A recent Israel Patent Office Circular (M N 77) details new requirements designed to increase productivity, minimise duplication of resources and shorten exam ination.
In addition to filing details of citations in corresponding applications abroad as required under Section 18 of the Law (duty of disclosure), applicants will now be required to submit a copy of all responses made in corresponding applications concerning novelty and inventive step. This may include claim amendments submitted to overcome official actions elsewhere. However the applicant must explain how the claim amendments overcome the prior art objections.
Failure to submit such arguments will be considered as failure to fulfil the duty of disclosure. Furthermore, the applicant is now required to reference all known prior art that is directly relevant to the invention. The new requirements will come into effect at the end of June 2010.
Notice of excess claim fees
The Knesset's Constitution, Law and Justice Committee has decided to issue a surcharge of NIS 500 for each claim beyond the first 50. Failure to pay will hold up examination.
Eighteen-month publication
According to the current Israel Patent Law, applications do not automatically publish 18 months from the priority date. Instead, only the basic biographical information publishes shortly after filing, and the specification and claims publish for opposition purposes, only after allowance.
A proposed amendment to the current Patent Law is designed to conform Israel practice with that of other leading jurisdictions and provides for automatic publishing of Israel patent applications 18 months from the priority date, and once granted, for the applicant to retroactively obtain reasonable damages or royalties from infringing acts performed after publication.
The proposed amendment also provides that the application should include an abstract. The publication fee will be cancelled, possibly with an amendment to the filing fee, and the file wrapper will also be available 18 months from priority.
At present, it is possible to make significant amendments to the specification of an application prior to allowance. The proposed amendment seeks to limit this practice.
Following the A Sh I R decision upheld by the Israel Supreme Court, it has been possible to obtain compensation against third parties exploiting inventions under the Law of Unjust Enrichment. The proposed amendment suggests scrapping unjust enrichment as a ground for legal action concerning inventions, regardless of whether or not a patent application was filed.
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| Michael Factor |
JMB Factor & Co
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PO Box 45087
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Israel 91450
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