel but erroneous interpretation of regulation 34(b)
Contrary to what the Office now proposes, Regulation 34(b) is there to emphasize that in the limited circumstance in which a divisional and its parent are co-pending, then they should be examined together. That’s just common sense:
(1) Since a parent case and its divisional are usually directed to related subject matter, ideally the examination of a divisional application should be done in parallel with the examination of the parent case, as this enables the examiner – in almost all instances, it’s the same examiner for both cases – to examine both cases while all the relevant prior publications, and relevant applicant responses, are fresh in his mind. That saves on examination resources.
(2) It’s also in the public’s interest to have parent and divisional applications examined at the same time, so that as many claims as possible issue together, thus giving notice of the scope of the applicant/patentee’s area of exclusivity.
(3) In the case of pharmaceutical patent applications, there’s an additional aspect at play: if regulatory approval of a drug is taking a long time, the patentee may have several relevant patents that are eligible for patent term extension (PTE), but it can only choose one of those for PTE. The statute does provide for requesting extension of a still-pending patent application, in which case examination of that application is to be speeded up (see §65E), but having as many patents in hand at the time regulatory approval is received is better than having some patent applications still pending. Delaying the examination of a divisional, just because it was filed after conclusion of examination of the parent case, is thus prejudicial to the applicant/patentee.
If, on the other hand, the divisional is not co-pending with the parent, then regulation 34(b) is inapplicable, and regulation 34(a) alone still applies.
So what the Office now proposes is not only unsupported by the statute and regulations, it flies in the face of the statute and regulations.
Beyond the formal, black-letter-law falsity of the Office’s position here, if we assume that whoever is behind this proposal has modicum of intelligence, then it’s plain that this is an attempt by the Office to set patent policy to encourage applicants to file their divisional applications early in the examination process, by giving applicants a choice: file your divisionals early, or be subject to delays in their grant. Irrespective of whether one agrees or disagrees with such a policy, it is not the job of the unelected, unaccountable bureaucrats in the Patent Office to determine patent policy. That’s the purview of the elected legislature, which decides on such policy via statute and implementing regulations. I also note that as it is, the Office already encourages the early filing of certain divisionals. As noted above, §24(b) of the statute allows an examiner to instruct an applicant to divide an application. §8 says that a patent shall be granted on one invention, and this has long been understood as authorizing examiners to say that an application claims more than one invention (i.e. to find lack of unity of invention). For about ten years now, the Office has taken the view that an examiner’s finding of lack of unity constitutes an order to divide the application under §24(b), and that the applicant must therefore file the divisional application when responding to the OA in which the disunity finding was made. If the applicant files the divisional later, the Office now requires payment of an extension fee for each month from the submission of the OA response to the filing of the divisional. So this new policy seems to be directed to situations in which applicant wish to file “voluntary” divisionals, i.e. cases in which no disunity finding was made by the examiner.
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