TABLE OF CONTENT nd atent Attornies tatistics xpedited Exam arallel Applications erms & extension ubstantive Exam udicialonditions ormal Exam ayment Fee nterviewro’ Assist’ eception Hours eneral Info’ otices &.Notice: some of the references are links to the ILPO's Hebrew website The content herein should not be relied upon as legal advise and is provided solely as a general overview. Reliance on this information will be at user's own risk Circulars rafting Recommendations
GENERAL INFORMATION Patent applications are submitted to the patent division of the ILPO from all over the world. According to the field of the invention the application is allocated to an examiner who is an engineer or a science trained university graduate experienced in the said field If the application meets the requirements of the Patents Law it be granted a patent. The Commissioner of Patents is empowered to grant patents and to maintain the patent register through the administrative staff and the examiners at the ILPO. The tasks of the Patent Commissioner, the Patent Examiners and the administrative staff are laid out in the Israel Patents Law 5727 – 1967 and in the Israel Patent Regulations (Office Practice, Rules of Procedure, Documents and Fees), 5728 – 1968 (hereafter “The Regulations”) and in the Examination Guidelines.Israel Patents Law 5727 – 1967 and in the Israel Patent Regulations (Office Practice, Rules of Procedure, Documents and Fees), 5728 – 1968Examination Guidelines
RECEPTION HOURS The Patent Office is open to the public from 08:30 to 13:30 Sunday to Thursday and is closed on Fridays, Saturdays and on national holidaysopen to the public The public is advised to follow the announcements of the Patent Office which are published from time to time.follow the announcements Please note that the options available to the public at the ILPO’s website on the internet are the same options available at the information stations at the patent office.
PROFFESSIONAL ASSISTANCE Please note: The examiners are not authorized to provide an opinion or carry out a search with regards to the patentability of an application that has not yet been submitted. Queries may be made by telephone to , extension 819. Full information is available online at the ILPO’s website. The website enables to review and download of up-to-date information regarding patent applications published in Israel which are available on the ILPO database. Search is available by using various parameters.online at the ILPO’s websitedatabase The library of the ILPO is open to visitors during reception hours wherein information stations are available without charge for searches (USPTO, WIPO, Espacenet).searchesUSPTOWIPO Espacenet Such searches may be carried out while using any personal computer having web surfing capabilities.
INTERVIEW WITH AN INVENTOR In accordance with the Examination guidelines either the examiner or applicant may initiate the scheduling of a meeting with an inventor, an applicant or his authorized representative (designated patent agent or attorney). The applicant or the examiner shall state the subjects for discussion that will be brought up in the meeting.Examination guidelines The examiner’s team manager has the authority to decide whether the meeting is necessary and whether the manager’s presence at the meeting is necessary. The meeting will be coordinated using the standard means of communication (telephone, , fax or letter) at the ILPO.communication
Payment of fees to the ILPO may be made in either of two ways: Direct payment by means of the government online Payment Service – The payment receipt received on completion of the payment is to be enclosed together with the documents and application submitted to the Patent Office. government online Payment Service Payment at the Postal Bank using payment slip – which may be obtained from the Patent Office by telephone to and requesting the form to be mailed. Be sure to fill in the applicant’s name, identity card number and the details of the service for which the payment was made. Attention: The true date of the payment is the date on which the payment was actually received at the ILPO. PAYMENT OF FEES
FORMAL EXAMINATION The formal examination of a patent application checks the completeness and correctness of the documents submitted and the suitability of the invention’s title as given by the applicant in Hebrew and English. If a fault according to the formality requirements is found, a notice will be sent to the applicant to correct the defect or omissions within the time limit set out in the notice according to patent regulation 31.a notice will be sentaccording to patent regulation 31 Eighteen months from the priority date or eighteen months after submission of the application in Israel the patent application will be published in the Patents Journal on the ILPO website and which is open to public review according to section 16(a) of the Israel Patents Law, 5727 – 1967.Patents Journal Israel Patents Law, 5727 – 1967 An application which entered the National Stage through the PCT will be published 45 days from the date of submitting the application in Israel (Date of entry into the National Stage).
