by Dan Feigelson
This post concerns the third of three recent Israel PTO notices. I wrote about the first two here and here.
The third notice, which was posted in the “news” section of the ILPTO’s website on October 13, proposes a pilot program that the Office is calling “One Day Allowance” (or just “ODA” for short). As will be explained presently, that description is misleading. Strangely, although the email announcement of this notice says that comments may be sent to Patentim_Bhina@justice.gov.il until November 10, the notice itself says nothing about comments, even though it has “draft” as a watermark on all three pages.
I reproduce below a translation of the whole notice, but briefly, the idea is that if an examiner, upon first examination, thinks that the application would be allowable subject to some minor claim and/or specification amendments, then the examiner will invite the applicant to meet for a deliberation, at the conclusion of which (or, if necessary, following a top-off prior art search to be conducted shortly thereafter), the sides will hopefully agree on what’s necessary for an allowance.
If you’re a US (or EPO) practitioner and that sounds a lot like getting a phone call from the examiner proposing an examiner’s amendment, only with a lot more work and more formalities involved, I agree with you. It’s as if the people proposing this have never themselves prosecuted patent applications.
As to the name “One Day Allowance”, it’s an accurate description…if one looks only at the day on which the examiner and applicant/attorney meet. But it’s not that an applicant will file a patent application and within a day gets an allowance, which is what one might understand from just reading the title “One Day Allowance”. You still have to file and wait for a first OA, either in the normal examination queue or by expediting examination (on the basis of age, or imminent infringement, or one of the other bases for expediting examination in the ILPTO), and only thereafter set up the meeting with the examiner. So a more accurate title for the proposed procedure might be “examiner-initiated interview” or “examiner-initiated meeting”.
Bottom line, I appreciate the fact that the ILPTO is proposing a way to streamline things. And yes, as the Office mentions on the first page of the notice, quick allowance in Israel can be used as a basis for a PPH request elsewhere, even if that’s old news. Nevertheless, it would be simpler if the Office just instructed examiners to (a) look for patentable subject matter (b) contact the applicant to inform the applicant and (c) ask the applicant to get back to the examiner to approve an examiner’s amendment or schedule a meeting, face-to-face or via videocall, to discuss the case.
Anyway, here’s a translation of the proposal:
Page 1
PILOT: Concentrated Examination Track (One Day Allowance – ODA) – Principles and Guidelines
| Target Audience: | Applicants, patent attorneys, patent examiners, and team leaders |
| Status: | Pilot |
| Threshold Condition: | National patent applications subsequent to the issuance of the notice of deficiencies |
1. Introduction, Background, and Incentives for Joining the Track
The patent examination process in its traditional formulation is based on rounds of correspondence, which can be time-consuming, lead to prolonged uncertainty, waiting periods between rounds, and result in high cumulative costs.
The “One Day Allowance” (ODA) track offers a focused, proactive framework having a mediational orientation, which brings together the patent examiner, the applicant and/or its representative for a professional meeting without an intermediary, the objective of which is to formulate a set of patentable claims within a single, intensive workday, without compromising the quality of the examination or the requirements of the law.
The applications which are suitable for participation in the track are those applications in which the examiner has identified potential to reach an agreement on a set of patentable claims.
To ensure clear worthwhileness for the applicant compared to the regular process, this track offers the following benefits:
• Shortened Examination Duration (Time-to-Grant): gather to reach a decision on allowance within a single business day, rather than enduring long months of waiting between rounds of examination reports and responses.
• Cost Savings: Eliminates the need to draft lengthy, complex written responses to each individual deficiency, and their replacement by a concise “roadmap” draft and an agreed-upon interview summary.
• Real-Time Professional Certainty: The quick and flexible possibility to discuss claim alternatives (claim fallbacks) opposite the examiner without “wasting” an entire examination round, and arriving at an agreed-upon wording that provides certainty regarding the scope of protection to be granted.
• International Strategic Leverage (Fast-Track PPH): rapid allowance in Israeli of expedited applications, which can serve as a basis for expedited applications worldwide via the Patent Prosecution Highway (PPH) tracks, based on the claims approved during the ODA process.
• Full Safety Net (Zero Risk): Participation in the track does not derogate from the applicant’s rights. As long as agreement is not reached, the application will continue through the standard examination process without injury.
Comment: page 1 reads like marketing material espousing the purported benefits of the proposed program, but doesn’t explain the mechanics of the proposed program.
Pages 1-2
2. Fundamental Principles
1. Uniform Examination Standard and Uncompromising Quality – The track is designed to streamline communication and significantly shorten the examination process, however, it does not entail “cutting corners,” professional compromise, or any waiver of the grounds for patentability or the requirements set forth in the Patents Law.
2. Voluntary Participation and Full Preservation of Applicant Rights – Participation in this track is only by consent of both parties. The process may be terminated at any stage. In such an event, the applicant’s rights remain fully preserved and the application reverts to the standard examination track, including all statutory rights to file objections and appeals.
3. Transparency and Documentation – The proceedings of the day of discussion and any agreements reached will be documented in a written summary. This phrasing will be submitted to the applicant for review and approval prior to its publication, with the goal of ensuring that no there is no disclosure of details regarding the applicant’s strategy which are unnecessary for the examination. After approval, the summary will be added to the application file.
