Israel Patent Office Restricts Number of Extensions Allowed During Prosecution

In general, one has four months from the mailing date to respond to an Office Action. This period is extendable on payment of a fee. In Circular M.N. 82, Dr Meir Noam, the Israel Commissioner of Patents and Trademarks has announced that the four month deadline for responding to a single Office Action during prosecution of an Israel patent application can be extended by a maximum of six months and that the total number of extensions allowable during the prosecution of an application is 15 monthly extensions.

Notably, these extension caps do not relate to responding to the Notice Prior to Examination or to restriction orders claiming that there are more than invention. Nor are requests to suspend examinations included in this capping.

From receipt of the Notice Prior to Examination, things can still take about three years even if the Examiner were to respond by return. It is thus not clear how these moves, designed to make prosecution more efficient and to speed it up, will achieve these noble aims.

I am not sure that there is any inherent advantage is limiting how much time the applicant can procrastinate, at least not before the legislation of the proposed amendment to the Israel Patent Law to have 18 month publication. Postponing allowance merely postpones being able to enforce the patent. The number of cases where the Examiner takes more than 15 months of extensions without suspension cannot be very high. I would be more impressed if the patent office would publish a charter promising that the examiner would not sit on applications for more than 3 or 4 months without good cause…



Categories: Israel, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, News

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