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.

Leave a Comment » | International Search Report, ISR, Israel, Israel Patent Agency, Israel Patent Office, patent search, Patents, PCT, WIPO | Permalink
Posted by Dr Michael Factor

Dismissal of Malpractice Charges Against Israel Patent Attorney and Lawyer Upheld on Appeal

January 1, 2011

 

The Court of Appeal has upheld the revised ruling of the lower court that an Israel Patent Attorney and Advocate was not guilty of malpractice in failing to uncover Prior Art that raised Freedom to Operate issues when conducting a Prior Art search.  

BACKGROUND

In 2001, Dr Mark Friedman, a US and Israel licensed patent attorney who is based in Israel, was approached by a client interested in developing an optical system for mapping blood vessels.

A patentability search was ordered, and Dr Friedman engaged Sol Sheinbein, a searcher who went through the card indexes at the USPTO, it being before computer database searches were readily available.  Some prior art was found, but nothing was deemed overly problematic, and, it was decided that a patent application could be filed.

When the application came up for examination, the US Examiner found five US publications that Sheinbein missed. The original court ruling suggests that he’d apparently not covered all relevant sub-classes. It is also possible that one or more card was missing from the card indexes. Apparently one of the US publications was an allowed patent that would effectively prevent the marketing of the product being developed.

The applicant sued Friedman for malpractice along with Adv. Neil Wilcoff, then one of Friedman’s partners but not involved in the case at all. Friedman joined Sheinbein as a third-party to the suite. The court of first instance found Friedman and Sheinbein guilty and ordered them to pay compensation for the aborted development project of NIS 700,000 to be divided 65% : 35%, Friedman being held responsible for the work Sheinbein performed as a sub-contactor. Damages claimed included the money spent on development of product up until that time.

Dr Friedman appealed, claiming that he always explained the difference between a patentability search and a Freedom to Operate search to his clients, and could not be held responsible for Freedom to Operate issues if he was engaged to perform a relatively cheap patentability search.

The Court of Appeal pointed out that the basic Jewish principle of the plaintiff being required to prove his case applied – .המוציא מחברו עליו הראייה

The onus was on the Plaintiff to prove that Friedman had not explained the difference between the two types of searches.

The Court of Appeals returned the case to the lower court which reversed its ruling. The reversed ruling was appealed again, and now the Court of Appeals has upheld the dismissal of all charges.

COMMENT

The patent attorney is not responsible for freedom to operate issues unless a freedom to operate search is ordered. Patentability and Freedom to Operate are not the same thing. The patent attorney should educate his clients about this, however the clients have to prove that the patent attorney failed to do so and was negligent.

For Friedman’s sake it is a relief that this case of rolling over bad decision makings by client has now been dismissed. As a matter of course patent attorneys can be expected to explain the difference. There is no reason to assume that Friedman did not give such an explanation.

The Court of First Instance was wrong in convicting Friedman, and the original ruling provides further evidence that specialist IP courts are needed, or at least IP training for judges is sorely required. That as may be, nearly a decade after the complaint was first filed, it is to be hoped that the issue is now closed.

Civil Appeal: 3620/07 Bio Nir LTD. vs. Dr. Mark Friedman, Dr Neil Wilkoff and Sol Sheinbein.

1 Comment | Intellectual Property, Israel, Israel Court Ruling, patent search, Patents | Permalink
Posted by Dr Michael Factor

Fast Israel Patent Office Search Reports Available for Priority Applications

November 28, 2010

 

After an initial classification on filing, to assign to a particular technology group, the Israel Patent Office examines applications in each group in turn. Unlike some other jurisdictions, there is no need to request examination.

It has always been possible to jump the queue by requesting accelerated examination and submitting an affidavit testifying to due cause. Typical reasons for requesting accelerated examination include competitors already using the technology.

In a Notice published on 28 November 2010 it has been announced that as of 1 January 2010, the applicants of patent applications first filed in Israel can request accelerated examination based on an intention to file abroad under the Paris Convention. A search report will issue within 3 months.

