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.
Examination Waivers
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.
Allowance
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.
Opposition
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.
Grant
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.
From now on we’re going to do the same subjects on patent law with respective views
from different jurisdictions. So I’ll do Europe, and if I have enough time and
Kim allows me, I’ll do Israel as well.
Deadline –
31 months. What happens if you miss the deadline? You fix it. You get a notice
of loss of rights, then you have another 2 months – you have to pay 50% more
official fees, but you can still file the patent in Europe.
Excess
fees – As you all probably know, most of the European
patent applications are filed today with 15 claims. The reason is that if you
file more than 15 claims you have to pay top pounds. Then, if you cross 15
you’re really in trouble, and there’s another surcharge for it – pages over 35.
That’s interesting.
Acceleration –
If you want your patent granted in Europe
quickly, what do you do? Well, one option is to file your first application in Europe. If you do, you will usually get a Search Report
in 3 months, but even if you don’t (that’s important), you can always
accelerate your European application – there is no fee. You just need to let
the European Patent Office know that you want the patent to be granted quickly.
You send them a form; you file it; you get your Search Report within 3 months.
So many people don’t know that, so they wait. We’ve recently got a case from a
client whose case was waiting at the European Patent Office for 10 years, so
acceleration very simple.
Europe
is also part of the prosecution highway, with the U.S., and a few other countries. My
personal approach is that on patent prosecution highways in Europe, is that
since there is the pace available, there’s no fee, you don’t have to amend your
application to fit into any other application, is that the PPH is not really
needed to accelerate applications in Europe. If anyone thinks otherwise, then
I’m happy to discuss it.
What
happens if you need to slow down – if your client runs out of money, or
needs some time for research, or whatever, and doesn’t want his application
examined? If you miss deadlines in Europe,
then it’s not the end of the story. With most of the deadlines you’ll get an
option to do further processing which is just paying another fee for getting
the application back on track, so take it into account that not only you can
wait until the last minute to file responses, there’s also another period of
time which you can buy. So, when clients come to you with limited budgets and
say ‘I’m looking for an investment, what can I slow down?’ European responses
are one of the things you can slow down. A recent change, is when you file a
national phase application, you used to need to wait until you got an
invitation to respond; until the application was examined. As you know, until
recently, you had just one month since you got an invitation, but now they’re
changing it so you have more time.
Software –
Roughly, patents and software are allowed – if there’s a technical effect, it used
to be a matter of non-patentable subject matter; if there’s no technical
effect, now cases are examined more in the lines of inventive step. So, if you
don’t have a true technical effect, you may be told that there’s no inventive
step. This is basically the approach; far less liberal than the U.S. in view of the most recent U.S.
case law.
Business
methods as a rule are usually not allowed in Europe. It’s quite rare. There are particular business
methods which are allowed, but usually they’re not.
There’s
a new disclosure requirement in Europe
– it’s not as bad as it looks. International applications entering national
phase will be due – the calculation of the time frame is not for national phase
entering since January, its international applications entering January, and
then when the national phase is filed, then there may be a disclosure
requirement. The EPO may invite applicants to submit results of Search Reports,
but, it’s far less a rigid requirement that in the U.S. Translation of
references is not required.
Israel
National
phase deadline is 30 months. No extensions are available. So,
if you lost it, you’re in trouble. You can try and file an application late –
if you’re a day late, or a few days late, or even a month late, and you have a
good excuse, you may get the filing date. You have to file it with a petition –
it’s not easy. You have to prove due care, but it’s possible; it’s been done.
Excess
fees – there are hardly any. Applications in Israel
are filed in the English language. Unless you cross 50 claims, there is no
surcharge; there is nothing for extra pages. Basically it’s one fee for the
application.
Acceleration
will be allowed in the following scenarios: either if there’s suspected
infringement. Many people don’t know that, but suspected infringement is
interpreted very generally in Israel.