בחינה פורמלית Click on screen Background to go back Example of Office action Formalities Form
CONDITIONS FOR ALLOWANCE OF AN APPLICATION SECTION 4 OF THE LAW SECTION 5 OF THE LAW SECTION 2 OF THE LAW SECTION 8 OF THE LAW SECTION 9 OF THE LAW SECTION 10 OF THE LAW SECTION 7 OF THE LAW SECTION 3 OF THE LAW TO RECEIVE AN EXPLANATION CLICK ON THE APPROPIATE TITLE: SECTION 12 OF THE LAW SECTION 13 OF THE LAW onditions
SECTION 2 OF THE LAW RIGHT TO APPLY FOR A PATENT IN THE WORDS OF THE LAW: “The owner of a patentable invention is entitled under the provisions of this Law to apply that a patent be granted him for it” It is recommended to review the Examination Guidelines in this respect located on the ILPO’s website.Examination Guidelines onditions
SECTION 3 OF THE LAW WHAT IS PATENTABILITY IN THE WORDS OF THE LAW: “An invention, whether a product or a process, which is new and useful, can be used in industry or agriculture, and which involves an inventive step, is a patentable invention” It is recommended to review the Examination Guidelines in this respect located on the ILPO’s website.Examination Guidelines onditions
SECTION 4 OF THE LAW WHAT IS A NEW INVENTION IN THE WORDS OF THE LAW: “An invention is deemed new if it was not published, in Israel or abroad, before the application date— “ (1)by written, visual, audible or any other description, in a manner that enables a skilled person to make it according to the particulars of the description; (2) by exploitation or exhibition, in a manner that enables a skilled person to make it according to the particulars thus made known. It is recommended to review the Examination Guidelines in this respect located on the ILPO’s website.Examination Guidelines onditions
SECTION 5 OF THE LAW WHAT IS AN INVENTIVE STEP IN THE WORDS OF THE LAW: “An inventive step is a step which does not, to an average skilled person, appear obvious in the light of information published before the application date in ways stated in section 4” It is recommended to review the Examination Guidelines in this respect located on the ILPO’s website.Examination Guidelines onditions
SECTION 7 OF THE LAW RESTRICTION ON GRANT OF PATENT IN THE WORDS OF THE LAW: Notwithstanding the provisions of section 2, no patent shall be granted for – (1) a method of therapeutic treatment of the human body; (2) new varieties of plants or animals, except microbiological organisms not derived from nature.” It is recommended to review the Examination Guidelines in this respect located on the ILPO’s website.Examination Guidelines onditions
SECTION 8 OF THE LAW PATENT TO BE FOR ONE INVENTION IN THE WORDS OF THE LAW: “A patent shall be granted for a single invention only.” It is recommended to review the Examination Guidelines in this respect located on the ILPO’s website.Examination Guidelines onditions
SECTION 9 OF THE LAW FIRST APPLICATION HAS BETTER RIGHT IN THE WORDS OF THE LAW: “If more than one applicant applied for a patent for the same invention, then the patent shall be granted the one who first validly applied for it” It is recommended to review the Examination Guidelines in this respect located on the ILPO’s website.Examination Guidelines onditions
SECTION 10 OF THE LAW PRIORITY RIGHT IN THE WORDS OF THE LAW: (a) If the owner of an invention submitted an application for a patent in Israel for an invention for which he or his predecessor in title already submitted a previous application for a patent in Israel or in one of the Convention States (hereafter: previous application), then he may request that, for the purposes of sections 4, 5 and 9, the date of the previous application be deemed the date of the application filed in Israel (hereafter: priority right), if all the following conditions are met (1) The application in Israel has been filed within twelve months after the filing of the foreign application; (2) The claim for the priority rights is made not later than two months after filing of the application in Israel; (3) A copy of the specification submitted with the previous application, and of the drawings that accompanied it, and the specification is certified by a competent authority in the Convention state in which the previous application was submitted, is submitted to the Commissioner of Patents within the time prescribed by regulations; (4) It appears to the Commissioner of Patents that the invention described in the previous application and the invention a patent is applied for in Israel are essentially the same. (b) If the claim for priority right is based on more than one previous application, and priority right is claimed on the basis of each of those applications, then the provisions of subsection (a) shall apply to each part of the invention in accordance with the date of the earliest previous application relating to that part. (c) If the claim for the priority right is based on part of previous application, the provisions of subsection (a) shall apply as if that part had been submitted abroad as separate previous application. (d) A priority right may be claimed in respect of a part of a patent application, and the provisions of subsection (a) shall thereupon apply to that part only. It is recommended to review the Examination Guidelines in this respect located on the ILPO’s website.Examination Guidelines onditions
