We were not surprised that following the Genentech decision, The Commissioner circular M.N. 81 was canceled and later circulars that referred to it were amended.
This means that anyone (not just Genentech) can file a divisional from what is itself a divisional patent application in Israel.
We expected this to happen as one has to have common ground rules for all applicants.
There is, however, a downside to this. In cases that have a tendency to go litigious, such as with pharmaceuticals, there is an incentive on the applicant to keep a divisional application alive long after the parent application issues, so that the claims thereof can be amended following litigation on corresponding patents abroad, and judicial rulings concerning wording, claim structure and the like. This makes attacking such patents difficult as they become a moving target.
On grounds of ultra vires, I was unhappy with M.N. 81, but I do feel that on substantive grounds there is room to amend the law. I just feel that it requires the Knesset to do so. Possibly claims in the parent that were canceled due to plurality of invention objections should be allowed to be reintroduced, but I am not sure that allowing anything arguably based on the specification to be reintroduced at any time by keeping a divisional application alive is necessarily a good policy.
Note, there is a dirty word in Israeli legal circles for people with views like me. I am dismissed by the crusader crowd as being a ‘formalist’. I am aware of the arguments that we need judicial fiddling to protect democracy. However, I see them as Orwellian, and inherently dangerous.