Expediting Examination

Examination is initiated by the Patent Office by issuance of an Official Communication under Section 18 of the Israel Patent Law (about 1-3 years after filing). Under special circumstances it is possible to request Expedited Examination, e.g. likelihood of infringement, advanced age or applicant’s medical condition, public interest, ‘green technology’ patent applications etc. It is also possible to expedite examination by filing, prior to issuance of Section 18 communication, the response to the International (PCT) Search Report or IPRP. Another option for requesting Expedited Examination is via the Patent Prosecution Highway procedure. Israel is part of the Global Patent Prosecution Highway (“GPPH”) program in addition to having bilateral PPH agreements with several other Patent Offices. Thus, the GPPH and PPH programs may be based on allowed/granted claims in the following jurisdictions: Australia, Austria, Canada, China, Denmark, Estonia, European Patent Office, Finland, Germany, Hungary, Iceland, Japan, Korea, Nordic Patent Institute, Norway, Poland, Portugal, Russian Federation, Singapore, Spain, Sweden, United Kingdom and the USA. Furthermore, Israel has an Accelerated Acceptance procedure under Section 17(c) of the Patent Law. Under this law at present an Israel Patent Application may be granted based on an issued Patent in the following jurisdictions: Australia, Austria; Canada; Denmark; Germany; Japan; Norway; Russian Federation; Sweden; United States; United Kingdom; European Patent Office. Effectively, this procedure is carried out by amending the claims of the Israel Application to conform exactly to those of the corresponding issued Patent. Note that it is now possible to base the request for Accelerated Acceptance on more than one issued Patent, as long as the claims shall not be subject to a lack of unity rejection. If the request for procedure under Section 17(c) is granted, it could result in the acceleration of the acceptance of the Israeli patent. Caution should be exercised when deciding on requesting Accelerated Acceptance. Please consult at the Patent Attorney assigned to this case, should you require any further information.

Patent Term Extension

Extensions for protection of up to five years may be available in various jurisdictions for patents claiming inventions in certain fields requiring marketing approval and/or subject to regulation, such as but not limited to, medical (e.g., drugs and medical devices), food, and feed and agro (e.g., agrochemicals and plants) products that require and/or have received regulatory marketing approval, under certain circumstances.

Extending the duration of a patent requires filing an application to this effect with the patent office in each jurisdiction in which patent term extension is available and desired, within a specified time period from the date of issuance of the marketing approval in that jurisdiction, depending on the jurisdiction, typically within a few weeks. Therefore, please advise us of any developments towards marketing approval of the product subject of the patent(s) to be extended.

IDS Requirements

There is an ongoing duty to disclose anything material to the patentability of your application during the entire course of the examination. Such a disclosure is done through the filing of an Information Disclosure Statement (IDS) in the U.S. Patent and Trademark Office (USPTO). This duty is incumbent upon everyone who is substantively involved in the invention, specifically including the inventor(s), the owner(s) of the invention and the patent attorney who prepares the application. Therefore whenever the inventor(s), or the owner(s) of the invention, becomes aware of information that may be material to the examination of this application, such information should be immediately provided to us for reporting to the USPTO Examiner. Accordingly, it is our duty, as your representative, to report all that we become aware of that may be considered material to the patentability of your invention. In a recent case, finding a patent to be unenforceable because of fraud, the court held that materiality is not limited to prior art but embraces any information that a reasonable Examiner would be substantially likely to consider important in deciding whether to allow an application to issue as a patent. Consequently, we have expanded our requirement as to the type of art to be included in our Information Disclosure Statements to relevant publications published post priority date even though such art may not be considered as “prior art” since they may be material to the examination of the application. Additionally, the court held that even though an Examiner is aware of material art that, by itself, is not sufficient to establish that such art was considered. What is needed is either an Information Disclosure Statement acknowledged by the Examiner or a Notice of Reference issued by the Examiner in the application under examination. In order to overcome this problem we will also be including in the IDS submission art which has been cited in parent applications. Failure to disclose such relevant material to the Examiner may result in the non-enforceability of a patent. Accordingly, we follow the rules explicitly, so as not to commit a technical breach for which our client may pay an extreme price. It is our policy and practice to err on the side of disclosure. We believe that so great a penalty warrants such an approach. We hope that you understand this as an exercise of caution, carried out for your protection. IMPORTANT NOTE: We do not assume any liability as a result of not receiving the prior art from you and filing thereof in the USPTO.

USPTO PRE-EXAMINATION INTERVIEW PROGRAM

In a separate Client Alert sent to all Ehrlich & Fenster clients in June 2011, we informed all our clients of a new USPTO initiative to conduct an Interview with the Examiner before the mailing of the First Office Action on the merits based on the prior art references the Examiner locates in a patentability search, which references will be Communicated to the Applicant.

To participate, the application must have no more than three independent claims and twenty total claims, none of which are multiple dependent. The claims must be directed to a single invention, i.e., an election to any restriction requirement must be made without traverse.

Please note that participation in the Program does not advance the initial examination of the patent application as the examiner will not examine the application out of turn. The limited time period to respond to the Office Actions should be taken into account in deciding on whether to request participation therein. Interviews may still be requested in other stages of prosecution for those not participating in the Program.

There is no USPTO fee required to participate in the Interview Pilot Program. The Ehrlich & Fenster Fee for docketing, filing and processing the Request and expediting all future correspondence relating to the Interview and the Request is $550 plus VAT. This fee does not include the fee for analyzing the Examiner’s Communication, preparing for, and conducting the Interview, and preparing a formal response to the Communication.

For more details regarding the Program, see the aforementioned Client Alert or address any queries regarding the Program to sol@ipatent.co.il

Our Group

Through the unique synergy within the other members of the Ehrlich Group, our clients are put at a considerable advantage by the cross-border legal practice and litigation experience of EN&M, which helps resolve any oppositions to IP rights, infringement disputes involving patents, trademarks, designs or copyrights, or many other types of IP disputes. EN&M also bring experience in litigation proceedings before the Patent and Trademark Registrar, as well as before Israeli Courts, including litigation support in foreign countries including the U.S., South America, Europe and the Far East.

The cradle-to-grave offering also taps into the vast industry expertise of IPTrade, a unique platform developed by the Group with a purpose to support its clients with the monetization procedures of their IP assets, based on the experience and knowledge the group has gained and based on its international connections.

Partner with Ehrlich Group, where your ideas are protected, defended, valued and maximized in full compliance with our mission: “Turning Ideas Into Value.”

VERTICALS

LINKS

G. E. Ehrlich (1995) Ltd.
Sky Tower, 13th Floor
35 Hamasger Street
6721407 Tel Aviv, Israel
Email: info@ipatent.co.il
Tel.: +972-73-7919199
Fax.: +972-73-7919100