Exclusive Interview with Asa Kling, Israel Patent Office Director
|Written by Eli Mazour
Harrity & Harrity, LLP
Posted: April 7, 2013 @ 3:25 pm
During a recent trip organized by AIPLA’s Special Committee on Intellectual Property Practice in Israel, I had the pleasure of meeting the enthusiastic and tireless Asa Kling, who is the Director of the Israel Patent Office and Commissioner of Patents, Trademarks & Designs. Since stepping into the role in 2011, he has focused on ensuring that Israel’s patent office matches Israel’s status as one of the world’s foremost technological innovators.
In 2012, the Israel Patent Office examined nearly 7,000 (6,800) new applications and reduced the time to first examination to less than 3 years (32.5 months). Leading American companies, such as Raytheon, Qualcomm, and Genentech, have signaled their faith in the importance of the Office by filing hundreds of patent applications in Israel within the last year. Additionally, since June 2012, the Israel Patent Office has become one of only sixteen active offices to operate as an International Searching Authority (ISA)/ International Searching and Preliminary Examination Authority (IPEA) for international Patent Cooperation Treaty (PCT) applications.
After the trip, I had the honor of asking Commissioner Kling a few questions over the phone. The transcript of our conversation is below, and is edited for length and clarity.
MAZOUR: What is your background and how did you end up becoming the Commissioner of Patents in Israel?
KLING: I started off actually as an engineer. I studied aerospace engineering at the Technion. I served in the army for six years as an engineer in the Air Force. Towards the end of my service, I decided to go into law. I studied law at Tel Aviv University. Then I decided to pursue a legal career, not an engineering one. Once I was accepted to the Israel Bar Association as an attorney at law, I spent over three years in antitrust law and M&A practice. Thereafter, I started to work in law and technology. I joined a leading IP law firm in Israel as an associate. During my tenure there, I also attended the Israel patent attorney bar at law and later on became a partner. In parallel, during 2009-2010, I earned a Masters degree in law in a joint Tel Aviv University – University of California at Berkeley Executive Program in Commercial Law. In 2010, the post of Director of the Israel Patent Office and Commissioner of Patents, Trademarks & Designs was declared open for contenders and my name was brought forward and I was chosen by the search committee. And I have been in office since May 1, 2011.
MAZOUR: How does the search committee work?
KLING: The committee is headed by the Director of the Ministry of Justice because the Patent Office is structurally under the Ministry of Justice. The Chief Scientist is also a member of the committee, as well as a judge and representatives from the Academia and the Israel Civil Service Commission.
MAZOUR: Is there a particular reason why the position interested you?
KLING: I accepted the position for many reasons. I think it’s important that people from the private sector enter the public sector, even if for a limited period of time. I think the private sector and outlook on how things should take place is something that can be of use to the public at large, not only in this position but also in other positions. Furthermore, for personal reasons, I think it’s a very interesting job.
MAZOUR: What is your role as a commissioner?
KLING: Actually, the formal title is Director of Israel Patent Office and Commissioner of Patents, Designs and Trademarks. As Director, I am the manager of the Authority. I bear all administrative responsibilities of issuing registered industrial IP rights in Israel, meaning patents, designs, and trademarks. That’s dealing with all the government sections and obtaining all the resources needed to make this operation happen. That’s on the administrative side.
On the substantive side, the Commissioner of Patents is the person who actually issues the patents. It is a position prescribed by law and the requirement for the Commissioner of Patents is that he be a person qualified to be nominated as a District Court Judge, meaning at least seven years of experience as an acting attorney at law, and certain other conditions. Of course, there is an advantage for prior experience in IP. The Commissioner of Patents, as I said, is the person responsible for issuing the patents, but he also has judicial responsibilities by way of also deciding any appeals on examiner decisions. And, the Commissioner oversees the legal proceeding for the patent office, such as oppositions and cancellation requests. In addition, I am the Commissioner of Trademarks, whereby the separation between administrative and substantive is very similar as is the case with regards to my functions as Commissioner of Designs.
