This page has the following sections:
- Why patent in Israel?
- Israel Patent Statistics
- Advantages of filing PCT applications in Israel
- Common Pitfalls
- Patentable Subject Matter
- Filing Requirements
- Overview of Patent Examination in Israel
- Duty of Disclosure
Scroll down to what you need.
This page is provided for information purposes only. Whilst every attempt is made to ensure the accuracy of this page, please contact me with specific questions.
Why patent in Israel?
Israel has preferential trading partner status with both the European Union and with the United States. The country also conducts a large amount of trade with emerging markets such as India and China.
Israel is a major player in many industries including specialty chemicals, pharmaceuticals, telecommunications and software, with Israeli companies recognized as world leaders, and with many multinational corporations doing a significant amount of their Research & Development in Israel.
Not just relative to the population size and to the GDP, but in absolute terms, there are more start-up companies in Israel than in any other country, except the US. There are more Israeli companies traded on Nasdaq than there are of any other country outside the United States.
Israel Patent Statistics
In 2015, 6,904 new applications were filed with the Israel Patent Office. This is the highest number since 2010, but still significantly less than 2006-2008. Noticeable increases in filing have occurred in chemistry, life sciences and computing related inventions. This reflects worldwide trends, as discussed by the EPO in their 2015 report.
The number of priority applications first filed in Israel was 830, which is up from 835 in 2014. It is still lower than any other year in the past decade. The number of non-priority applications, including Paris and PCT national phase filings, was 6074. This follows the over all new filing trends, and is more than any other year from 2011 to 2015, but less than 2006 to 2010.
Only 9.2% of Applicants for patents in Israel were Israelis. Indeed, the percentage of Israeli applicants has been steadily declining over the past decade, from 14.5% in 2006. The reduced filing fees for first time filers, which is similar to the US provisional filing fees using an agent, seems to have done nothing to encourage Israelis to first file in Israel, although I think there are significant advantages in so-doing, compared to going the US provisional route. Oddly however, there has been a steady rise in the percentage of Israel originating applications that are being allowed, when looking at the over-all allowance rate. Indeed, some 17.4 % of all patents allowed were filed by Israeli applicants. The logical conclusion is that Israeli Applicants have an easier examination than their foreign counterparts. I doubt that this is the case. What may be happening is that Israeli Applicants are having interviews with Examiners and negotiating something allowable.
Applications are examined between two and three years from filing date, on average 30.4 months from filing (for PCT applications, this is from the PCT filing date, not national phase entry date). On average, cases take a further 29 months to allowance.
Who is filing into Israel?
Of the PCT national phase entries, 2911 originated with the USPTO as receiving office, 1203 with the EPO as receiving office, 454 with the International Bureau, 414 were national phase entries of PCTs filed with the Israel Patent Office as the receiving office. 194 cases came from Japan, 612 from China and 38 from Korea. Without the country of origin of the cases filed with the International Bureau being known and with a massive 626 originated ‘elsewhere’, it is not clear what this data really means. I suspect that a significant number of cases have come from the Swiss, DE and UK patent offices, but could be wrong.
Surprisingly, Ben Gurion University with 23 applications filed in 2015, has overtaken Yeda (Weizmann), Technion and Yissum (Hebrew University) as the most prolific University Tech Transfer filing in Israel. All the universities are down in Israeli filings compared to 2014 figures, except for the Haifa Technion. However, when PCT applications are considered, the number of cases filed last year is much higher, and is led by Yissum, Yeda, Technion, Ben Gurion and Tel Aviv in that order. What we suspect is happening is that Ben Gurion is first filing in Israel, whereas the other universities are first filing US provisional applications.
The Israel Patent Office has offered a 40% discount to Israeli universities but this doesn’t seem to have impacted their filing strategy. We are not surprised by this since the savings are marginal when considering the cost of drafting.
Other large filers
Biosense Webster, Israel Aerospace, Iscar, Elbit, Smart Medical Systems, Verint Systems and Omrix Biopharmaceuticals are major filers in Israel, and Corning, Oridion and Tel HaShomer hospital are significant local PCT filers.
Facebook Inc. Is the largest foreign filer into Israel, with a massive 136 applications in 2015. The next 14 companies are mostly pharmaceutical developers.
Chemistry, Pharma and Biotech applications are most likely to spin off divisional applications. This is not surprising, since the Specifications tend to be longer and less focused than mechanical, physics, medical device and computer type applications.
