10th Amendment to Israel Patent Law

01.11.2012

The Israel Patent Law was recently amended (10th Amendment published on 12 July 2012) to include some significant changes. The changes included both procedural as well as administrative efficiencies. The Israel Patent Office believes these changes will improve the workflow structure with Applicants and Attorneys as well as bringing the regulations nearer to common worldwide practice.

 

Submitting Applications using Computer Readable Hardware

 

The correction to the law requires submitting applications to the Israeli Patent Office via computer readable hardware, one separate CD or DVD per application. The Application, which should be submitted in PDF format (Sequence Listing in ST.25 format), must be divided into separate files as follows: (a) “Description.pdf” (b) “claims.pdf” (c) “Drawings.pdf” (if any) (d) “Sequence Listing.txt” (if any). The files must be located in one folder.

 

Publication

 

First Publication: this change, which was already mentioned in our Newsletter August 2012 edition, refers to the publication of Israeli Patent Applications prior to its examination. As mentioned, an application will be published on-line around 18 months from the filing date or earliest priority date for non-PCT applications, or within 45 days of National Phase Entry for PCT applications.

Second Publication: Once the application is allowed, notification of allowance will be published on-line as well. The publication of allowance will no longer include a description of the Invention and will now include only bibliographical particulars of the application.

 

Submitting Prior Art pursuant to Section 18 of the IL Patent Law

 

As part of the examination process, Israeli examiners conduct a search for Prior Art. Generally, the first official communication issued by the Examining Division informs the Applicant that the application has been taken-up for examination, and invites the applicant to submit prior art information Pursuant to Section 18 of the Israeli Patents Law. The Applicant, in response to this Communication is required to provide the examiner with results of all Search Reports conducted and/or references cited in corresponding applications and copies of all prior art relating to the obviousness and novelty of the application. The correction to the law now allows a third party to submit to the examiner prior art related to an application. The due date to submit prior art by a third party is within 2 months from the date the Applicant responded to the official communication pursuant to Section 18 of the Law.

 

Request for Expedited Examination

 

Requesting Expedited Examination will result in the application being picked-up for examination quicker and earlier to the chronological order in which the application was received by the Patent Office. Filing such a request must be accompanied by paying an official fee and a submitting a Declaration stating the justifiable reason/s for expediting the examination. The Declaration must be detailed and well based. The correction to the law established the main grounds which may be considered justifiable reasons for requesting expedited examination. The reasons are as follows: (1) medical condition or advanced age of the applicant, (2) notification from the Patent Registrar of the possibility of early examination in view of a parallel application being examined in conditions and in countries set out by the Registrar, (3) infringement or an established concern of infringement about to occur, (4) unreasonable delay of the examination of application, (5) examination is in the public’s interest, and (6) special circumstances which would justify expedited examination.

 

The field of the invention bears no significance to the justification of reason for filing such a request. Furthermore an Applicant should be aware that during the examination process, the examiner would not warrant extensions to deadlines for an application undergoing expedited examination. Also, a third party may now also request expedited examination of an application.

 

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