An anomaly of the Israel Patent Law is that applications do not publish automatically 18 months from the priority date. Instead, only the basic biographical information publishes shortly after filing, and the specification and claims publish for opposition purposes only, once allowed. Thus Israel has a submarine patent system as existed in the US prior to 1996, but as no longer exists with other important patenting jurisdictions.
Noting that frequently there is a corresponding PCT application or national application that publishes after 18 months, the Justice Ministry has published a document that hypothesizes that the current state of affairs enables competitors to learn an applicant’s technology and to implement it in Israel whilst still pending, thereby not providing grounds for the applicant to sue, and proposes an amendment to the Law.
The Proposed Amendment
The proposed amendment provides for automatic publishing after 18 months and also provides for the applicant to obtain reasonable damages from infringing acts performed after publication and prior to allowance. It is not clear, but seems to be implied that to collect such a royalty, the allowed patents should be substantially as claimed in the patent application as published. The proposed amendment includes a further few provisions.
- The application should include an abstract that defines the scope of the invention.
- Under the (infamous) A.Sh.I.R. Decision, the District Court, upheld by the Supreme Court, has allowed compensation for ‘non-patented inventions’ under the Law of Unjust Enrichment. This is problematic as it is not clear whether inventors of such non-registered patents are entitled to protection if the invention is directed to subject matter not patentable under Israel law; for expired patents; for patentable subject matter not filed as a patent, or for inventions where due to prior publication by the inventor, there is no novelty. The amendment proposes scrapping unjust enrichment as grounds for legal action where a patent exists or where a patent was not filed.
- The publication fee will be canceled, possibly with an amendment to the filing fee.
- The file wrapper will available for inspection from this 18 month publication.
- I see this as a welcome development. If and when passed, this amendment will conform the Israel patent practice to that of the rest of the world.
- In my opinion, simply conforming to the practice of the US, UK, EPO, Japan, PCT etc. is sufficient justification for the proposed amendment. The proposal suggests another reason – that the current system does not strike a current balance between the rights of the applicant and of third parties. It is a good point.
- Since November 2008, the Israel Patent Database of searched patents has been available for examination on-line. See Israel Patent Database Goes On-line. Technologically, therefore, it seems that the Israel Patent Office will be able to implement this reform if passed into Law.
- In February 2008, the Ministry of Justice turned to patent attorneys and other interested parties with a first draft and request for comments. See Israel Justice Ministry Drafting Amendment to Automatically Publish Applications 18 months After Filing
- There are, however, a couple of issues not appearing in the draft proposal.
- Should automatic publication occur for all applications? or, as in the US for example, if an application is not filed abroad, will the applicant be able to request withholding of publication until the patent is allowed?
- Should third parties be allowed to submit prior art during examination? – This could provide a solution for one of the problems with allowing patents for software, i.e. the problem of searching for prior art.
- I am pleased that A.Sh.I.R. apparently to be conscribed to the scrap-heap of lousy Court decisions, but the wording is not clear. For example, only last week Judge Shapira granted a temporary injunction in a case involved challah cloths that were similar to those of another manufacturer. See Jerusalem Court Issues Temporary Injunction Against Copycat Challah Cover Manufacturers. I criticized granting temporary injunctions and referring to property rights where the plaintiff had not filed a design application. In Israel, design protection are covered by the original patent ordinance that was superseded - as far as patents are concerned – by the 1967 Patent Law. However, unlike the United States which grants design patents, in Israel, registered designs are not clearly a type of patent. The proposed amendment vis-a-vis A.Sh.I.R. might include designs or not. It is not clear, and the issue should be clearly related to.
- The arguments against A.Sh.I.R. are equally valid for designs as for patents. The precedent leaves too much to the discretion of the courts.
- There was a first reading of the a proposal for this amendment in 2005 or 2006, and implementation of Madrid has been stuck for quite a while, so we are not holding our breath as to when this proposed amendment will enter the Law. Unfortunately, the political and security situation in Israel is such that IP reform does not get the priority that I would like it to.