Priority can be claimed from a previous application if within 12 months before filing of the application in Israel the previous application was filed in Israel or abroad. The same application will serve as a priority document (in accordance with the requirements of section 10 of the Patent Law, as stated). The following actions must be carried out: 1.Filling the appropriate entry in the application form 2.Filing a copy of the previous application certified by the Patent Office of the country where the application was filed, in addition to all the other application documents. 3.Presentation of a certified translation of the previous application (if not in the English Language). SECTION 10 OF THE LAW CLAIMING PRIORITY onditions
SECTION 12 OF THE LAW SPECIFICATION (a)The specification shall contain a title by which the invention can be identified, a description of the invention, with drawings as may be necessary, and a description of the manner of carrying out the invention, enabling a skilled person to carry it out. (b)(b) In the matter of subsection (a), if the subject of the invention which deals with is a biological material or process for production of a biological material or an invention that involves the use of biological material, and the biological material was deposited in a Deposit Institution, then part of the description of the invention or the means of carrying it out may be done by reference to the deposit made, all of which by means and by conditions stipulated by the Minister of Justice with approval by the Constitution, Law and Justice Committee of the Knesset. “Biological Material” – a biological material that is not available to the public and which cannot describable in a manner that will enable a skilled person to carry out the invention and only that the biological material has the capability of replication or transcription either by itself or in a animal or plant host cell. “Deposit Institution” – An institution recognized as an International deposit under section 7 of the Budapest Treaty or an institution which the Commissioner of Patents recognized for purposes of this section, and for which a notice has been published in Israel State Records. “Budapest Treaty” – The Budapest Treaty on the International recognition of the deposit of microorganisms purposes of patent procedure which was signed on April 28, 1977 and amended on September 26, The Treaty is available to the public at the ILPO. It is recommended to review the Examination Guidelines located on ILPO’s website.Examination Guidelines onditions IN THE WORDS OF THE LAW:
SECTION 13 OF THE LAW CLAIMS In the words of the Law: “(a) The specification shall end with a claim or claims defining the invention: Provided that each claim reasonably arise out of the description contained in the specification. (b) It is permissible to express in the claim any of the basic elements of the invention as a means or a step for the performance of a certain act, and it is not necessary to specify the structure, the material or the acts required for the performance of that act; a claim expressed as aforesaid shall be deemed to include particulars of the relevant structure, material or acts, as described in the specifications It is recommended to review the Examination Guidelines located on ILPO’s website.Examination Guidelines onditions
SUBSTANTIVE EXAMINATION Prior to examination of the application In accordance with the requirements of regulation 34 of the Israel Patent Regulations (Office Practice, Rules of Procedure, Documents and Fees), 5728 – 1968 (hereinafter: ‘the Regulations”) the application shall be examined having regard to the classification adopted by the Patent Office in the order in which they have been filed. In accordance with the requirements of section 18(a) of the Law, the Patent Office will send the applicant a request to submit details regarding corresponding applications filed abroad. The applicant must reply to this request within the required period of time. Upon receipt of the reply the substantive examination will begin.
