The new year ushered in a few more PCT Patent Prosecution Highway Pilot Programs (PCT-PPH), reducing the workload for cooperating patent offices and expediting examination for qualified applications.
Today’s guest article comes from Dr. Michael Factor of IP Factor, an Israel-based IP firm.
Why patent in Israel?
There are several factors that make Israel an attractive filing destination for applicants.
First, 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 India and with the Far East.
Despite her small population, 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 in any other country outside the United States.
In 2010, some 7,266 applications were filed in Israel, of which over 6,000 were national phase entries of PCT applications.
Breakdown by sector
The breakdown of applications filed in Israel in 2011 was as follows:
- 41% electronics and computer-related
- 31% chemistry, of which more than half were pharmaceuticals
- 17% biotechnology
- 11% mechanical inventions
The relatively high percentages of hi-tech, biotech and pharmaceuticals reflects the strength of Israel’s domestic industries.
According to WIPO, in 2009 the Israel Patent Authority had the highest ratio of PCT national phase applications to local applications of any jurisdiction in the world.
As of June 2012, the Israel Patent Office will be one of only ten authorities providing International Search Reports (ISR) and International Preliminary Examination Reports (IPER) for the PCT.
There are several advantages to filing PCT applications in Israel:
- Applications may be filed in English – avoid translation fees
- The low filing fee of NIS 1245 (about $330 US)
- 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 fee
- No fee for requesting examination
- 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 pre-priority disclosures may be cited against the application.
- 30 month deadline. PCT national phase entries into Israel must be filed within 30 months of priority. A missed deadline is very difficult to extend, as standard is “Due Care” of both applicant and attorneys.
Patentable Subject Matter:
- Gene sequences per se apparently allowed
- Software inventions may be allowed
- 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:
1. The specification
2. A filing fee
3. Name of applicant
4. An address of service in Israel
Also required are:
5. Power of Attorney
6. Two copies of specification, including figures and claims, in an official language; English, Hebrew or Arabic
7. Copy of priority application
8. Certified translation of the priority application
9. Claim for priority
However, these additional requirements may be submitted up to 3 months from filing (extendible with a fee). The power of attorney does not require legalization.
Overview of Patent Examination in Israel
1. Applications are examined in turn, by the respective examination group.
2. No Request for Examination is required.
3. Examination commences with 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.
4. Generally occurs four months from the date of an office action. Up to 15 months of extensions may be taken during prosecution.
5. Prior to examination commencing, a suspension of one or two years may be taken to allow other family members to issue.
6. Divisional applications may be filed up to the publication date of the first mentioned application or parent application.
7. In Israel, a divisional application of a divisional cannot be filed.
8. 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.
9. 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.
10. After the grant of the patent, claims may be narrowed and typographical errors may be corrected.
11. 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 filer is the true inventor.
Duty of Disclosure
Israel has a duty of disclosure of relevant prior art.
1. 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.
2. Full copies of X and Y citations in an ISR and citations against novelty / inventive step should be submitted in electronic format.
3. The duty of disclosure of prior art is ongoing until publication of the application for opposition purposes after allowance.
About the author
Dr. Michael Factor has very wide experience in drafting patent applications and representing clients before the local and international patent offices. Born in the UK, Michael relocated to Israel in 1994. Michael is a licensed Israel Patent Attorney with numerous professional affiliations including the IPA, the AEA and the AIPPI. Michael has a Ph.D. in Applied Physics from the Hebrew University of Jerusalem, an M.Eng. in Materials Science and Engineering from Imperial College, London, and an LL.B. from the Ono Academic College, Israel.
For more information on patenting in Israel, readers can visit Michael’s blog at http://blog.ipfactor.co.il/.