This means that first filers in Israel can get a search report very quickly and use it as a basis for deciding whether or not to file abroad. Furthermore, on the basis thereof, the applicants can make amendments to the specification and / or claims before filing abroad. Finally, since Israel is to become an International Search Authority, the applicants of a PCT application claiming priority from the Israel application can request that the International Search Report and Written Opinion take the Israel Search findings into account. 

Israel examiners have access to the same search engines that their counterparts at the EPO use. Furthermore, Israel examiners tend to have additional languages in addition to Hebrew and English, particularly other European languages, so the quality of the search is likely to be high.  

This, coupled with the relatively low cost of filing in Israel, the fact that the application may be filed in English, and that currently there is no automatic publication, means that first filing in Israel makes strategic sense.

2 Comments | Israel Patent, Israel Patent Office, Israel Related, patent search, Patents, PCT | Permalink
Posted by Dr Michael Factor

Should Israel Join the Patent Examination Superhighway?

August 15, 2010

We were intrigued to receive a letter from the Israel Patent Office asking for feedback to a proposal that it joins the patent superhighway.

Background – with growing piles of unexamined patents, a number of patent offices have joined forces such that successful examination in one or other of them can be used to get start the patent prosecution process in other member patent offices.

Israel participating would presumably have two consequences.  (i) Allowance elsewhere could accelerate the process in Israel, and (ii) issuance in Israel could help speed up prosecution elsewhere.

Allowance elsewhere already speeds up the process in Israel. Section 18 of the Israel Patent Law requires reporting citations in other jurisdictions and providing copies on CDs of anything of particular interest (X and Y citations).  Section 17c of the Law enables obtaining patents in Israel that correspond to those issued in a list of countries having thorough examination procedures. These measures, plus a slew of innovative Patent Office Circulars have resulted in situation where applicants who have filed in Israel can already take advantage of successful examination elsewhere to speed up the prosecution in Israel.

The ramification of Israel joining the patent prosecution highway appears to be the opposite. It seems to provide a mechanism to speed up prosecution elsewhere following allowance in Israel. 

In theory, this is a good idea. Different patent offices relying on each other’s work offers an opportunity to be more efficient by avoiding duplication of work. However, I think the question that the letter from the patent office is really asking is whether we Israeli practitioners (and foreign patent offices) have confidence in the ability of the Israeli examiners, to use Israeli examination as basis for examination elsewhere. 

That is a difficult question to answer. Israel having been accepted as an International search and preliminary examination authority of the PCT, able to issue ISRs and IPERs is a an official rubber stamp of their ability. One of the requirements for acceptance is having 100 examiners, leading to massive recruitment. Some of those examiners are not yet that experienced. However, many of the established examiners are very experienced indeed.

Although most patent specifications filed in Israel are in English, the examination of patents in Israel is conducted in Hebrew. All correspondence from the Israel Patent Office to the applicant is in Hebrew, and much of the return correspondence is in Hebrew as well. This somewhat limits transparency of substantive Israel examination to other patent offices.

I think that user confidence in the Israel examination will depend on the quality of the International Search Reports (ISR)s and International Preliminary Examination Reports (IPER)s of PCT applications that are examined in Israel, and the key to international cooperation in general lies in better PCT examination.

That said, the ISR only examines the first invention claimed, and if the ISR is unfavorable, the applicant may amend his claims. These two factors combine to limit the value of the International search Report as an indication of patentability of the invention eventually patented.

Israel has a talented multi-lingual, academic workforce to draw on and has the population base to recruit examiners that are competent in all European languages (Western and Eastern) and in Arabic. Israeli salaries are low compared to those in the US and in Europe, so the Israel Patent Office should be able to compete effectively with the USPTO and EPO. That said,  with more and more cutting research and patent filing taking place in Korea, Japan and China, Israel’s linguistic advantage from the ingathering of the exiles, may not be so valuable after all. There are Israelis that speak Chinese and Japanese, and probably Korean as well, but not that many.  

Using the Israel Application as an indication of patentability worldwide would be a fine thing, and I hope that the quality of the Israel examination will be such that other patent offices will rely on it. I think this new initiative is premature. Time will tell.

