In yet another Israel Patent Office Circular (M. N. 77) designed to increase productivity, to minimize duplication of resources and to shorten the examination process, the Israel Commissioner of Patents, Dr. Meir Noam has decreed that in addition to filing details of citations in corresponding applications abroad as required under Section 18 of the Law (Duty of Disclosure), henceforth, applicants are required to submit a copy of all responses made in corresponding cases as far as Novelty and Inventive Step is concerned. This response may include claim amendments submitted to overcome the Official Actions made elsewhere, however the applicant must explain how the claim amendments overcome the prior art objections.
Failure to submit such arguments will be considered as failure to fulfill the Duty of Disclosure. Furthermore, the applicant is required to submit all prior art directly relevant to the invention that is known to the applicant.
The new ruling applies to all applications for which a Notice Prior to Application has not yet issued.
Appended to the Circular is an amended Notice Prior to Examination which also states that applications filed after 23 January 2010 having more than 50 claims will incur additional filing fees.
The new disclosure rules were suposed to be effective immediately, but after lobbyign from the AIPA and other representative bodies, a reprieve has been allowed to enable practitioners to reorganize. The new procedures will come into effect as of 30 June 2010.
Comments
As with many efficiency measures adopted by the USPTO, it is not clear whether this development will actually increase or decrease Examiner’s workloads and affect pendency time. However, it certainly will increase the work load of the patent practitioners and presumably result in more expensive prosecution for the applicants. On the other hand, we can assume that fewer invalid patents will issue, and there could be a corresponding decrease in oppositions and litigation.
There has been a difference of opinion within the profession as to the exact Duty of Disclosure requirement and the necessity and advisability of submitting prior art not cited against corresponding applications abroad but nevertheless known to the applicant. The current circular renders such arguments moot, and details of all prior art known to applicant, including, inter alia, that submitted in an Information Disclosure Statement (IDS) should now certainly be submitted.
The appended amended Notice Prior to Examination appears to be an implementation of the Notice of 10 December 2009 wherein the Commissioner of Patents and Trademarks, Dr. Meir Noam announced that the Constitution, Law and Justice Committee of the Knesset have decided to issue a surcharge of 500 NIS for excess claims beyond 50. It is not clear when the excess claim fees are due, but from the Notice, it seems that they are due on filing, and failure to pay will hold up examination. Presumably there will be a follow-on Circular that clarifies the issue, but I suspect that the excess claim fees will be incurred on responding to the Notice Before Examination, not on filing. At present, Israel examiners tend to relate to the independent claims only. One hopes that this excess claim requirement indicates that all claims will henceforth be examined on their merits.
To whom it may concern;
My name is Kadriye AKDAĞ and I’m working in Abdi Ibrahim Pharmaceuticals , is a big company in Turkey. I need information about data exlusivity is valid in Israel or not. If you give information as soon as possible, I would be very appreciate. Thanks already for your consideration and cooperation.
Best regards