If all you have to do is get someone to be willing to sign an affidavit that
he’s heard somebody say that somebody wants to infringe your patent that will
be enough. You don’t’ have to submit any proof. All you have to say is that
you’ve heard something and that will do. So in practice you can usually get
your applications accelerated in Israel if there’s anything. The
thing is there’s a fee – it’s not very high. Thing is, even if they are
accelerated, it’s not really accelerated, and it will still take a year or so
to get your patent granted – it’s far better than 4 or 5 years if you have to
wait for a regular procedure. Recently, we’ve had green applications. Another
thing to know about the Israeli Patent Office is that there’s a particular
person you have to send an email to every time you file a green application and
a request to accelerate it on the green track. If you just file it and request
to accelerate it, it won’t happen. You have to send an email to the assigned
person and let him know that you’ve actually filed an accelerated application,
then you’ll get it. There’s no fee. You’ll have an examination report within 3
or 4 months which is relatively quickly for the Israeli Patent Office.
This
is very recent. Applications originally filed in Israel
– the Israeli Patent Office seems to think that applications which will
originally be filed in Israel
should be accelerated, just as what happens in the U.K. In the U.K. if you have your first application filed in
the U.K.,
you’ll have your Search Report within usually 3 or 4 months. So the Israeli
Patent Office decided to do the same thing. Interestingly, the commissioner of
patents who recently left his job and was replaced by a different commissioner
of patents, decided to do that 1 day before he left his job. So we’ve still to
see if it’s really going to happen and if it’s realistic, because it seems that
the previous commissioner didn’t really think he can do it, but he seems to
have faith in the new one, so we’ll see how it goes.
Slowing
down – there is an official practice of slowing down
patent applications in Israel.
You can ask to slow them down and they will slow them down for you. You have to
pay about $14 – $15 per month to slow down an application, and then you’ll have
it slowed down for pretty much as much as you want. This is a very important
practice, because Israel
will allow every application which was allowed in a corresponding country out
of a list of 7 or 8 countries which include most of the important countries –
there’s the U.S., Europe, Russia, Australia, and a few other
countries. So if you have one of those countries allow your patent, then you
can have Israel
allow it automatically. [1] So if you
just happened to reach examination in Israel, before you reach
examination in those countries, you usually want to ask to slow it down, so you
can wait until it is granted somewhere else and you can have it automatically.
Software
used to be barely patentable in Israel
– we were more rigid than Europe, but again a
few days before the commissioner of patents who recently left his job, he
changed the approach. So, there’s a commissioner circular saying that there’s a
new law; it’s not very clear, but it seems to be something between the English
approach of contribution and the European approach of technical effect. So
basically, it seems that Israel
pretty much aligned itself withEurope.
Business
methods are not allowed inIsrael.
Disclosure
requirement – there is a disclosure requirement under Israeli
law, it starts when the application reaches examination together with (once an
examination reaches examination there is what is called) a Section 18 notice.
The patent office lets you know that your application reached examination. He
asks you to disclose everything you know, and recently the Israeli Patent
Office started requiring that translations of references will be filed which is
very burdensome, but now is required. The disclosure requirement goes on since
the moment the application reached examination and up to the moment the patent
is granted. So, you have to continue disclosing information if you know, just
like theU.S.
Israel
isn’t a relevant market for every type of product. It is not a
very large market. It’s 7 million people. You would not want to file railway
related patents in Israel,
but here’s what you will want to file inIsrael:
Everything that has to do with
the military – yes we are a country in war, and we use military
equipment, so it’s definitely an important market for military-related
products, and we file many applications of this type.
In terms of electronics,
it’s a small market, but it’s a very active market I think I’ve read
somewhere that it has the highest entrance rates of Smart-phones – for
example like 70% – 80% of the population have a Smart-phones. So, if you
have electronics, you can certainly consider Israel. There’s also the issue
of a lot of R & D going on in Israel in the electronics
field, so it’s very like that your prospective infringer is going to be an
Israeli company. We’ve actually had many cases where we’ve had patents
filed for clients, and it turned out to be that their competition is also
Israeli companies. So you may want to file patents in Israel for this purpose.
Litigation in Israel
is very cheap compared to other countries. So, stopping infringements
maybe much easier than stopping it elsewhere.
Medical devices – Israel
is a huge R & D market for medical devices. So you may want to file
medical devices there, and pharmaceuticals just like you file them
everywhere else, you’ll certainly want to file them in Israel.
I think that’s it for
me. I’ve said nothing about my firm. So very briefly it’s an Israeli/U.K./European firm that does mostly patents, but also trademark work, and contentious work – litigation, and that’s pretty much it.
