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

 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.



Categories: Intellectual Property, IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, Israel Related, Opinion, patent search, patentable subject matter, Patents

1 reply

  1. There is no question, this IS ultra vires. Yet another attempt by the present Commissioner to play policy-maker. Read my post on this topic at http://www.iliplaw.com.

    Why should 18 month publication make a difference re: dividing? It may not be clear until several years into prosecution, and possibly after the original case was allowed with some claims having been divided out, that it was the divided-out claims that are commercially important. That’s not something that’s affected by 18-month publication.

    Better yet, what if I timely file a divisional, the parent case then issues, and now the examiner says my divisional claims encompass two inventions? According to an earlier commissioner’s circular, that constitutes an order to divide the application; but according to this circular, I CAN’T divide the application at that point. Unless the Commissioner wants to assert that HE can order division under 24(b) whenever he wants, but my RIGHT to divide under 24(a) is temporally limited. But that means he has to interpret the phrase “the application” in 24(a) differently than he interprets it in 24(b). That doesn’t make sense.

    Regarding early publication of applications: there was a first reading regarding 18-month publication? When? What I saw circulated was a piece of draft legislation (taktzir hok, as opposed to hatza’at hok) on which comments were being solicited. I don’t think this has been brought out for a first vote yet, but if I’m wrong, please let me know when the vote took place.

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