An Israeli patent is the form of protection offered for an invention that meets the “regular” requirements known from other patent systems: Novelty, Inventive Step and Industrial Applicability.
THe Israeli patent system resembles that of the UK, and the patentability requirement resembles those of Europe, but most Israeli Patent Attorneys are stongly influenced by the US law. This is due to the fact that Israel enjoys the largest number of US patent agents outside the US.
Duration of protection:
An Israeli patent is granted and lasts for a period of 20 years from the date of the first (priority) filing.
Rights offered by a granted patent:
The owner of a patent in Israel can prevent anyone from using the patent by way of production, sale, offer for sale, etc.
The owner of a patent in Israel is also entitled to monetary damages. The damages are calculated retroatively to begin from the date of the publication of the patent. However, unlike in most modern patent systems, an Israeli patent is only published upon allowance.
Filing an Israeli Patent
A patent in Israeli may be filed in English, Hebrew or Arabic. In practice, patents in Hebrew or Arabic are nearly never filed, and nearly all patents filed to the Israeli patent office are filed in English.
The examination process:
Once a patent is filed, it waits in line until the examiner picks it up for examination. Lacking a “special reason” the examiner is obligated by law to examine patents in the order of their filing (he is not allowed to examine first a patent that was filed later).
While in recent years it typically took 3-4 years for a patent to reach examination, the Israeli Patent Authority has made significant and successful attempts to reduce the backlog, and patents now usually hit an examiner after an average period of about 2 years.
Notice Before Examination and The Disclosure Requirement
Once the patent reached the examiner and before the examination formally begins, the examiner will request that the applicant will respond to a “Notice Before Examination”. This notice resembles an Information Disclosure System (IDS) in the US system.
The applicant is obligated to inform the examiner of any relevant piece of art that he is aware of which might be material to the patentability of the invention.
However, the applicant is ONLY required to disclose referenced cited as X or Y in parallel search report.
Unfortunately, if the relevant reference is not in English language (or Hebrew or Arabic), the applicant is also obligated to translate the reference in full.
Once the application is in examination, the applicant is required to continue and disclose to the examiner any reference that was cited in parallel jurisdictions until grant, and it is not enough to disclose all the known art when responding to a notice before examination.
A very important part of the Israeli patent system is the examination waivers. Most of the granted Israeli patents are not examined at all, and are granted based on one of the two examination waivers.
The “older” and more commonly used examination waiver is based on section 17(c) of the Israeli Patent Act. An owner of a granted patent in important jurisdictions such as the US, Europe, the UK, Canada, Australia, Japan and Russia may amend the claims of the corresponding Israeli application to match those of the granted patent, and request that a waiver is provided. The examiner is allowed to examine the application based on the material that he/she has, but they normally do not.
The other type of examination waiver is based on internal patent authority guidelines, and allows to amend the application to correspond to a positive PCT opinion on patentablity.
As examination waivers are so commonly used, it is possible to request to stall the examination of an Israeli application BEFORE it officially began in order to wait for a corresponding patent to be granted.
As soon as the examination is concluded, either by enjoying an examination waiver or by persuading the examiner to grant the patent, the application is allowed and is published in the official patent journal.
From this point on, any third party has a 3 months period to file an opposition against the allowed patent.
A patent opposition is a contentious procedure that strongly resembles a court proceeding. Both parties are allowed to submit evidence, cross examine witnesses and submit summations. At the end of the process, costs are awarded to the winning party.
As only the commissioner of patents, his deputy and a patent adjudicator are deciding oppositions, there is a tremendous backlog in the issuance of decisions, and a typical opposition may last as much as 4 years and more.
Any decision made in the opposition creates an estoppel between the parties to the opposition, and contradicting argument cannot be made in court.
However, in view of the general lack of respect that Israeli courts have to decisions of other tribunals, it is very hard to rely on a harsh implementation of an estoppel.
If no opposition is filed, or if an opposition is filed and set aside, the patent registers, and is published again as a registered patent.