Usage of the Patent Prosecution Highway (PPH) has increased, with some 390 cases being fast-tracked under the PPH (up from 96 in 2014) and a further 160 cases being made special for other reasons (age of applicant, suspected or actual infringement, etc.). So far, neither route has resulted in a significant number of cases being allowed.
Since the Green channel was established in 2010 for environmentally friendly patent applications, 133 cases have been fast-tracked. In 2015, some 13 cases qualified and a whopping 3 patents issued.
Hardly surprising, Chemistry related patents are the most likely to be renewed full term.
Israelis filed 1329 PCT Applications with the IPO as receiving office and a further 128 applications filed by Israelis directly with the International Bureau selected the IPO as the International Search Authority. Interestingly, some 195 Applications filed with the USPTO as receiving office specified the IPO as the International Search Authority. In total, the Israel Patent Office issued some 1085 International Search Reports. Israelis can choose to elect the USPTO, the EPO or the IPO as the International Search Authority. 819 out of 1329 (61.6%) chose the IPO which is marginally cheaper than the USPTO which handled 193 cases for Israeli Applicants, but significantly cheaper than the EPO which handled 317 cases. It seems that the EPO is still considered the ‘gold standard’. EPO examiners are fluent in three languages as a requirement for their job. (I suspect from their names, that there are a very large number of US examiners who also speak a foreign language, often Vietnamese or Korean, but USPTO searches are usually very US focused).
Advantages of filing PCT applications in Israel
- Applications may be filed in English – avoiding translation fees
- The filing fee of NIS 2037 (about $580 US) is low
- Both single and multiple dependent claims allowable
- Excess claim fees only incurred for applications with more than 50 claims
- Up to two independent claims for an aspect of the invention are allowed.
- No pre-allowance maintenance fees
- No fee for requesting examination
- It is generally possible to avoid cost and time of substantive examination by conforming the claims to those issued in a corresponding patent granted by any of several examining patent offices
- No grace period. Applicant’s own disclosures that predate the priority date may be cited against application
- 30 months. PCT national phase entries into Israel must be filed within 30 months of priority. Missed deadline very difficult to extend, as standard is “Due Care” of both applicant and attorneys.
Patentable Subject Matter
Systems and methods that are novel, inventive and useful, and have a technology character may be patented.
- Gene sequences per se apparently allowed
- Software inventions may be allowed. The rules are complicated, and beyond the scope of this discussion.
- Business methods not allowed
- Methods of therapeutic treatment not allowed
The following are prerequisites for obtaining a filing date and number for a new application filed in Israel
- The specification
- A filing fee
- Name of applicant
- An address of service in Israel
Additional requirements include:
- Power of Attorney
- A hard copy of specification, including figures and claims, in an official language; English, Hebrew or Arabic
- A DVD including the specification, figures and claims as PDFs
- Copy of priority application
- A certified translation of the priority application
- A claim for priority
These additional requirements may be submitted up to 3 months from filing (extendable with a fee).
The power of attorney does not require legalization.
Overview of Patent Examination in Israel
- Applications are examined in turn, by the respective examination group.
- No Request for Examination is required.
- Using the Patent Prosecution Highway(PPH) or substantive grounds for acceleration, it may be possible to fast-track the examination of the application.
- Examination commences with the issuance of a Notice Prior to Examination requesting details of prior art, first publication of a corresponding application, and offering the applicant an opportunity to review the specification.
- Generally four months from the date of an office action. Up to 15 months of extensions may be taken during prosecution.
- Prior to examination commencing, a suspension of one or two years may be taken to allow other family members to issue.
- Divisional applications may be filed up to the publication date of the first mentioned application or parent application.
- In Israel, a divisional application of a divisional cannot be filed.
- Barring statutory subject matter objections, claim sets allowed by a number of patent authorities having substantive examination may be allowed in Israel under Section 17c of the Law.
- Prior to allowance, there is a great deal of flexibility, and new material may be added, but will be post-dated to the date of submission.
- After the grant of the patent, claims may be narrowed and typographical errors may be corrected.
- On allowance, an Israel Application publishes for opposition purposes for three months prior to allowance. During this time, anyone may file an opposition based on lack of novelty, lack of inventive step or that the opposer is the true inventor.
Duty of Disclosure
Israel has a duty of disclosure of relevant prior art.
- A list of citations against corresponding applications should be filed in response to the Notice Prior to Examination, and additional citations should be filed in a timely manner. This is generally understood to mean within three months of coming to applicant’s attention, or when responding to office actions.
- Full copies of X and Y citations in an ISR and citations against novelty / inventive step should be submitted in electronic format.
- The duty of disclosure of prior art is ongoing until publication of the application for opposition purposes after allowance.