EXAMINER’S CONCLUSIONS If the examiner is convinced that it is not possible to grant the application a patent, an office action will be sent to the applicant pointing out the defects and the reasons for the examiner’s conclusions according to the Law and the Regulations, the Commissioner’s Notices and Examination Guidelines. In accordance with the requirements of Regulation 42 the applicant may, within four months from the office action, in reply thereto, rectify the defects of which he has been notified or give reasons why he need not rectify all or part of them or request to have his arguments heard by the Commissioner. Pending requests numbers and quere place in line, of correspondence of the Patent Examiners is published on the ILPO’s website search engine click here.according to the Law and the Regulations, the Commissioner’s Notices and Examination Guidelineshere If the examiner is of the opinion that the application meets the requirements of the Law a notification before allowance will be sent to the applicant together with a report of the status of the application and a copy of the application as received. SUBSTANTIVE EXAMINATION
Request for Submission of Documents in Accordance with Section 18 of the Law Formal Patent Application Submitted Confirmation on Filing Application Including Number, Date and Formal Examination Substantive Examination of Application and Office Action of Defects in Patent Application Reply in Accordance with Section 18 of the law from the Applicant In Case of Rejection In Case of Rejection In Case of Allowance In Case of Allowance
Request for Submission of Documents in Accordance with Section 18 of the Law Formal Patent Application Submitted Confirmation on filing Application Including Number, Date and Formal Examination Substantive Examination of Application and Office Action of Defects in Patent Application Application of Section 17(c) of the Law by the Applicant Reply in Accordance with Section 18 of the law from the Applicant Reply to Examiner’s Office Action of Defects in Patent Application In Case of Allowance Notification of Defects before Notification of Allowance of Patent Application Notification of Allowance of Application Payment of Publication Fee Publication of the Application in the Patents Journal APPROVED Rejection of Application in Accordance with Section 17(d) of the Law
Request for Submission of Documents in Accordance with Section 18 of the Law Formal Patent Application Submitted Confirmation on Filing Application Including Number, Date and Formal Examination Rejection of Application in Accordance with Patent Regulation 45 Substantive Examination of Application and Office Action of Defects in Patent Application Notification before Rejection of Patent Application in Accordance with Regulation 45 Denied Reply in Accordance with Section 18 of the law from the Applicant Reply to Examiner’s Office Action of Defects in Patent Application In Case of Rejection
Click on screen Background to go back Example of “Office action of Defects in Patent Application ”
Click on screen Background to go back Example of “Office action Notification of Defects before Notification of Allowance of Patent Application ”
Click on screen Background to go back Example of “Office action Notification of Allowance of Application ”
Click on screen Background to go back Example of Office action “Request for Submission of Documents in Accordance with Section 18 of the Law”
Click on screen Background to go back Example of Office action “Rejection of Application in Accordance with Patent Regulation 45”
Click on screen Background to go back Example of Office action “Notificatio n before Rejection of Patent Application ”
After payment of the required fees (for publication according to section 26 of the Law) the application will be published in the Patents Journal and the specification will be open for review on the Patent Office Search Site. After payment of the required fees Patents Journal Patent Office Search Site If no opposition has been filed against the grant of a patent within three months after publication, a patent will be granted on the invention. The patent will remain in force for 20 years from the date of the application, subject to timely payment of renewal fees. SUBSTANTIVE EXAMINATION
DESCRIPTION OF THE INVENTION: The specification shall contain a title by which it is possible to identify the invention, a description of the invention, with drawings as may be necessary, and description of the manner of carrying out the invention such that a person skilled in the art can carry it out according thereto.” (see section 12(a) of the Law)title Relevant technological background of the invention and presentation of the technical problem the invention seek to solve, with citation of the previous state of the art (patent number, books, articles, etc.) Relevant technological background of the invention Summary of the invention – Such summary will be identical, generally, to the definition of the invention given in the first claim. Summary of the invention Specification of the differences between the invention and the prior art which enable the invention to improve upon the existing drawbacks or which bring unanticipated improvements or results. Description of the carrying out or method of use of the invention. Description of the experiments or examples and their results, if such were performed. Following the description a claim or series of claims are presented (giving further information on the subject) It is recommended to peruse the Patents Law and the Regulations which appear on the Patent Office website.the Patent Office website RECOMMENDATIONS FOR DRAFTING A PATENT APPLICATION SPECIFICATION OF A PATENT APPLICATION SHALL INCLUDE:
