Israel Patent Office Ruling Clarifies Section 17c of the Israel Patent Law

Section 17(c) of the Israel Patent Law is a clause under which the applicant is able to rely on a corresponding patent that has issued from an approved examination authority, to obtain a patent in Israel by conforming the claims to those that issued, without substantial examination in Israel for Novelty, Unity of Invention, Enablement, Inventive Step and Adequate Disclosure. 

The assumption is that, by and large, the examining countries have very similar standards and by relying on Section 17c where possible, the IPO can best utilize the resources needed for substantial examination to those cases where applications are only filed in Israel, or where an accelerated examination has been authorized.

The list of countries whose examination procedure is currently acceptable for invoking section 17c, includes: Australia, Austria, the United States Patent Office (USPTO), Germany, Denmark, the UK, the Russian Federation, Japan, the European Patent Office (EPO) , Norway, Canada and Sweden.

In Opposition Proceedings regarding IL 136482 to Albemarle Corporation, Bromium Compounds LTD, represented by Adin-Liss Attorneys, attempted to have the Application rejected outright in an opposition proceedings because the Examiner had allowed the patent to issue by invoking section 17c on a US patent that was itself a continuation-in-part.

The Commissioner of Patents, Dr. Meir Noam, rejected the opposers motion to reject the patent outright, but accepted that in cases where there is a Continuation-in-Part of a published prior application, the prior application should be considered prior art under Israeli Law, and the claims of the CIP should be examined against the disclosure of the parent application.

Noam went on to clarify that the list of countries for which Section 17c can be invoked is essentially a list that establishes presumption of patentability, and, if, there is some reason by which such an assumption is invalidated, the Patent Office can and should conduct substantive examination.

A more common occurence (not discussed in the interm ruling) would be where a US patent has issued for an invention disclosed before the priority date in the one year grace period peculiar to the US.  Here, the prior disclosure, whilst not invalidating the patent in the US, would invalidate it elsewhere, including Israel. In such cases, reliance on Section 17(c) would not be allowed.

In both the CIP case under discussion in the Opposition Proceedings and the grace period example I’ve suggested, the Applicant would be required to have informed the patent office of the publication of the parent application / grace period publication under Section 18b of the Israel Patent Law.

Getting back to the decision regarding IL136482, dated 20 August 2007, the Examiner was wrong to have allowed the patent under Section 17c, but the Israel Registrar of Patents is correct not to allow that fact to disqualify the patent. Rather, the Opponent, Bromium Compounds, will have to present evidence of lack of novelty / inventive step. However, the parent application will be considered prior art under Israel Law, and may be used in this regard.   

The ruling also discussed the possibility of converting an allowed patent into a patent of addition, and suggested that such a move would not be acceptable, based on an old ruling by a previous registrar, a Mr Joel Tzur. I am not sure that I follow the logic, and would suggest that an Israel Patent-of-Addition might well be the best way to relate to Continuations-in-Part. That said, in the interest of international harmonization, I think both should be discarded into the trash can of history. 

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