1 February 2011Jurisdiction reportsMichael Factor

Developments at the patent office

Priority applications

After initial classification of an application, the Israel Patent Office examines applications in each category in turn to assign them to a particular technology group. Unlike in some other jurisdictions, there is no need to request examination.

It has always been possible to jump the queue by requesting accelerated examination and submitting an affidavit testifying to due cause. Typical reasons for requesting accelerated examination include competitors already using the technology.

In a notice published on November 28, 2010, it was announced that as of January 1, 2010, the applicants of patent applications first filed in Israel can request accelerated examination based on an intention to file abroad under the Paris Convention. A search report will issue within three months.

This means that first filers in Israel can get a search report very quickly and use it as a basis for deciding whether or not to file abroad. Furthermore, the applicants can make amendments to the specification and/or claims before filing abroad. Finally, since Israel is to become an International Search Authority, PCT applicants claiming priority from the Israel application can request that the International Search Report and written opinion take the Israel search findings into account.

Israel examiners have access to the same search engines that their counterparts at the EPO use. Furthermore, Israel examiners tend to know languages in addition to Hebrew and English, particularly other European languages, so the quality of the search is likely to be high.

This development, coupled with the relatively low cost of filing in Israel, the fact that the application may be filed in English and that currently there is no automatic publication, means that first filing in Israel makes strategic sense.

Publication refunds

As an efficiency measure, the Israel commissioner of patents decided four years ago to publish the bibliographic details of pending Israel patent applications on the Internet instead of in the Official Gazette. One would expect that this development would be welcomed by all, as it is more convenient, faster and more ecologically friendly.

“Since Israel is to become an International Search Authority, PCT applicants claiming priority from the Israel application can request that the International Search Report and written opinion take the Israel search findings into account.”

However, the chairman of the Knesset Constitution, Law and Justice Committee, Knesset member David Rotem, harshly criticised the commissioner for exceeding his authority in deciding not to publish basic filing details of patent applications in the Official Gazette, while continuing to collect the publication fees, amounting to between 2 and 3 million shekels ($565,000 to $845,000) a year. Following his criticisms, a couple of opportunists filed a class action.

The director of the Ministry of Justice, Dr. Guy Rotkoff, announced that the fees will be refunded.

It is hoped that this latest development will bring this unfortunate incident to a close. As an efficiency measure, I have suggested that the Israel Patent Office simply offsets the first publication fee against the publication fee for the allowed application and only actually refunds money where applications have already been issued or abandoned. This has a number of advantages:

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk