Israel Patent Office to allow no more than two independent claims of each type

In the latest of a series of reforms, the Israel Commissioner of Patents, Dr. Meir Noam has decreed that a patent application may include up to two independent claims in the following categories:

  1. Methods of manufacture
  2. Claims for a device or system
  3. Claims for a tool for manufacturing
  4. Swiss type use claims

Comment

This decree follows and formalizes a decision by the Commissioner in an Appeal regarding Metronix, relating to a robot for cleaning swimming pools, which was considered as lacking in inventive step.  I have a problem with the decision and now with this decree: I respectfully submit that it is both arbitrary and illogical.

The Israel Patent Law, like other laws around the world, requires unity of invention. A single patent can claim one invention only.

Broadly speaking, in the United States, there is no limit to the number of independent claims and unity of invention is decided substantively. One has to pay additional fees for more than 3 independent claims, but provided the independent claims are classified as being in the same art group and apparently relate to the same invention, one can usually avoid a Restriction Order or requirement to elect a species for examination. 

In Europe, on the other hand, essentially one can have one independent claim for a device or system and a second independent claim for an associated method. If there is more than one claim of a single type, the examiner will argue that there is uncertainty as to the scope of the invention.

Both the US and the European models have an inherent logic. Deciding on a maximum number of independent claims other than one, seems to be arbitrary.

Section 17c of the Israel Patent Law allows one to conform claims of an Israel patent application to that of an allowed patent from one of a list of examining jurisdictions abroad having substantive examination. The list includes the US. Once allowed and published for opposition purposes, unity of invention is not considered grounds for opposition. One assumes that the provisions of the Law as legislated by the Knesset trump circulars of the Patent Office. Unless the Patent Office disagrees with this statement, applicants will be able to choose between more than two independent claims of the same type via Section 17c, or up to two claims via substantive examination. This seems somewhat arbitrary.



Categories: Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, Israel Related, News, Patent trivia, Patents

6 replies

  1. the norms hierarchy is not relevant here. the presumption of section 17(c) is rebuttable, though i would admit i cannot imagine invocation of section 17(d) on the ground of lack of unity… think of it as a form of risk allocation: the Patent Office risks losing divisional fees, while the applicant risks his patent being challenged and perhaps losing damages due to bad drafting (see e.g. section 185).

    • The presumption of Section 17c is indeed rebuttable. However, Unity of Invention is not grounds for opposition purposes. Section 28 of the Law states that allowance is considered as evidence of unity of invention.

  2. I have already filed a 17(c) request with 8 independent claims.

    Examiner cited Metronix and forced me to choose fewer claims.

    Although you are right that the decision is arbitrary, inconsistent and is apparently not in keeping with the law, you don’t need to worry about differences between 17(c) and substantive examination.

    • I’ve had the Metronix decision thrown at me as well. I tried arguing that citing an illogical obiter was no reason to amend the claims. Now we can no longer do that.

      • If you two whiners truly believe that, why won’t you file a petition to the High Court of Justice in the matter? Or can’t you afford the fee?

      • We could do that.

        In my case, section 17c is doable.

        I think this is an issue for the AIPA and / or the AIPPI to handle. I don’t think it is a suitable course of action for going to the Supreme Court over. It’s not the only bad decision made by the Rasham or an Examiner. This one is simply aggravating…

        Now if Arbitrator Shmulovits’ mis-ruled Obiter in Giraffa vs. Melnicke had become binding Case Law, I would have considered appealing.

        For multiple independent claims? Come on! I don’t generally have them.

        It would be nice to have substantive examination of dependent claims though.

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