4. Equality and Accessibility – The option to join the track will be offered on a uniform basis to all files that meet the established criteria.
Comment: still waiting for the description of the mechanics of the proposed program…
Page 2
3. Screening Mechanism and Eligibility Criteria:
Upon completion of the initial examination, the application’s suitability for the track will be assessed based on the following criteria:
| Criterion | Suitability for the ODA track (GO) | Unsuitability for the ODA track (NO-GO) |
| Inventive concept and fitness | Contained within the specification or the dependent claims is an inventive concept, possessing novelty and an inventive step, around which the a meeting can be held (identification by the examiner of “allowable subject matter”). | a) All claims were found to be patentable during the initial examination (rendering a hearing unnecessary), b) A defect, the resolution of which requires a substantive amendment to the specification of the application. |
| Nature of the defects | Defects in phrasing, clarity, or an overly broad scope of claims (Section 13) – issues that can be immediately resolved through direct dialogue. | Inability to actually practice the invention on the basis of specification in accordance with section 12 of the statute, lack of clarity that does not all enable identification of an inventive concept |
| Picture of the prior art and supplemental search | A focused dispute with clear lines of distinction: a defined technical/scientific difference that can be sharpened against the prior art, or alternatively an argument regarding a combination which the applicant can refute through direct discussion and there exists feasibility to conduct a concise supplementary search that does not require analysis and the sustained reading of complex materials on the day of the hearing. | A broad, ambiguous, or data-intensive disagreement: there is prior art that necessitates a decision in a deep and complicated scientific/technical disagreement or a necessity for rounds of extensive searching and critical reading of complex documents that cannot be accomplished within the time allotted for the discussion. |
| Willingness of the examiner | The examiner identifies a possible course of action and practical suggestions for narrowing the scope of the claims and defining their boundaries. | The examiner does not see any possible framework that would lead to the acceptance of the application within the scope of a single meeting. |
| Willingness of the applicant | Seeking and/or representing parties who are available for direct dialogue, prepared in advance, and authorized to make decisions in real time (with an emphasis on on-site requests). | A need for a more prolonged process for reaching decisions. |
The decision to propose referring the examination of an application to a specific track lies within the professional discretion of the examiner, in consultation with the team leader, and is based on their overall assessment of the application—rather than solely on whether it meets one or more of the criteria detailed above.
Comment: still no description of the mechanics of the proposed program. Must be on the last page:
Page 3
4. Stages of the Procedure in the ODA Track
The procedure consists of three main stages: (a) invitation and preliminary preparation; (b) a focused hearing day; and (c) conclusion of the procedure and documentation. The stages are detailed below:
Stage A: Invitation and Preliminary Preparation
1. The examiner will indicate in the first notice of deficiencies that the application is suitable for examination under the ODA track, and to the extent a clear path toward allowance is identified, the examiner shall propose it to facilitate the completion of the examination.
2. To the extent the applicant and/or its representative is interested in having the application examined under this track, they shall notify the examiner (via email) within two months of receiving the first office action.
3. The scheduling of the discussion, as well as the participation of the relevant parties (the examiner, the applicant and/or their representative, and, where necessary, a team leader or senior examiner), shall be coordinated via email and/or telephone including determining the format of the meeting.
4. The applicant and/or its representative shall send via email a draft “roadmap” including proposals for amending the claims and addressing the cited prior art, at least 7 working days prior to the scheduled meeting.
Stage B: The Hearing Day
1. By default, it is recommended that the hearing take place frontally at the Patent Office, however if necessary it may be requested to conduct it via video conference.
2. Opening Session and pointing: A discussion regarding the points raised in the initial examination report and the proposals presented in the roadmap such as the scope of the claims.
3. Recess for Parallel Work: If necessary the examiner will conduct a targeted supplementary search based on the emerging phrasing, , to the extent possible on the day of the meeting or shortly thereafter (within 2 working days of beginning of the hearing).
4. Concluding Session and Resolution: Presentation of the supplementary search findings, a final discussion on the wording of the claims, and reaching agreements. It is emphasized that notice of an agreement in principle may be effected either on the day of the hearing or the following day.
Stage C: Conclusion of the Hearing and Documentation
Reaching an Agreement:
Within 3 working days of the conclusion of Stage B, the examiner shall email the applicant and/or its representative a draft summary of the hearing for their comments. Within 3 additional business days the applicant shall either agree or submit a request for revisions to the wording of the summary.
Once an agreed-upon wording is reached, the applicant and/or its representative shall submit a response to the notice of deficiencies via the online system, and the examiner will then issue a Notice Prior to Acceptance which will incorporate the summary of the hearing day.
Failure to reach an agreement: The application shall revert to the standard examination track.
If no agreement is reached, the applicant and/or its representative shall inform the examiner at the conclusion of the hearing day, which of the following options they have chosen for the continuation of the examination:
a) The applicant shall respond to the original notice of deficiencies within the prescribed deadlines, without any obligation to address matters raised during the hearing day. b) Within 3 months of the hearing day, the examiner shall issue an updated notice of deficiencies, in accordance with the additional insights and arguments raised during the hearing day. In this case, the examiner shall include a summary of the hearing day (based on wording agreed upon with the applicant and/or its representative) at the beginning of the notice of deficiencies.
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