BACKGROUND OF THE INVENTION/ TECHNOLOGICAL BACKGROUND
SUMMARY OF THE INVENTION
CLAIMS WHICH DEFINE THE INVENTION “The specification shall end with a claim or claims defining the invention: provided that each claim shall reasonably arise out of the description contained in the specification” (See section 13(a) of the Law). “A claim defining the invention concisely and clearly” (See Regulation 20(3)(a)), The purpose of the claim is to define the extent of the protection the claim affords the invention by defining the technical properties. In the first claim (the main claim of the invention) the elements must be defined (if an apparatus is involved), or the steps of the process (if a method is involved), which are necessary for carrying out the invention. In the supplementary claims which are dependent on preceding claims (known also as dependent claims), secondary and more specific features and variations etc. shall be defined. (for example, “Apparatus as defined in claim independent 1 where in apparatus X comprises an element Y connected to the element Z, etc.”). Each claim comprises a single sentence only, no matter the length of the claim. Note that according to the requirements of the Commissioner’s Circular 008/2011 omnibus claims are unacceptable.Commissioner’s Circular 008/2011 Note the requirements of the Commissioner’s Circular M.N. 30 to USE claims.Commissioner’s Circular M.N. 30 It is recommended to peruse the Patent Law and the Patent Regulations which appear on the Patent Office ’s website. Patent Office ’s website RECOMMENDATION FOR DRAFTING A PATENT APPLICATION (CONTINUED) A PATENT APPLICATION SHALL INCLUDE:
Drawings (see Regulation 20(a)2 and section 21 of the Law): The drawings (if present) shall define the invention graphically. For each drawing the specification shall give a brief description (for example: Figure 1 is a plan view of the apparatus; Figure 2 is a cross-section of Figure 1, etc.) Every detail which appears on a drawing shall be accompanied by numbered symbol on the drawing. It is not sufficient just to number the parts but to describe also the interworking between the different parts and the means of carrying out the invention such that a person skilled in the art can carry it out according thereto. It is recommended to peruse the Law and the Regulations which appear on the ILPO’s website.the ILPO’s website To see a presentation of application details press HELP Help RECOMMENDATION FOR DRAFTING A PATENT APPLICATION (CONTINUED) A PATENT APPLICATION SHALL INCLUDE:
PATENT SPECIFICATION DESCRIPTION OF THE APPLICATION AND THE DRAWINGS “The specification shall contain a title by which it is possible to identify the invention, a description of the invention with drawings as may be necessary, and a description of the manner of carrying out the invention, enabling a skilled person to carry it out” (See section 12(a)of the Patents Law)
PATENT SPECIFICATION CLAIMS AND DRAWINGS The specification shall end with a claim or claims defining the invention, provided that each claim shall reasonably arise out of the description contained in the specification.” (See section 13(a)of the Patents Law)
SECTION 17 (C) OF THE LAW APPROVING AN APPLICATION BASED UPON PARALLEL PATENT c)If the conditions specified below are met by an application, then it shall be deemed to have complied with the provisions of section 4, 5, 8, 12 and 13 of the Law: 1.The applicant submitted a patent application on the same invention (in this section: parallel application) and was granted a patent in a member state, which appears in the list published in the Reshumot by the Commissioner of Patents (in this section: parallel patent), and all the following hold true:member stateReshumot (a)Priority right was lawfully claimed for the patent application in Israel under section 10 of the Law, by virtue of the parallel application; (b)Priority right was claimed for the parallel application under the Law applicable to it, by virtue of the patent application in Israel; (c)Priority right was lawfully claimed for the patent application in Israel by virtue of another application for protection submitted in a Member State, and by virtue of the other application priority right was claimed for the parallel application under the Law applicable to it; 2.The applicant requested in writing that the provisions of this section be applied to his patent application; 3.The applicant delivered to the Patent Office the claims in the parallel patent, translated to the language in which his patent application was submitted in Israel; 4.The claim or claims in the application are identical to the claims in the parallel patent, but the application can include fewer claims that those in the parallel patent; 5.The applicant submitted a description and drawings identical to those in the parallel patent, or a description and drawings according to section 12 of the Law.
