Drop in Patent Filings into Israel

February 5, 2014

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The Israel Patent Office has just published official figures for 2013.

Some 6185 patent applications were filed in 2013, of which 5,294 were Paris Convention or PCT National Phase Filings, and the remaining 891 were first filings. I’ve compared these figures to those in the 2012 Israel Patent Office Report and it would appear that these are the lowest figures for a decade.

The obvious things that have changed are that the Israel Patent Office put its fees up 40% past year and the Shekel is very strong against foreign currencies.

It seems though, that Israeli inventors are also thin on the ground or first filing elsewhere. Since the America Invents Act I think US provisional applications are less attractive. It could be, however, that with more Israel patent firms filing direct into the US and the low dollar, coupled with the draconian raise in Israel Patent Office filing, extension and issue fees, that the these are being scared off as well.

The Israel Patent Office has to find salaries for the 100 examiners it employs as a prerequisite to obtaining International Search Authority Status. We further note that the number of new practitioners is increasing, so it seems that there is less patent work to go around.

It could be that there is significant drafting going on for Israeli clients. However, they are not filing in Israel. Apparently the number of PCT applications filed with the Israel Patent Office in 2012 was 1199 which is an 11.4% increase compared to the 1062 filed last year. There were also at least 192 further PCT applications filed in Geneva that requested that the Israel Patent Office conducts the International Search.

Of course the Israel Patent Office has put a positive spin on things. The report notes a drop in patent pendency times. Well, with less work coming in and more hands to do it, what does one expect? 

1360 design applications were filed in 2013, which is a 12% drop from 1546 last year, and is similar to the 1362 applications filed in 2002 and 1369 applications filed in 2003, but lower than any year in the past decade which peaked at 1775 in 2008.

It is not all doom and gloom though. There was a 10% increase in trademark filings into Israel, with 8733 marks filed in 2012 and 9578 filed in 2013.


Israel and Korea launch a Pilot Patent Prosecution Highway

December 30, 2013

israel korea relations

The Israeli and Korean Patent Offices have launched a Pilot Patent Prosecution Highway (P-PPH) under which the result of an examination in one of the jurisdictions if it is the office of first filing, may be used to fast track the application in the other.

There are two variations, the regular one is the PCT-PPH under which one office serving as an International Search Authority ISA and/or International Preliminary Examination Authority IPEA, and issuing an International Prelinary Examination Report IPER that is at least partially favorable, by having at least one allowable claim, may be used to fast track examination in the other jurisdiction.

The other variation is called the A PPH – MOTTANAI – where the A may be an indefinite object without antecedent. I have no idea what the MOTTANAI bit stands for.

Under the PPH – MOTTANAI, an application whose claims have been determined patentable in the Office of Earlier Examination (OEE) is eligible to go through an accelerated examination in the Office of Later Examination (OLE), upon an applicant’s request.

COMMENT

I am not sure if all these acronyms are helpful, but imagine that the fast tracking itself may be useful. At least in the electronic materials field, I’ve found the Korean Patent Office very efficient.

I see these international agreements are generally good for Israel politically. Israel and (South) Korea have a lot in common. Whether or not the PPHs (don’t try to pronounce that) will result in more filings in the two countries, it is too early to say. 

The PPHs  are provisional. If there are too many cases fast tracked under the system, the patent offices reserve the right to reconsider. This makes sense. It is a little like queuing with everyone else in the under 10 items, pensioners and handicapped line to the express check-out in the supermarket. One knows how to get into the fast line, but whether or not it is sensible to do so, is another issue entirely.


Neil Wilcof Wins Prestigious INTA Award

December 15, 2013

Neil Wilkof trademark reporter

Veteran Israel Trademark Attorney, Neil Wilkof, is a co-winner of the International Trademark Association (INTA)’s 2013 Advancing Trademark Law Award in recognition of his sterling work on the editiorial committee of INTA’s peer reviewed LAW journal Trademark Reporter.

Neil is active lecuring to the Israel chapter of Licensing Executive Society L.E.S.


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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