Following a recent Israel Patent Office (ILPTO) decision (Israel Patent Application no. 234696, by Genentech Inc.), Applicants may now file a Divisional Application from any pending patent application, including from pending divisional applications.
The decision relates to old guidelines issued in 2010 by the previous Registrar (Registrar Circular M.N.81) which prohibited filing of divisional applications derived from a parent application which is also a divisional application (hereinafter: “a secondary divisional application”).
In the IPO recent decision, Adv. Asa Kling, the Israeli Registrar of Patents and Trademarks, stated that the circumstances leading to the previous policy are now changed and decided to cancel these guidelines.
The Registrar also stated that it is the duty of the Israel Patent Office to periodically review administrative guidelines and determine whether such guidelines remain necessary and appropriate. Reviewing the comparative law and practice, the Registrar indicated that the USPTO and the EPO permit the filing of secondary divisional applications, as do Australia and Japan.
Furthermore, in reviewing the effect of the 2010 Guidelines, the Registrar found that between 2006 and 2010, the percentage of divisional applications has tripled and consist of about 10% of all filed applications. In view of this data, the Registrar raised the possibility that this significant increase in the filing of divisional applications is an unintended consequence of the 2010 Guidelines.
In light of his review, the Registrar concluded that the Israel Patent Office should no longer prohibit the filing secondary divisional applications.