In amended Israel Patent Office Circular M.N. 77, in response to the a Notice Before Examination and in accordance with Section 18 of the Israel Patent Law (Duty of disclosure) the applicant is now required not only to report all citations in corresponding applications in other jurisdictions, but also to supply any response filed to the IDS of a corresponding PCT application and a copy of the arguments filed against one prior art objection, whether against novelty (section 4) or inventive step (Section 5), for each citation. The arguments may be filed in English or in Hebrew.
In the first version of this Circular, there appeared to be a requirement to submit all arguments against all citations in all jurisdictions. This is no longer the case.
It appears that this requirement will come into effect around the 1 October 2010.
COMMENT
This revised version of the Circular is rather better than the first version which apparently raised opposition from the examiners and from the patent attorneys in the private sector.
When relying on Section 17C of the Law, the issue is moot.
In undergoing substantive examination, to protect clients from arguments submitted in Israel torpedoing their patents elsewhere, I generally counsel filing the same arguments in Israel as those used abroad rather than being creative when filing in Israel. Consequently, this simply formalizes what I do anyway. In general, we support all initiatives to standardize prosecution across the world.