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MAZOUR: Can you briefly tell us about the history of the Israel Patent Office?
KLING: A western-style patent system was already established under British rule since 1920. Actually, our design law is more or less the same law enacted by the British in 1926. Back then, the patent system was only a depositing system, and not a substantive examination system. That was the situation until 1967, when a new patent law was established. Under the British mandate laws, the patent office was part of the customs authority. After the establishment of the State of Israel, the patent office was under the Ministry of Justice.
That was the situation since 1967 until 2006, when the government decision established the Israel Patent Office as a separate authority under the executive agency model.
MAZOUR: What can you tell us about the current state of the Israeli Patent Office?
KLING: The Israel Patent Office currently comprises of just under 180 personnel, of which 101 are patent examiners, 16 are trademark examiners, 5 are design examiners, and the rest are administrative support personnel. The patent examiners are divided into groups, according to technology. We have a computers and communications team, a medical device team, a physics team, a mechanics team, and the life science group. The life science group is divided into four separate groups by technology: the pharmaceutics team, the biotechnology team, and the chemistry team, which is quite a large group and is divided into organic and inorganic chemistry.
MAZOUR: What changes do you see happening in the future for the Office?
KLING: Many changes. We see a constant growth in the amount of applications, both in trademarks and in patents. In trademarks, we started operating under the Madrid Protocol in October 2010 and that caused a great spurt in amount of classifications registered in Israel. As far as the trademarks department is concerned, we’re looking at enlarging our body of trademark examiners. Trademark examiners should have some control of the English language, some control of ability to work vis-a-vis WIPO and IB in regards to the Madrid Protocol applications, which have overtaken – to a certain degree – local national applications.
With regards to patents, starting June 1st, we started operating as an International Searching and Preliminary Examination Authority (IPEA) under the PCT. This is following two years of extensive preparations since 2009 when we received the formal authorization from the General Assembly of WIPO. That is what necessitated us to have at least 100 patent examiners. Since June 1st, when we started this operation, we have seen a constant growth of PCT applications designating Israel as the searching authority. Currently the service is open to only Israeli applicants. In the short term, our goal is to increase the amount of Israeli applicants who are designating Israel as the searching authority. We believe in competition. Currently, as it was in the past, Israeli applicants can also designate the USPTO or the EPO as the ISA. Since start of these operations on June 1st, the Israel Patent Office is currently designated as the searching authority for just under 50% of the Israel PCT applications, but we hope that by end of the year we will be reaching over 60%.
We are focusing on timeliness and quality of our PCT work, which we believe has been our main attraction in addition to the relatively low fees we have for PCT ISA/IPEA services. We see this operation as the ISA/IPEA under PCT as a segueway to enhancing also our local national patent work. By way of quality and standards, we see the PCT work as our locomotive for improving our local national work. As I said, in the short term, we are looking at enlarging the percentage of Israel applicants using our PCT ISA/IPEA services. In the slightly longer term, we are contemplating opening the services to other nationals, but that will be subject to adequate international agreements.
MAZOUR: Can you expand on why it was important for Israel to become an ISA?
KLING: First of all, I think it’s important to provide Israeli applicants with the full scope of the IP toolbox available to other nationals. Furthermore, until we started to offer this operation, Israelis, as some of the main users of the PCT system, had to take this work abroad to the US and to the EPO. We are not sleeping on this – I believe that Israelis were ranked 16th [in the world in amount of PCT applications filed] last year. Based on amount of applications per capita, our position is even higher [Ed.: 4th in the world]. So, since Israelis are prominent users of the system, we believe there is an advantage to our local stakeholders in enjoying the services close to home. Furthermore, the whole IP arena, and especially the patent system, has become more and more of a global system. If we see Israel as a technology hub, Israel should also be a leading player by way of providing local as well as global innovators, who see Israel as a relevant market, with the full scope of appropriate IP services.