TIMES AND EXTENSION TIME The applicant shall reply to all notices from the Patent Office within the time prescribed in the notice. If the applicant cannot reply within the prescribed time, he shall file a request for an extension of time and pay the prescribed fees for each month of delay.pay the prescribed fees The Commissioner of Patents is empowered to consider the request for extension of time with a demand for evidence for the fact alleged therein. In the absence of a reply within the prescribed time, or of an application for extension, the Commissioner of Patents is empowered to dismiss the application and to close the file. Note that according to the requirements of the Commissioner’s Circular 005/2011:Commissioner’s Circular 005/2011
DECISIONS OF THE COMMISSIONER OF PATENTS The decisions of the Commissioner of Patents published and are available on the website of the Patent Office.decisions of the Commissioner Objections to the decision of the patent examiner It shall be permitted to object to any decision or action of an examiner and to request that the matter be brought before the Commissioner of Patents (section 161 of the Law). Opposition to grant of patent (Pre-grant opposition) After the allowance of an application the application is published in the Patents Journal under section 26 and any person may, within three months from the date of publication, oppose the grant of the patent by written notice to the Commissioner of Patents (section 30 of the Law).Patents Journal After filing of opposition, an opposition proceeding begins and concludes with a decision by the Commissioner of Patents to accept or reject the opposition (section 32 of the Law).
DECISIONS OF THE COMMISSIONER OF PATENTS Application for revocation of Patent At any stage after grant of patent, the owner of the patent or any other person who is not the owner of the patent may file an application to revoke the patent (section 73, 73b of the Law). Where the applicant for revocation of a patent is not the owner of the patent proceeding will commence to hear the applicant which will result in a decision by the Commissioner to accept or reject the application for revocation. Restoration of Patent Following the lapse of a patent due to non-payment of renewal fee, the owner of the patent may make an application for restoration of the patent provided that on filing the application he pays the special fee prescribed for that purpose (section 59 of the Law). Appeal on decision of Commissioner A person who considers himself aggrieved by a decision of the Commissioner under this Law, including a decision not to hear him under section 159, may appeal to the court within the prescribed time (section 174a of the Law). A person who considers himself aggrieved by another decision of the Commissioner under this Law, may appeal to the court after grant of permission to do so by the court or by the Commissioner (section 174b of the Law).
DECISIONS OF THE COMMISSIONER OF PATENTS Request to mark inventor's name An inventor for whose invention a patent was applied for, or his descendants, may demand that the inventor’s name be stated in the specification, the Register and in the patent certificate, and the Commissioner of Patents shall accede to the demand subject to the provisions of sections , provided that the demand was filed on time and manner prescribed, on condition that the demand was submitted at the prescribed time and in the prescribed manner. Hearing the owner of the Invention and Patent holder If the inventor or his descendants, request that the inventor’s name be stated when they are not the owners of the invention or of the patent, then the Commissioner of Patents shall notify the owner of the invention or of the patent and—if opposition proceedings under section 30 are pending at the time—any other person who is a party to those proceedings; the Commissioner of Patents shall give his decision after hearing the arguments of the persons concerned, if they so requested within the prescribed time Non recourse for a request The Commissioner shall not need for a recourse of requesting to mark the name of the inventor, if it appears from the Law that it required to discuss the application within the grounds stated in section 31 (3) or section 73 of the Law.
