Israel to Provide International Search Reports for PCT Applications

April 4, 2012

From June 1, 2012, the Israel Patent Authority will provide International Search Reports (ISR) and International Preliminary Examination Reports (IPER) of PCT applications.

Initially, the service will be available to Israeli applicants and will be charged at a lower rate than the rates charged by the search and preliminary examination of PCT applications by the United States Patent Office (USPTO) and the European Patent Office (EPO) – both of which may currently be selected by Israeli applicants.

In this regard, the Israel Patent Authority joins an elite group of 14 patent offices (the USPTO, EPO, Russia, China, Japan, South Korea, Australia, Canada, Finland, Sweden, Brazil, Austria, the Nordic nations (Norway, Denmark and Iceland) and Spain.

Israel is an intensive user of the PCT system, currently filing about 1000 PCT applications a year.  In 2011, Israel ranked 15th worldwide in terms of absolute numbers of PCT applications filed. When the figures are normalized by population, Israel is a clear leader.

This development follows an intense training period of the examiners, and the Israel Patent Agency providing ISR style searches and IPER style examinations of applications first examined in Israel. It also follows the recruitment of Examiners, since to be considered, a patent office has to have at least 100 examiners.  Unfortunately, the option of collaborating with the patent offices of neighboring countries, as the Nordic nations did, is not currently a realistic prospect for Israel.

Israel was accepted as a candidate International Search Authority by WIPO in 2009. Egypt was accepted at the same time. However, as with the Indian Patent Office which was accepted in 2007, to date, has not organized itself appropriately. It is not clear when the Egyptian Patent Office will be ready to provide searches.

Under binational agreements and patent super-highways, it is expected that the Israel Patent Office will provide services as a sub-contractor to other patent offices in due course.

COMMENT

I congratulate Commissioner Asa Kling, the Executive Director of the Department of Justice, Dr Guy Rotkopf, and all the Examiners and support staff at the Israel Patent Office and Ms Li Maor at WIPO, for making this happen.  The previous Israel Commissioner of Patents & Trademarks, Dr Meir Noam, also deserves a special mention as this is the culmination of his hard groundwork and vision.

Between them, Israeli examiners are fluent in a wide range of languages, including Hebrew, English, Arabic, Russian and the main European langauges. There is, therefore,  every likelihood that the ISRs and IPERs they will produce will be performed to a high standard.    

One of my pet gripes about Israel patent examinations is that Israel patent examiners typically only examine the independent claims. I hope that, since they will be searching and examining the first claimed invention in PCT applications, they will start examining the dependent claims as well, as this will speed up Examination.


Israel Patent Law Ammended

December 14, 2011

On 8th December 2011, the Israel Knesset passed an amendment to the Israel Patent Law 1967.

There appear to be two changes, the first cosmetic and the second substantive.

Firstly, all references to the Israel Patent Office “משרד הפטנטים” or uses of the word “לישכה” meaning ‘office’ are amended to “רשות הפטנטים”  and “רשות” , i.e. Patent Agency and Agency.

More substantively, there is an amendment to reflect that the Israel Patent Office, whoops, Agency will henceforth provide PCT style International Search Report compliant search reports (ISRs) and will also be able to provide International Search Reports for applications received by the Israel Receiving Office of the PCT, where one or more inventor or applicant is an Israeli Citizen or corporation, and also for citizens or corporations of other countries having a relationship and appearing in an appropriate appendix to the Law, to be updated from time to time.

COMMENT

The Israel Patent Office (it’s OK, I can still use the old name until 8 January 2012 when the amendment comes into force) has been styling itself Israel Patent Agency for a while now, but this is now enshrined in the Law. There don’t seem to be punishments for people who forget, but I will do my best to comply.

Regarding the Searches, there are a few questions that require clarifying and no doubt the Commissioner of Patents will issue a Circular in due course:

  1. Can Israel applicants still elect the USPTO or EPO to search their applications as they can at present?
  2. What happens if applications are filed at the International Receiving Office in Geneva? – at present, this does not affect the authorized International Search Authorities, but maybe this will change.
  3. How much will an Israel PCT search cost?
  4. When will this come into effect – not the amendment to the Law, but that Israel will provide ISRs?
  5. Now that the Israel Patent Agency  is to provide ISR type searches, does that mean that at last they will start searching and examining all claims, at least for the first invention as defined by PCT Law and Regulations, and not just the independent claims as they generally do at present.

Time, and Patent Office Circulars, will no doubt tell.


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