MAZOUR: What are some of the challenges of running a midsize patent office like Israel’s as opposed to running a larger one like the United States’?
KLING: There are different challenges. I mean, we do not always compare ourselves to the larger offices. We see ourselves in a different category. We have a lot to learn from the larger offices. Although, I believe that essentially the products we provide are improving and of high standards. We face challenges with regards to the amount of employees and our ability to tackle a larger scope of additional incoming work.
MAZOUR: If you were talking to Chief IP Counsel in the United States, what types of companies would you say should consider getting patent protection in Israel?
KLING: If one looks at the fields of technology in which patent applications are filed in Israel, most technological fields would be covered.
I believe that any company that would seek a patent in Israel would receive the best possible service from the Israel Patent Office and also the best kind of quality patent work as possible, as well as an efficient prosecution process, especially in view of our improving searching ability due to our preparation to become an ISA.
Maybe the question should be whether Israel should be the first patent office to file an application with. Now, following the implementation of the AIA in the States, I believe the preference to first file in the US has declined to a certain extent. I think that Israel should be a viable option for first filing a patent application, especially in view of our notice to the public regarding the option to expedite prosecution if one, regardless of nationality, files a first application for an invention and requests an expedited examination because of a manifested desire to use the application as a priority for other territories. Meaning that chances are that in most fields of technology, the applicant would enjoy knowing – in a relatively short period of time – where their application stands substantively. As opposed to maybe, until now, just filing a provisional application in the States would provide patent priority but would not provide any Office Action or substantive examiner review.
MAZOUR: What is the patent prosecution process like in Israel in terms of interviews, etc.?
KLING: I believe that in Israel there is a good discussion between the Israeli patent examiners and applicants. There is always the option of an interview and we indeed hold face-to-face interviews. We see a growing number of interviews, which are always subject to the request of the applicant. And we see that the applicants are using this service more and more. We also published, a few months ago, the procedures for applying for an interview, just to make sure that all of this is put on record in an orderly manner. We perceive patent prosecution in Israel as an efficient and collaborative process.
MAZOUR: What is your opinion about harmonization efforts?
KLING: As I said, I see the IP system as more and more of a global system, and for that reason Israel is party to several Patent Prosecution Highway (PPH) agreements with several states. This is in the vein of sharing the work, meaning that patent examiners should not perform identical searches time and time again, but rather maybe improve upon the work already done by colleagues and other offices. So, I do believe that global collaborative work is key, and that is a positive direction for the whole system and by that leveling the playing field in many aspects both for various kinds of applicants as well as differently structured patent offices.
MAZOUR: How would you describe the general attitude towards patents in Israel?
KLING: I think the situation in Israel is quite similar to that of the States in regards to patents. Although in Israel we have a much smaller troll industry. But still, primarily in the software industry, there are many voices against patenting. I haven’t canvassed the field empirically, but I know there are voices in both directions. Traditionally, the public likes to talk about patents. I believe that the patent system in Israel is part of the ecosystem that led us to where we are today. It is one of the many parameters that enabled Israel to be in a positive technological innovation position as it is today. I think that many people see the patent system as an important factor in the Israel economy as a system to encourage, maintain and sustain technological innovation, although nothing is perfect and there is always room for improvement.
MAZOUR: What do you think would surprise IP attorneys in the US about IP in Israel?
KLING: First of all that the office actions are in Hebrew. [Laughing] Although it may be requested that in the scope of the said notice that if one requests an expedited examination for purposes of claiming priority from a first application filed in Israel, Office Actions may be prepared in English.
Also, I think it would be surprising how much the systems are similar, and how much the considerations are not so different from those in the States. We look to US court decisions in many cases to draw from comparative law. Although, we also look at the European decisions a lot. I think our system is modern and we adopt a lot from – we have a lot to learn from – larger, experienced systems. All in all I think that a practitioner in the IP field would be surprised to see that there aren’t so many differences.