Background of the Israeli Patent Office Initiative
The Israeli Patent Office [ILPO] normally issues all of its official notices in Hebrew. Nevertheless, limited correspondence in English with the Israel Patent Office has been possible. This articles describes some problems corresponding with Israel Patent Office.
In October 2021 ILPO sent out a letter regarding the initiative.
The letter declares that effective of January 1st 2022 a pilot programme will commence. Anyone can join the programme. They can request that office actions and Notices before allowance issue in English. The letter implies that the pilot is a short experiment. But it requests that applications for the English correspondence be filed until December 12th 2021.
The programme is limited to Israeli patent applications for which examination has not commenced. Under Israeli Patent Law and regulations, an essential part of the prosecution is a Notice before examination. A reply to the Notice triggers examination of the Israeli patent application. But 1-2 years may pass until an office action issues.
Developments in the Programme
In the meantime, the Israeli Patent Commissioner informed that the programme was frozen. This was because of a dispute with the Israeli patent examiners’ union. See also here re the “revolt“.
Nevertheless, my firm has continued to request for new Israeli patent application filings that the examination in English apply.
This week we contacted the Israel Patent Office for an update. According to the person charge of implementing the programme at the Israeli Patent Office, the pilot is continuing.
Our Firm’s Approach
A cornerstone of our firm’s approach is to be transparent as possible with the foreign applicant. And of course with the Israeli inventor. Therefore, we consistently request that the correspondence with the Israeli Patent Office be in English. In fact, all of our outgoing correspondence with the ILPO is in English. This policy has continuously been implemented from the establishment of the firm.
Such approach does withhold from us an important source of income. However, we prefer to focus on placing the customer’s best interests always at the heart of our business. In addition, it must be stressed that many Israeli patent examiners are very proud of their Jewish identity. Many much prefer to communicate in Hebrew even when their English is quite good. I personally know many native English speakers in Israel that insist on speaking in Hebrew only. Also there are quite a few Israeli patent examiners [and Israeli patent attorneys] whose English in nothing to write home about. Their office actions set our native-English speaker team’s teeth on edge. Therefore, even when the office actions issued by the Israeli Patent Office are in English, the Israeli patent attorney still has work cut out for her in reporting.
Proposed Course of Action
We now routinely request that examination be conducted in English when filing Israeli patent applications. This can also be done after filing but that requires much additional work. Kindly remind us to make the request when sending us filing instructions.
Will the Israeli Design Department and the Israeli Trademark Department at the Israel Patent Office follow suit? Israeli patent applications are already filed in the vast majority of cases in English. They are usually prosecuted by Israeli patent attorneys rather than lawyers. But Israeli design applications and Israeli trademark applications are mostly prosecuted by lawyers. These are generally not native English speakers. In fact, as mentioned above, we regularly correspond with the Israeli patent office regarding the Israeli patent applications in English. We have NEVER been requested to correspond in Hebrew. In contrast, our few attempts to correspond in English with the the Israeli Design Department and the Israeli Trademark Department have always been rejected.
We hope that the Israeli Patent Office will find the way to make the Israeli Design Department and the Israeli Trademark Department more user friendly as well.
We very welcome the initiative of the Israeli Patent Office. We understand that communicating in English goes against the grain for many Israelis. They are very proud of the resurrection of the language their ancestors spoke 2000 years ago. And it is extra hard work for many of them. But we suggest that command of English requirements for Israeli Patent Examiners as well as other examiners be reviewed. Problems in corresponding with Israel Patent Office will persist until then.
Howard Teff, Ph.D.
September 22nd 2022
Israeli Patent Office’s Examination guidelines of 2021