Israel is one of the most technologically advanced countries in the world. Its skilled workforce and abundance of venture capital allows Israel to be at the forefront of innovation, particularly in industries such as defense systems and weaponry; medicine, including pharmacology and medical equipment; cyber-security; food technologies; agriculture technologies; and autonomous vehicles, including vision technology.
The Israeli Patents Law was first enacted in 1967 and has been amended on a number of occasions. Overall, pursuing patent protection in Israel is in line with international standards and is relatively reasonably priced. Israel is a member of the Paris Convention; the Patent Cooperation Treaty (PCT); the Madrid Protocol; the Hague system; and the Budapest Treaty; as well as a partner in several Patent Prosecution Highway (PPH) agreements.
Patentable Subject Matter
A patentable invention in Israel is broadly defined as a product or a process in any technological field which is new, useful, has industrial application, and involves an inventive step. Claims directed to methods of treatment of the human body are not patentable in Israel. Such claims should be formulated as a “Composition/Product/Compound for use” claim type format.
Additional categories that are not patentable in Israel include new varieties of plants or animals (except microbiological organisms not derived from nature); business methods with no technical content; discoveries; scientific theories; mathematical formulas; software algorithms; and rules for playing games.
Filing a patent application in Israel – general information
- Patent applications may be filed in English, Hebrew, or Arabic.
- The national phase entry deadline of a PCT application into Israel is 30 months from the earliest priority date.
- File wrapper publication is available for online public inspection at ilpatsearch.justice.gov.il/UI.
- Official correspondence with the Patent Office is in Hebrew; however, responses to office actions may be filed in English.
Filing requirements
In order to obtain a patent application filing date, one must:
- Submit a patent specification containing a description of the invention; drawings; and at least one claim.
- For subject matter associated with genetic/peptide/protein sequences in the field of biotechnology, a sequence listing (DNA, RNA, or amino acids) may be required.
- Indicate the name of the applicant, the title of the invention, and an address for correspondence in Israel.
- Pay the applicable filing fee.
When all of the above is provided to the Patent Office, a filing date is established. However, a complete application may also require additional information or documents, including power of attorney, and a certified copy of each priority document, which may be filed subsequently.
Routes to Expedite Prosecution
The IL patents office (ILPO) affords the following routes to expedite prosecution:
- Accelerated examination for applicants needing patent protection as a matter of urgency. Acceptable reasons include the applicant’s advanced age or medical condition, suspected infringement of the claimed invention, and public benefit.
- Third parties – a third party may request to expedite prosecution of an application due to public interest, unreasonable delay in examining an application, and/or reasoning associated with delayed development or manufacture of a product or process claimed in a patent application.
- Green inventions – patent applications relating to environmentally friendly technologies may be classified as ‘green applications’ and benefit from a fast track examination.
- The Patent Prosecution Highway (PPH) – the ILPO is a partner to bilateral PPH programs with various national offices. Further, the ILPO is a member of the Global Patent Prosecution Highway (GPPH) arrangement.
- The Written Opinion of the International Searching Authority (ISA) – National phase entry along with filing a response to the Written Opinion of the International Searching Authority may also benefit from a fast-track examination.
- Examination under Section 17(c), “Modified Examination” – according to section 17(c) of the IL patents law, a claim set of a corresponding application granted in certain corresponding jurisdictions may be allowed in Israel with regard to enablement, novelty, inventive step, and unity of invention. The recognized corresponding jurisdictions are: Austria, Australia, United States of America, Germany, Denmark, United Kingdom, Russian Federation, Japan, European Patent Office, Norway, Canada, and Sweden.
Prosecution
In Israel, there is an ongoing duty to disclose prior art references that may be relevant to the patentability of the invention.
Before the commencement of the substantive examination of a patent, the applicant is required to respond to a Notice before Examination and submit: i) a list of the countries in which protection of corresponding patent application(s) is sought, ii) a list of any reference cited against the corresponding foreign patent application(s), and iii) references published prior to the filing date of the application that are known to the applicant and are relevant to patentability.
There is no Request for Examination, rather it is automatic.
After a response to the Notice before Examination is filed, the application is assigned to an Examiner.
One or more Office Actions may issue, addressing formalities and/or substantive concerns based on prior art. The term for responding to an Office Action is 4 months, although extensions of up to another 4 months are available, subject to a limit of 12 months for the entire prosecution. However, if no response if filed within the prescribed time limit, the ILPO will issue a Notice before Refusal, with a 30-day non-extendable deadline, whereby the Applicant may still respond to an outstanding Office Action.
Under section 22 of the Israel Patents Law, an Applicant may add new subject matter to an existing application at any time up until allowance. The new subject matter must be indicated in the margin of the specification with the date it is added (i.e. it is not accorded the original priority date).
Allowance
If the patent application is deemed to meet all requirements for allowance, a Notice of Allowance is issued. After payment of the allowance fee, the application is published and a 3-month opposition period commences. If no opposition is filed within three months from the publication date, a patent is granted.
Maintenance
Renewal fees are due three months after the grant date and at the end of the 6th (for years 7-10), 10th (for years 11-14), 14th (for years 15-18), and 18th (for years 19-20) years from the effective filing date. A lump-sum for the entire 20-year term of the patent may be paid in advance.
Divisional applications
According to the Israel Patents Law, a patent may be granted for a single invention only. An applicant may file one or more divisional applications. Divisional application(s) may be filed at any time prior to the date of allowance of the parent application or a divisional application thereof.
Patents of addition
An owner of an invention that is an improvement or modification of an invention for which a patent has been granted may file a patent application for the improvement or modification as a patent of addition. A patent of addition need not include an inventive step beyond the invention covered by the parent patent.
Coronavirus implications
With respect to public benefit, the ILPO has recently authorized patent applications relevant to the fight against the corona virus to be accelerated. Applicants of applications related to testing, treatment, prevention, or eradication of the coronavirus may file a request for accelerated examination at no charge. The authorization, inter alia, includes anti-coronavirus drugs and vaccinations, respiratory assist devices, diagnostic tests, personal protective equipment (e.g., masks, gloves), sensors, and monitoring devices.
For more information and consultation on any Israeli patent issues, please contact our office at office@miller-patents.com.