Changes to Israel Patent Law – 18 Month Publication, Third Party Submissions, Filing on Electronic Media and Accelerated Examination

With rather less fanfare than the American Invents Act, the 10th amendment to the Israel Patent Law 1967 has been passed by the Knesset, Israel’s parliament.

The main changes are as follows:

1.  In addition to paper submissions, new applications shall be filed on separate digital media (DVD or CD), as separate PDF files for description, claims and drawings. Gene sequence listings, were relevant, should be filed as a .txt file. A separate disk should be used for each application.

Applications will publish automatically 18 months from priority. PCT National Phase entries will publish 45 days from filing.

2. The backlog of previously filed pending applications will be published in chronological order at the rate of up to 4500 applications a month.

3. Following the publication of the pending applications, third parties will be able to submit prior art. This will be possible up to 2 months from the applicant responding to the Notice Prior to Examination.

4. Third parties will be able to request accelerated examination of pending applications, with submission of a fee, an affidavit and grounds for so doing. This will only come into effect in six months time, however.

OUR COMMENTS

Presumably, on-line filing will come in shortly, and applicants will be able to submit the PDFs over the Internet.

We note that the Israel Patent Office is becoming paperless, and recall that Dr Michael Bart, the Head of the Israel PCT Receiving Office once described the paperless patent office as being like a paperless toilet.

Automatic publication of pending applications in Israel is long overdue. The amendment to the Israel Patent Law for this had a first reading back in 2005 or 2006 and we received a draft amendment in January 2012 see here.

Third party submissions are a welcome and cheaper ex partes alternative to the inter partes opposition proceedings. Since the opposition proceedings still remain a viable option, the two month deadline for the third party submission is not unreasonable, and is probably designed to prevent unnecessary delays in prosecution.

Third parties being able to submit requests for accelerated examination is something that I do not fully understand. I suspect that on a patent issuing, the patentee twill be able to request and receive retroactive compensation for damages from the time of publication. To minimize the risk, potential infringers believing a pending application to be invalid will be able to have the examination accelerated and if allowed, will be able to proceed opposition proceedings. We suspect that this change will mostly impact the pharmaceutical industry.

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