ISRAEL

Accelerated Acceptance procedure under Section 17(c)

Under Section 17c of the Israel Patent Law, an Israel Patent Application may be granted based on an issued Patent of a corresponding application from one or more of the following jurisdictions: Austria, Australia, Canada, Denmark, Germany, Japan, Norway, Russian Federation, Sweden, United States, United Kingdom, and the European Patent Office. Note that the corresponding patent must have at least one common priority with the Israel Application (in this regard, a PCT application is not considered as a priority).

This procedure is carried out by amending the claims of the Israel Application to conform (identical or less) to those of the corresponding issued Patent. It is possible to base this request on more than one issued Patent, as long as the claims shall not be subject to a lack of unity rejection.

If the 17c request is granted, no substantial rejections will be raised, and the Examiner will be expected to issue either an official action regarding formal/technical matters or a Notice of Allowance, but the application will still have to wait its turn for examination.

Until grant of the Israeli Patent, Applicant is obligated to notify the Israel Patent Office of any opposition/cancellation proceedings initiated against the corresponding Patent on which a 17c request is based. Such notification may result in cancelation of the Accelerated Acceptance procedure and resuming of regular examination.

The required documents are a copy of the granted corresponding Patent and an MS Word version of the granted claims in English.

Expedited Examination under the (G)PPH (Global/Patent Prosecution Highway) Program

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, Brazil, Canada, Chile, China, Colombia, Denmark, Estonia, European Patent Office, Finland, Germany, Hungary, Iceland, Japan, New Zealand, Nordic Patent Institute, Norway, Peru, Poland, Portugal, Russian Federation, Singapore, Spain, South Korea, Sweden, United Kingdom, the USA and Visegrad (VPI). It is also possible to base the PPH request on (partial) positive results of the PCT Written Opinion / IPRP.

This procedure is carried out by the Israel Patent Office making use of relevant work already conducted by the Office of Earlier Examination (OEE) when conducting the patent examination.

If the PPH request is accepted, it will result in quick initiation of examination; i.e., we will receive the first examination report within 3 months, but it will not necessarily be favorable.

The required documents are:

1) Work products of the Office of Earlier Examination; i.e., all office actions issued, etc., and their English translation if not already in English.

2) PDF copies of all non-patent literature cited during prosecution, if any.

3) An MS Word version of the allowed/granted claims in English.

4) A claims correspondence table in case the claims to be filed in Israel are not identical to the allowed/granted corresponding claims.

Accelerated Examination based on a “Green” Application

An accelerated examination may be requested for patent applications that benefit the environment by, inter alia, decreasing pollution, delaying global warming, advancing non-polluting agriculture, and discussing alternative energy sources. If “green” status is approved by the Examiner, examination will begin within 3 month from the response to the Section 18 Office Action.

In order to request “green” classification, it is necessary to file a statement that explains how the described invention benefits the environment.

Accelerated Examination – additional options

An accelerated examination may be requested in the following cases, by filing of an affidavit presenting facts to support the request in view of:

• Advanced age or medical condition of the applicant(s).
• A notification of the Registrar that the examination may be accelerated due to the examination of a parallel application, under certain conditions (per-case).
• In case the patent to be filed has been used by others, without permission, or there is a sound concern that it will be infringed.
• In case of significant delay from the application entry date and meanwhile the examination of other similar application has already begun.
• Public interest.
• Other special circumstances that would justify accelerated examination.

Accelerated Examination filed by third party

A request for an accelerated examination may be filed by a third party unconnected to the application, in the following cases:

• If there is a sound concern that examining the application under regular schedule will cause the third party to delay developing or manufacturing a product or process that is being claimed in the patent application.
• In case of significant delay from the application entry date and meanwhile the examination of other similar application has already begun.
• Public interest.
• Other special circumstances that would justify accelerated examination.

Request for Suspension of Examination:

Suspension of Examination can only be requested after a response to ILPTO communication pursuant to Section 18 is filed and before the first Examination report is issued. It is at the discretion of the Commissioner of Patents whether to accept the request for Suspension of Examination. Generally, the length of a suspension period granted does not exceed 12 months.

Patent Term Extension

Extensions for protection of up to five years may be available in Israel for patents claiming inventions in the field of pharmaceuticals or medical devices that require and/or have received regulatory marketing approval, under certain circumstances. If you need any assistance in extending the term of your patent, we would be happy to assist you in this process. Extending the duration of a patent requires filing an application to this effect with the Patent Office within 90 days from the date of issuance of the marketing approval. This deadline is non-extendible.

Therefore, in order to proceed, please advise us of any developments towards marketing approval of the product subject of the patent(s) to be extended. Should you require additional information regarding this issue, we remain at your service.

Divisional Applications

A divisional application may be filed during any stage of the prosecution up to the publication of allowance (payment of grant fee). Such a divisional application shall pertain to subject matter described in the invention specification but not protected by the original ‘parent’ application.

Reasons for filing a divisional application may vary and include:

• Examiner found the claims to define more than one invention and required applicant to choose one of the inventions to be examined now and leaving the others for divisional application/s.
• Broadening or narrowing or “bending” the claims to more closely read on a new product/service of yourself or of a competitor.
• Broadening or narrowing the claims to render the claims more valid according to the Israeli Patent Law.
• Thickening the IP portfolio – having an application open at the patent office allows drafting new claims in the event of any unforeseen circumstances. This is particularly popular if you are likely to file an infringement suit or be involved in licensing negotiations or the like in the near future.

Disclaimer: The information provided on this webpage does not constitute legal advice and is intended for general informational purposes only. Information on this webpage may not reflect the most up-to-date legal developments or other information. The webpage contains links to other third-party websites for convenience purposes only. Ehrlich Group assumes no responsibility or liability for any errors or omissions in the content of this page.