Patent Law amended retroactively to take care of internet publication issue

On 12th January 2011 the Knesset passed an amendment to the Patent Law 1967, which takes effect from 1st January 2007 and provides that the first publication of biographical details, name of applicant, title of application, priority and filing date for new patent filings can be carried out online and not just in the (printed) official Patent Office gazette, the Reshumot.

It would appear, therefore, that Dr Meir Noam did nothing wrong by publishing such details on the Internet from 2007 onwards.

In the United States, retroactive legislation is generally unconstitutional: Article 1, Section 10 of the Constitution states that  “No State shall pass any ex post facto Law”. However, in 1798 in Calder v Bull the Supreme Court ruled that retroactive legislation is problematic with regard to criminal law, but is acceptable in civil law. In United States v Carlton (1994) the Supreme Court ruled that due process was not violated by retroactive tax laws. The retroactive amendments to US patent prosecution were thrown out in the GSK appeal as being unconstitutional.

In Israel, retroactive laws are allowed, although they are considered problematic and should generally be applied with care. As Professor Amnon Rubinstein pointed out, in a parliamentary regime in which the government holds power by virtue of the support of the Knesset, no practical importance is attached to rules regarding legislative guidelines (Rubinstein and Medina, Constitution Law of Israel 2005, p 170). In other words, the Knesset can do what it likes.

Yaniv Rosnai believes that retroactive laws that change history are unacceptable and should be unconstitutional. However, in this instance, the retroactive amendment to the law appears to be justified. Retroactive legislation may be a better solution than refunds. There is certainly a lack of due process. Nevertheless, it seems to be the lesser of the various evils available.

The retroactive nature of the present Israel Patent Law amendment is necessary because otherwise the publication of patent application details on the Israel Patent Office website before publication in a printed gazette could be considered a breach of confidentiality and illegal.

Publication in the Reshumot is itself a legal fiction. As former Supreme Court Judge Chaim Cohen said of the Reshumot:

"Publication in the Reshumot has a special value in that what is publicised there – and only there – is considered as published in practice: even though the man of the street never reads the rishumot, he cannot claim (in his defence) that he was unaware of what was published there, or at least creates the assumption of knowledge since the mass media will bring to the public that of public interest…; it creates the legal fiction that despite knowing that the citizen doesn’t read the Reshumot, it is as if he has read, remembers and knows everything publicized there." (Free translation of Haim Cohen, The Mishpat, Bialik Publishing House 1991.)

Nevertheless, it is not clear that the amendment will hold up if challenged in court. A class action was filed against the state and the commissioner of patents by Haifa inventors/applicants Yair Nissan and Yan Lishinsky. If they prevail, Nissan and Lishinsky will be entitled to a large settlement. Since the Knesset has retroactively amended the law, the grounds for class action no longer exist. Arguably this goes against the basic law relating to property since the amendment is to the detriment of the filers of the class action. Alternatively, however, it could be argued that the interests of the parties have been dealt with. Nissan and Lishinsky may be estopped from claiming that there is a problem with the amendment since the basis of their class action is that failure to obey the law jeopardised their rights, and the law has now been followed. Apart from Nissan and Lishinsky it is difficult to see who else would challenge this legislation, since internet publication is superior to publication in the Reshumot in every regard.

It is not clear whether the refund of the first filing fee to applicants, as promised by then Secretary General of the Ministry of Justice and now Acting Commissioner Dr Guy Rotkopf will take place, as the amendment removes the reference in the law to publication in the Reshumot at the applicant’s expense. Will previously paid publication fees be considered to be part of the filing fee and not refunded, or will the Israel Patent Office provide refunds? Clarification on this issue is awaited.