Leave a Comment » | IPO, Israel Patent Office, patent search, Patents | Permalink
Posted by Dr Michael Factor

Israel Patent Authority to Hold Patentscope Seminar on Fast of Av

July 4, 2010

The Patentscope Seminar is to be held on 20th and 21st of July 2010. 20th July 2010 is Tisha B’Av, the fast instituted two thousand years ago to remember and mourn the destruction of the Temple of Jerusalem. 

Legend has it that the Emperor Napoleon Bonaparte, passed a Parisian synagogue on Tisha B’Av and heard the sounds of mourning and crying. On enquiring what the fuss was about, “What’s this all about, he learned that the Jews were in mourning the loss of their Temple. “When did this happen?” Napoleon asked.  “About 1700 years ago.” was the answer he received, prompting Napoleon to note that a people who has mourned the loss of their Temple for so long, will merit to see it rebuilt.

In the Modern State, the Fast of Av is  an optional holiday, that workers can choose to take as holiday; the other options being 1 May – the Marxist favourite and Idel Fitteh, the Moslem holiday that finishes the Fast of Ramadan.

Places of entertainment such as theatres, restaurants and cinemas are closed, but many workplaces are open.

Is it appropriate for the seminar to be held that day? I think such a seminar is more like work than entertainment and Tisha B’Av is an optional work day. Personally I think that making the second day (21 July 2010) available for all those observing the Fast of Av is a reasonable compromise and the profession will be able to vote with its feet.

It is, however, unfortunate that the issue wasn’t raised earlier. I imagine an alternative two days could have been arranged with WIPO. Also, how can we complain that the AIPPI held their conference over Simchat Torah last year if the Israel Patent Office is equally insensitive? In some respects it’s like the Israel football team playing on Rosh HaShannah.

Perhaps a suitable gesture would be to not provide refreshments on the fast day?

I hope that other firms will let attorneys take tisha B’Av off as a day of optional holiday, and let them attend the seminar without creating a fuss.

Let us hope that by next year, the issue will be moot.

Leave a Comment » | IPO, Israel, Israel Patent, Israel Patent Office, Jewish, patent search, WIPO | Permalink
Posted by Dr Michael Factor

Reduction in PCT Search Fees at the EPO

March 22, 2010

As of 1 April 2010, the search fees payable to the EPO as an International Search Authority of the PCT will be $US 2485 instead of $US 2515, as previously.

This is not an April fools day joke.  I suspect that the reduction reflects the relative strengths of the Euro and the US Dollar, and possibly the fact that the USPTO is actually performing searches and not merely accepting payment for same.

Leave a Comment » | EPO, patent search, PCT, WIPO | Permalink
Posted by Dr Michael Factor

Israel Commissioner Limits Possibility of Filing Divisional Applications to Lifetime of the Parent Application

February 18, 2010

 Section 24a of the Israel Patent Law 1967 allows for filing a divisional application at any time up to a patent application issuing.

In the interests of clarifying the scope of protection, in Circular 81, the Commissioner of patents has ‘clarified the ambiguity of’ this Section of the Law by interpreting it to mean that divisional applications can only be filed prior to the parent application issuing.

Comment

With the proposed amendment allowing for 18 month publication, this measure is clearly required. Nevertheless, I am not convinced that this is interpretation of the law, but rather amendment thereof.

Arguably this measure requires a formal amendment to the Law by the Knesset and goes beyond the authority of the Commissioner. It should be included in the proposed amendment for 18 month publication (second reading) and it would be fun if someone challenges this Circular on procedural grounds.

1 Comment | Intellectual Property, IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, Israel Related, Opinion, patent search, patentable subject matter, Patents | Permalink
Posted by Dr Michael Factor

Israel Patent Office Issues Draconian Duty of Disclosure Directive

January 17, 2010

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.

1 Comment | Intellectual Property, IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, Israel Related, News, patent search, Patent trivia, Patents | Permalink
Posted by Dr Michael Factor

Israel Patent Office Hosts European Biology/Chemistry Examiners

October 18, 2009

The Israel Patent Office hosted a seminar featuring examiners from the European Patent Office. The focus was on examining chemistry and genetic applications, and presentations covered examining Markush type claims, oppositions and unity of invention.

