Israel patent law offers an expedited, cost-effective, and safe examination route for patent applications having a corresponding patent granted by a recognized foreign patent office and/or received positive substantive examination results.

01.11.2010

Section 17(c) of the Israeli Patent Law 1967 allows an applicant to request an expedited examination for an Israeli patent application based on a corresponding patent if the corresponding patent was granted by the patent office of the following jurisdictions: Austria, Canada, Denmark, the European Patent Office, Germany, Japan, Norway, the Russian Federation, Sweden, the United Kingdom and the United States. The patent regulations expands the scope of this section to allow requesting an expedited examination for an Israeli patent application based on positive substantive examination results, such as a positive
substantive examination in a Chapter II of the Patent Cooperation Treaty (IPRP Chapter II).

When an expedited examination, which is also referred to as modified examination, is conducted,
novelty, inventive step, unity of invention and enablement are considered as affirmed to the same
extent of the claims of the granted corresponding patent or the positive substantive examination
results. This is different from a regular accelerated examination (i.e. due to a potential
infringement) under which a substantive examination is held. The expedited examination allows
acquiring a granted Israeli patent within several months without a substantive examination. It
should be noted that during the expedited examination, the Israeli Patent office may refrain from
granting an application if the application does not comply with the Israeli Patent Law 1967 or if
the Patent Office finds reasons why the Israeli application should not be granted, as is further
described below in more details.

In order to avoid a rejection during the expedited examination, a number of conditions must be met:

The corresponding patent has to be directed to the same invention as that in the Israeli patent
application, and to have a common priority. The specification and the drawing of the Israeli
Patent Application and the corresponding patent have to be identical. Only claims which are
identical to the granted claims of the corresponding patent will be approved. In practice, some or
all of the claims of the corresponding patent are used, verbatim, to replace the currently pending
claims of the Israeli patent application. Claims with different limitations will not be allowed.
Clerical errors and language may be corrected if needed.

The expedited examination has to be requested by the applicant prior to allowance, even if one or
more office actions have already been issued during a regular examination procedure. However, the
expedited examination is not a route for adjusting the scope of granted claims and cannot be
requested after the allowance. It should be noted, that as granted patents from a number of
jurisdictions may be considered as corresponding patents, the applicant may choose the most
effective claims.

If the expedited examination is based on a corresponding patent granted by a foreign patent
office, the corresponding patent has to be a granted patent. A notice of allowance will not be
sufficient.

The claims of the corresponding patent must be provided in either English, Hebrew or Arabic.

Claims for methods of therapeutic treatment will not be granted. However, corresponding patent
claims which recite methods of therapeutic treatment on the human body, granted by one of the
aforementioned patent offices, and rephrased to comply with the
definitions of use claims, are deemed applicable.

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