Despite Appeals to the District Court and the Supreme Court and a compromise reached by the parties upholding the patent, the Deputy Commissioner refuses to allow IL 179995.
Orbotech is the Applicant of Israel Patent Application IL 179995. In a decision from back in July 2014 , the Deputy Commissioner Ms Jacqueline Bracha accepted Camtek’s arguments filed in an Opposition and refused the patent application.
Orbotech appealed to the District Court against the decision, and the District Court accepted the Appeal and ordered the case returned to the Deputy Commissioner to give the Applicant a chance to prove their assertion that the prior art patent ‘405 and the control system were insufficient to render the alleged invention unpatentable.
Not to be outdone, Camtek requested permission to appeal the District Court decision.However, then both sides agreed to a compromise which was ratified by the Court, under which the patentee would be awarded the patents but no costs would be awarded.
Consequently, Camtek may be considered as an Opponent who has retracted the Opposition and the court’s options are detailed in Section 34 of the Israel Patent Law 1967 which states:
34. If opposition was duly submitted under section 30 and was subsequently cancelled, then Registrar may refuse to grant the patent applied for if, in the course of the opposition, he discovered material according to which the application should not have been accepted in the first place.
Thus this is a rare case where an Opposition was accepted. That decision was cancelled but the Court of Appeal did not positively allow the patent. Rather, the District Court considered the decision to accept the opposition was deficient and the Applicant was deprived of a fair opportunity to show that the prior art does not render the claimed invention non-patentable. However, the District Court did not, itself, analyze the references and conclude that they are insufficient to anticipate of render obvious the claimed invention.
Furthermore, the Supreme Court that authorized the Opposition being canceled also did not address the patentability issue or discuss Section 34.
In these circumstances, having analyzed the case and concluded that the claimed invention is not patentable, the Deputy Commissioner saw no reason to reconsider this decision and informs Amitech that with reference to the Decision of 20 July 2014, does not see fit to allow the patent. In paragraph 64 of that decision, the Deputy Commissioner had concluded that the patent was anticipated by the ‘450 patent and any additional functionality of the control system that was not claimed are not pat of the claimed invention.
Therefore, the patent remains rejected. Under regulation 74b of the Patent Regulations, the Applicant has 30 days to Appeal this decision.
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