Should Israel Join the Patent Examination Superhighway?

We were intrigued to receive a letter from the Israel Patent Office asking for feedback to a proposal that it joins the patent superhighway.

Background – with growing piles of unexamined patents, a number of patent offices have joined forces such that successful examination in one or other of them can be used to get start the patent prosecution process in other member patent offices.

Israel participating would presumably have two consequences.  (i) Allowance elsewhere could accelerate the process in Israel, and (ii) issuance in Israel could help speed up prosecution elsewhere.

Allowance elsewhere already speeds up the process in Israel. Section 18 of the Israel Patent Law requires reporting citations in other jurisdictions and providing copies on CDs of anything of particular interest (X and Y citations).  Section 17c of the Law enables obtaining patents in Israel that correspond to those issued in a list of countries having thorough examination procedures. These measures, plus a slew of innovative Patent Office Circulars have resulted in situation where applicants who have filed in Israel can already take advantage of successful examination elsewhere to speed up the prosecution in Israel.

The ramification of Israel joining the patent prosecution highway appears to be the opposite. It seems to provide a mechanism to speed up prosecution elsewhere following allowance in Israel. 

In theory, this is a good idea. Different patent offices relying on each other’s work offers an opportunity to be more efficient by avoiding duplication of work. However, I think the question that the letter from the patent office is really asking is whether we Israeli practitioners (and foreign patent offices) have confidence in the ability of the Israeli examiners, to use Israeli examination as basis for examination elsewhere. 

That is a difficult question to answer. Israel having been accepted as an International search and preliminary examination authority of the PCT, able to issue ISRs and IPERs is a an official rubber stamp of their ability. One of the requirements for acceptance is having 100 examiners, leading to massive recruitment. Some of those examiners are not yet that experienced. However, many of the established examiners are very experienced indeed.

Although most patent specifications filed in Israel are in English, the examination of patents in Israel is conducted in Hebrew. All correspondence from the Israel Patent Office to the applicant is in Hebrew, and much of the return correspondence is in Hebrew as well. This somewhat limits transparency of substantive Israel examination to other patent offices.

I think that user confidence in the Israel examination will depend on the quality of the International Search Reports (ISR)s and International Preliminary Examination Reports (IPER)s of PCT applications that are examined in Israel, and the key to international cooperation in general lies in better PCT examination.

That said, the ISR only examines the first invention claimed, and if the ISR is unfavorable, the applicant may amend his claims. These two factors combine to limit the value of the International search Report as an indication of patentability of the invention eventually patented.

Israel has a talented multi-lingual, academic workforce to draw on and has the population base to recruit examiners that are competent in all European languages (Western and Eastern) and in Arabic. Israeli salaries are low compared to those in the US and in Europe, so the Israel Patent Office should be able to compete effectively with the USPTO and EPO. That said,  with more and more cutting research and patent filing taking place in Korea, Japan and China, Israel’s linguistic advantage from the ingathering of the exiles, may not be so valuable after all. There are Israelis that speak Chinese and Japanese, and probably Korean as well, but not that many.  

Using the Israel Application as an indication of patentability worldwide would be a fine thing, and I hope that the quality of the Israel examination will be such that other patent offices will rely on it. I think this new initiative is premature. Time will tell.

Categories: IPO, Israel Patent Office, patent search, Patents

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