[1] The corresponding patent must have been granted by a patent office having
substantive examination that is recognized by the Israel Patent Office as
being of an appropriate standard. The countries currently acceptable
include: Austria, Canada, Denmark,
the European Patent Office, Germany,
Japan, Norway, the Russian
Federation, Sweden,
the United Kingdom and
the United States. Note: Effective late March 2009 Australia was removed from the
list.
The USPTO and the Israeli patent office have recently announced a Patent Prosecution Highway pilot program to begin on July 1st.
The USPTO will accelerate allowed Israeli applications and vice versa.
With the Israeli patent office’s policy of automatically granting patents allowed in the US once they have reached examination, it will in fact render nearly any US patent allowed and granted in Israel shortly after a grant in the US.
With the Israeli patent office’s new program of accelerating patent applications initially filed in Israel, this program may create one of the fastest routes of reaching examination at the US.
Today, September 1, 2010, will long be remembered as one of the most momentous days in Israel’s Intellectual Property history.
After depositing its instrument of accession to the Madrid Protocol for the International Registration of Marks at WIPO on June 1, 2010, Israel today commenced operation of the Protocol, making it the 85th member of the WIPO-administered International Trademark system, and the 82nd Member of the Protocol.
In addition to facilitating International protection of Trade and Service marks under the Madrid Protocol, the Israel Trademarks Office (ITO) also today moved from a single-class to a multi-class filing and registration system, enabling new applications to be filed in multiple classes, with a reduced official filing fee being applied to each class after the first.
As part of a number of related changes accompanying implementation of the new multi-class Trademark system on a national level:
(a) the ITO will allow for unification of several single-class applications, or several single-class registrations, provided that the marks therein are identical and carry the same filing date;
(b) the renewal period in Israel will be reduced from 14 years to 10 years bringing it in line with the first term of registration of a mark which was changed from 7 years to 10 years in August 2003;
(c) a reduced official renewal fee will be applied to each class after the first when renewing a multi-class registration in Israel;
(d) the examination period of an Israeli application will be limited to a maximum of 2 years, after which time the application will be deemed to be cancelled unless the Applicant requests to present arguments against cancellation before the Registrar;
(e) the ITO will no longer allow changes to be made to registered national marks, and a similar approach will be applied to marks under application albeit that changes to pending marks may be allowed by the Registrar in very exceptional circumstances.
With the recent upgrade of its computer databases and online filing facilities, the Israel Trademarks Office has been promising a more efficient, effective and cheaper filing system – both on a national level, and now also on an international level. The extent, however, to which Israeli individuals and businesses will avail themselves of the opportunity to expand geographical coverage of their Trademarks under the Madrid Protocol remains to be seen, and it will likely take some time until the new international system becomes common play for Israeli Trademark owners.
Israel has an IDS requirement at the time of the application reaching examination and at any given time afterwards before it is granted.
Starting September 1st, an applicant will have to translate any reference cited against his patent which is not in English.
This is the Israeli Patent Office’s way of “raising examination quality” – by introducing a new requirement that does not exist in any other office in the world.
Or is it the Israeli PTO’s way of saying “stop filing here” ?!
The Israeli Patent Office considers entering into a Patent Prosecution Highway (PPH) agreement with the USPTO.
PPH is a convention that allows accelerated examination of an application which claims priority from an application that was previously allowed in another patent office.
In order for an application to be eligible to a PPH, all claims should be similar to the claims of the allowed application.
The Israeli Patent Commissioner requested the public to comment on the implementation of the program, noting, in his notice, that such a program may create a lot of pressure on the patent office if applied.
As much as I try, I cannot understand why the commissioner of patents and trademarks thinks that the PPH may create any kind of burden on the patent office. PPH accelerates the examination ahead of line. However, in view of clause 17(c) of the patent act and the relevant commissioner circulars, an application that was allowed in another patent office will not be examined anyway, but rather, will be automatically granted, as a matter of law. Where is, then, the pressure?
Fisher Weiler Jones recently hosted a highly successful workshop on legal strategies for defence and HLS companies.
One of the problems that such companies face is quite unique to this industry – at the HLS indusry, the country has a right to take your patent from you. It usually starts with a “security order” of the country, which prohibits the inventor from doing anything with his patent, and ends with the patent being taken from the inventor.
