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, 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

During the prosecution stage of a patent application, where claims are amended in a process of negotiation with the examiner, the desire to file a ‘Divisional Application’ may rise, pertaining to subject matter which is described in the invention specification but will not be protected by the original ‘parent’ application. For example, the examiner may find that the claims define more than one invention, requiring the applicant to choose one of the inventions to be examined now and leaving the others for divisional applications. This is according to the “Unity of invention” requirement, stipulating that the claims of a patent application must relate to a single invention. In simple terms – you can’t get two (or more inventions protected) for the price of one (application). A divisional application may then be filed which keeps the original description and the unexamined claims, while retaining the filing and priority date of the parent application. Alternatively, it may be desired to file completely new claims based on the original description – the consensus amongst the various authorities is however that divisional applications must contain a specific reference to the parent application and may not extend beyond the subject matter disclosed in the parent application. The divisional must however be filed before the parent application, or an earlier divisional, is either granted or abandoned.

Here are examples as why you would seek divisional applications:

There was more than one invention in the parent application, so you want new application(s) for the additional invention(s).

• Your product does not exactly look as it did when the application was originally filed, so you want a new set of claims that better covers the product you are actually making now.
• The market may be making a version of your product that is not identical to what you are making. It may be possible to get claims that are better focused on the infringer’s product.
• You may not agree with the findings of the Examiner. A divisional is your opportunity to persuade the patent office that you are entitled to broader claims.
• Simply to have an application open at the patent office so you can draft 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.
  

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