DECISIONS OF THE COMMISSIONER OF PATENTS Non waiver of requesting to mark a name A Boasted which one cannot waive the right to mark his/hers name as the inventor of the application. Opposition to restoration Any person may oppose a restoration application within three months after the date of publication, on the grounds that the Commissioner of Patents had no basis to order the publication of the application. Opposition to amendment of the specification Any person may oppose before the Commissioner of Patents the grant of permission to amend a specification;; opposition shall be by delivery of a notice to the Commissioner of Patents within three months after the notice of the grant of permission to amend was published. The following are the grounds for opposition to the grant of permission to amend: (1) there is a reason why the Commissioner of Patents was entitled to refuse permission to amend; (2) The amendment does not achieve the purpose for which it was requested. Decision on the question of Service Invention If a dispute arose on the question whether a certain invention is a service invention, then the employee or the employer may apply to the Commissioner of Patents in order for him/her to decide the question.
NOTICES AND CIRCULARS FROM THE COMMISSIONER The circulars of the Commissioner of Patents, Designs and Trade Marks give administrative directives. These directives are to ensure certainty and clarity in actions taken before the Patent Office while maintaining administrative flexibility. In the matter of defining administrative directives, their purpose, the manner of their creation and application, see Directives of Attorney General No ). Directives of Attorney General No The Circulars of the Commissioner appear on the ILPO’s website.Circulars of the Commissioner It is recommended to check whether a pertinent circular exists for a particular subject before contacting the Patent Office. Commissioner’s Notices are meant to update the public on current subjects linked to the working of the Patent Office such as new services available to the public – for the convenience of applicants. Commissioner’s Notices
STATISTICAL DATA An annual report is published on the ILPO’s website once a year. The report summarizes the activities of the ILPO in general and of the Patent department in particular. Among the data presented in the report one can ascertain the number of applications accepted by the ILPO during the year, the waiting times of new and returning examination of applications according to field and many other topics which show the performance level of the patent department. To see the annual reports press here.here
PARALLEL PATENT APPLICATIONS IN FOREIGN COUNTRIES In order to obtain protection for an invention in a foreign country, the inventor has to apply for a patent in each country in which he wishes to obtain protection. There are two possibilities available: 1.Direct application to the Patents Office of each and every country under the Paris Treaty. Priority rights may be obtained according to the date of the application in Israel (see “priority rights”). Some countries require representation by a local patents attorney or attorney-at-law or at the least a local address. 2.Application for an international patent through the Patent Office under the Patent cooperation treaty. An international patent application does not provide protection in every country in the world – One has to apply in each country separately. However, an application of this type provides time to consider whether it is worthwhile to obtain protection in a particular country. In addition, an application of this type provides the convenience of a search report and of a written opinion on patentability according to international standards before Filing an application in various foreign countries for local patent protection. For further instructions and details available at the ILPO’s website press here.here
Filing first application Filing IL application t = 0t = 12 Priority date National filing date Applicant Time (t) [months] PATENT APPLICATION ACCORDING TO THE PARIS TREATY EXTENSION OF APPLICATION TIME BEYOND 12 MONTHS IS NOT POSSIBLE
Filing first application Time (t) [months] t = 0 Priority date Applicant Filing int’ application t = 12 International filing date Filing IL application t = 30 National filing date International phase National phase PATENT APPLICATION ACCORDING TO THE PATENT COOPERATION TREATY (PCT) EXTENSION OF APPLICATION TIME BEYOND 30 MONTHS IS NOT POSSIBLE TERMS OF EXTENSION OF APPLICATION TIME BEYOND 30 MONTHS, GO TO Commissioner’s circular (M.N.45)Commissioner’s circular (M.N.45)