Some countries will compensate the applicant well for such an act. Some will not.
There are various ways to try and avoid security orders. Some of those ways are semi ”policital”. In every country, there is a specific organization, usually part of the ministry of defense or the military, which is responsible for security orders. Good connections at those organizations will help.
However, this, naturally, is beyond the reach of patent attorneys. So, what can we do to help?
What we do is try to draft our clients patents in a way that will make them look at civil as possible. We think of civil applications and stress them out. We avoid using military-related terminology, etc.
The patent offices normally look for keywords. Attorneys should be masters of terminology. Everything that can be said one way can be said totally differently. Many countries have a policy according to which if no security order was given within a specific period of time, it can no longer be given. So – we try to draft our application in such a way that the country will simply not want them.
Israeli Company “Yozmot 33 Ltd.” Sued HTC. for infringement of a mobile-related European (UK) patent.
HTC argued the patent is invalid due to lack of novelty, obviousness, insufficiency, added matter and unpatentable subject matter.
Hon. Justice Arnold held claims 1, 5 and 6 to be invalid for lack of novelty and obviousness. The allegations of insufficiency, added matter and unpatentable subject matter failed, so claim 7 was found valid.
The court further found that had claims 1, 5 and 6 been valid, they would have been infringed by HTC.
We found this case particularly interesting becuase of Yozmot’s expert background, who graduated from the best technological university in Israel – the Israel institute of technology, and works for Elbit, which was described in the ruling as large defence electronics manufacturer (in fact – the largest non-govermental defense company in Israel). We found him interesting becuase it is an opportunity to brag – both the Israel Institute of Technology and Elbit are Fisher Weiler Jones clients.
This post is to say a few words about my view on cross examining in the Israeli legal system.
One thing that we should all remember is that all trials in Israel are bench trials. We have no juries. This means one big thing – these are professional judges and they have no patience. You cannot play around with them.
There are many techniques to cross exams but the key point to remember – with the first sign of the judge getting tired – GET TO THE POINT! (and preferably, get to the point beforehand).
OK, here it goes – the key point in winning a cross examination is this – know what you want the witness to say, and make him say that. Try not to make it more than three points.
The way to make them say what you want them to say is to ask them questions in such a way they will not understand what you want.
Lies – A few words about catching witnesses in lies – Witnesses in our country lie. It is relatively easy to catch them lying, but judges here won’t get excited. So – I always do that to crack credibility, but this is usually not a case winner.
Being polite – I am (almost) always polite to my witnesses. I noticed that when I start fighting with them, while they make themselves look bad and lie more, they also make me look bad and usually say nothing that I need. However, when I am nice to them they say more, and the more they say, they more they help me.
When I am polite, the judges also let me have incredibly long cross examinations, if I need them. They are usually not used to nice attorneys in their chambers (!)
Then, when I explain to them why the witness just buried himself, they are even happier to rule in favor of my client.
JUDGES DON’T LIKE NASTY LAWYERS. I know many of my friends will not agree.
A very common strategy in patent litigation is filing requests for cancellations of a patent (reexaminations in the US) and at the same time, motions to stay to the commisioner of patents.
While there is a lot of case law in common law jurisdictions about motions to stay, there is very little in Israel. I know of two decisions, in both of them a motion to stay was not granted, but in one of them the attorney who filed the motion did not even bother to enclose the cancellation request.
I also know of one case in which a motion to stay was granted, but the decision was not published, and I do not have it.
I currently have a case pending where I filed a motion to stay, but sadly for developing this important part of law and happily for my client, I got this suit erased for other reaosns.
General impressions – as everything in Israel, it depends on the judge. If the judge likes patent law, he will want to keep the case and to hear expert opinion on validity. If he doesn’t, he will rather get rid of the case and send it to the commissioner.
My view – I have a lot of critisizm on the commissioner of patents in Israel. There is at least one thing he does really good, though – patent cancellations and oppositions. There is no doubt the commissioner has more tools and more experience to handle such cases than the court with an expert opinion. Add this to the fact that Israel’s examination process is usually auto-grant, based on other countries, and you get many patents who shouldn’t be there, and judges who think they are sacred.
