The Duty of Disclosure in Israel

In Commissioner Circular No. 011/2012, the Commissioner of Patents, Adv. Assa Kling has clarified the Duty of Disclosure under section 18 of the Israel Patent Law.

Prior art cited against corresponding applications abroad as novelty or inventive step destroying (for example X and Y citations in PCT applications, and citations cited under Sections 102 and 103 in the US) should be provided on a CD or other appropriate digital media. Only these citations should be provided on the CD which should be clearly labeled as appertaining to the specific application and, if more than one disk is submitted, these should be labeled 1 or x, 2 of x, etc.

COMMENT

Although the commissioner does not ask for it, and perhaps does not want it at all, I would nevertheless advise clients to submit a list of other references believed relevant, such as those cited in another related application that does not share a common priority, art referenced in the background cited in an Information Disclosure Statement (IDS) in the US, etc., since I can see failure to do so could be considered as bad faith by the courts, and in Israel Law, bad faith is considered very seriously indeed.

In this point, I am aware that I am at odds with my former colleague, Mr Shimon Shalit, whom is an authority in such matters.  I would therefore be interested to hear from other practitioners with views or strong feelings one way or the other.

Footnote

I suspect that Merpel, the IP Kat’s friend, would make some Katty remark about the CD being a circular in a circular.

The tee-shirt was chosen for Kim Lindy who liked the one I found for oral exams  (see here).

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