EXPEDITED EXAMINATION OF PATENT APPLICATION In accordance with requirements of section 19(c) of the Law a person other than the applicant, and not connected to the applicant and who is not acting on his behalf may submit to the Commissioner a reasoned request accompanied by an affidavit stating the facts for immediate examination of the application which was published according to section 16(a) of the Law with one of the following conditions present: There is basis to suspect that examination of the application according to place-in-line, will result the applicant according to this sub-section, who is involved in the invention, to postpone development or production of a product or a process which is claimed in the patent application; (2) The passage of time since the application was submitted to the ILPO according to section 15 or from the date of entry into the National Phase has been unreasonably longer than the time elapsed until examination of other application of the same class; (3) In the public interest; (4) There are special circumstances which justify immediate examination. In accordance with the requirements of section 19(a) of the Law, an applicant who has reasons for doing so may submit the Commissioner a reasoned request accompanied by an affidavit verifying the facts, for the immediate examination of the application. The following are reasonable causes: (1) The advanced age or health situation of the applicant; (2) A Commissioner’s Notice concerning the possibility for early examination due to examination of parallel application under condition and countries which will be announced by the Commissioner; (3) another person began to exploit the invention claimed in the applicant’s application or there is a basis to suspect he may do so; (4) The passage of time since the application date according to section 15 of the Law or since entry of the application into the National phase according to section 48(d) of the Law has been unreasonably long and also substantially longer than the elapsed period before the examination of other applications in the same class; (5) In the public interest; (6) There are special circumstances which justify immediate examination.
THE PPH ROUTE In order to expand the possibilities of the application obtaining patents in a more facile and quicker way the PPH route and the PCT-PPH route are being offered to applicants in Israel, routes that exist/work in Patent Offices throughout the world.the PPH route and the PCT-PPH route In the framework of these routes, an applicant may submit a request for expedited examination having received a positive examination for a parallel application at a Patent Office of a country with which Israel has a PPH agreement, or a positive International examination report and/or an International examination report from a search Authority which Israel has a PCT-PPH agreement, including the Israel Patent Office which is such an Authority. Note: An application which was approved for examination by the expedited route will be examined in the same way as any other application.
GREEN APPLICATION Within the framework of the worldwide efforts to conserve the planet and the environment, policies of support have been initiated in many patent offices in the western world, especially, and in particular at the Israel patent office, for encouraging submission of patent applications known as green invention. Green applications are applications in which the inventions described therein for which patents are requested help to improve the environment, including interfering with agents which cause global warming, reducing air and water pollution, advancing non-polluting agriculture, dealing with alternative or renewable energy, etc. The ILPO views as proper to adopt this policy and in December 2009, issued a Commissioner’s circular (M.N.76) which sets out the criteria for expedited examination of “green” applications. These applications are classified “green” (According to the request of the applicant and authorization of the examiner) and their examination will begin three months after classification. It is possible to request classification of application previously submitted in the regular route whose examination has not yet begun. The request for classification as “green” does not involve a payment of a fee. Process for submitting green applications For details apply to Dr. Ronen Lahav – Responsible for submission of green applications Process for submitting green applications
PATENT ATTORNEYS Drafting a patent application requires expertise. The scope of the protection that the patent will obtain depends on the success of the drafting of the specification and especially that of the claims and also on the success of the applicant in dealing with the examiner’s opinion after examination. The applicant has the right to draft the application himself and to deal directly with the ILPO. The applicant may choose to appoint a lawyer or a patent attorney to represent him. A patent attorney is a professional who is licensed according to the Law to deal with drafting of patent applications and to represent patent applicants before the Commissioner of Patent. Patent Attorneys are in the main possessors of training in one of the fields of engineering or technology with knowledge and experience in patent material. Patent attorneys and also attorneys who are familiar with the subject can advise an applicant whether his idea qualifies as an invention, can instruct the applicant in matter of rights as owner of an invention or as owner of a patent, on the ways of revealing the invention before and after submission of the patent application. Patent attorney also deal with patent applications submitted abroad through the agency of their foreign colleagues. The register of Patent Attorneys is published on the ILPO’s website.ILPO’s website