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:
- Methods of manufacture
- Claims for a device or system
- Claims for a tool for manufacturing
- Swiss type use claims
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.