Friday, February 22, 2008

Israeli patent procedure

A comment on PatentHawk about Frieder's Jerusalem Post article on patent reform is worth noting:

Being based in Israel, I'd like to correct a mis-statement in Mr. Frieder's comment about publication of applications in Israel. Applications in Israel are not published until *examination* is complete - but they are then subject to *pre-grant* opposition. Such oppositions are regularly used by several local "serial opposers" to delay the grant of patents. The applicant cannot enforce his patent until it's actually granted. The risk to the opposer is that if he infringes during the opposition, after grant the patentee can obtain damages retroactive to the date of publication, provided that the infringed claims were present in the application as published (and not amended during the opposition process), but that's usually not a deterrent: thanks to the ILPTO's less-than-rocket-docket, I've dealt with literally dozens of cases where the oppositions dragged on so long they reached the point where the applicant just gave up b/c the technology had become outmoded. To add insult to injury, in some cases the applicant had to pay the opposer, b/c Israel is a "loser pays" country. (The amounts awarded were usually paltry, but still...) Moreover, most applicants who file in Israel file in the PCT, Europe, or other early publication countries as well, so parties who want to expropriate the applicants' IP have plenty of other sources for it.

Furthermore, there have been several rulings by the Israel Patents Commissioner in the last few years in which he published decisions relating to as-yet-unpublished patent applications - in clear violation of the statute that prohibits such publication. But no one took the Commissioner to task for this. So while it is the case that if an application is finally rejected - a rare occurrence, since the ILPTO is quite liberal about the give-and-take with the Examiners - the PTO will destroy the file, that's no guarantee that details of the application won't be published, since it's likely that before the PTO kills the app, there will be a hearing before the Commissioner and he'll publish his decision in the matter.

IPBiz notes, in a different vein, US provisional applications can get published, too.

Separately, note a thread on intelproplaw:

I gave my PPA number to a potential lisencee. But I did not give them the application or anything more.

Can they view my PPA. I thought that only I can view it through private PAIR. Is that correct?

Plus I have recently filed a full patent based on my PPA. When my patent is published is the PPA also published or available to be seen. How about when my patent is granted

this is a great board. Thank you for starting this - I learnt so much

They cannot view your provisional patent application. If you have access to private pair, you can view it online. You will need a digital certificate from the USPTO.

You mean you recently filed a non-provisional patent application, not a "full patent." That implies you have been granted something, and you have not.

I have not looked at this in a while, but I do not remember being able to access a prior provisional patent application from public pair once a non-provisional patent application is public, however, I would image it is in some way accessible.

I rechecked the last time this came up here, and I was able to access provisional applications from public PAIR for cases where the non-provisional application claiming priority to the provisional was also available.

Separately still, on assignments, note MPEP 306.01:

306.01 Assignment of an Application Claiming the Benefits of a Provisional Application [R-3]

If an application which claims the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120. See MPEP § 306. If an application claiming the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be **>recorded for< the * application >claiming the benefit of the provisional application<, similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120. See MPEP § 306.

Also, 37 CFR 3.21 Identification of patents and patent applications.

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number, e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number (e.g., PCT/US90/01234). If an assignment of a patent application filed under § 1.53(b) is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under § 1.53(c) is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.<

Page 9A-10 of Jeffrey Sheldon's book mentions assignments of provisional applications.


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