The presentations were fairly pedestrian and not very exciting. We learned that there is a two year deadline for filing divisional applications, but instead of explaining that annuities were required retroactively, which for the inexperienced can be a nasty shock, or giving useful tips, the presenter labored the straightforward 24 month point with examples! The cakes provided as refreshments were good, but the coffee and tea were Elite Instant, Botz (Turkish-’mud’ coffee, and Wissotzky blue label cheap and nasty tea bags.

One of the examiners spoke briefly in Hebrew albeit with a very strong French accent. the crowd applauded his efforts. Tomorrow, the same presentation is being presented at Haifa university and in Tel Aviv.

In terms of the content, not very interesting and perhaps not worth attending. However, the seminar did provide an opportunity to see the new patent office premises which are very impressive. The lecture theatre seats 120 on leatherette seats. There are good acoustics and nice projector equipment. We hope that the seminars for Examiners only will prove informative and that will improve examining standards.

One clear advantage of the Patent Office hosting seminars for the profession is that people from the different offices feel that the activity is for them, whereas many practitioners feel uncomfortable attending events organized by rival firms. A necessary consequence of official patent office patronage of IP seminars is that controversial and therefore, potentially more interesting topics are avoided.  Indeed, we think that for the patent office to become involved in anything beyond procedure, such as say discussing the scope of patentable material or other gray areas may be problematic as there is a conflict of interest between the profession and the patent office. Like all IP seminars aimed at the profession, the event provided a good opportunity to catch up with acquaintances.

Leave a Comment » | EPO, Intellectual Property, patent search, patentable subject matter, Patents, pharmaceuticals, pharmaceuticals and Biotechnology | Permalink
Posted by Dr Michael Factor

Israel Applies to be PCT International Search Authority

August 4, 2009

Having reached the magic number of 100 examiners, the Israel Patent Office has, according to Maariv Newspaper’s website, applied to join the exclusive list of International Search Authorities.  The request will be considered by the UN in September.

The list of international patent offices includes the EPO, USPTO, South Korean, Chinese, Russian, Canadian and Australian patent offices, and a collaboration of Nordic patent offices.

Apparently the Egyptian Patent Office is also looking to join the exclusive club. Since Arabic is a recognized official UN language there is certainly a need for an Arabic search authority despite the relatively small numbers of patents filed in Arabic and originating in Arabic speaking lands. Israel has a diverse population speaking many languages and there are a lot of Arab science and technology graduates from Israeli universities.

Whether or not Egypt gets the job, one wonders if Arab patent offices will elect to send applications to Israel. At present, Israeli examiners are probably less competent at searching than their EPO or USPTO counterparts. This will presumably change if they are required to do first searches more often.

At present, Israeli PCT applicants can chose between the EPO or the USPTO for searching. Recently the USPTO have got much better and more efficient at meeting deadlines. It is not clear if Israel gets ISR status, whether Applicants will be able to choose the USPTO or EPO as the International Search Authority - ISR.

On the other hand, it is relatively easy for Israeli inventors to accelerate examination in Israel. Until now, an Israel Patent Office substantive examination was not generally highly regarded and many applicants preferred to invoke section 17c of the Israel Patent Law and get an Israeli application allowed based on a patent issuing elsewhere in any of a large number of patent offices with appropriate examination standard. Presumably Israel examination standards will improve if this initiative goes through.

Another ramification is that Israeli inventors may presumably choose to file in Arabic which is an official Israeli language and UN language. this will enable to go international via the PCT mechanism, but still keeping their inventions effectively secret as Arabic language applications are not generally monitored.

If this happens in large numbers, I suppose I will be out of a job as I draft in English…

2 Comments | Intellectual Property, IPO, Israel, Israel Patent, Israel Patent Office, Israel Related, News, Opinion, patent search, Patents, PCT, WIPO | Permalink
Posted by Dr Michael Factor

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