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.

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.

Good luck! 

Source: http://www.uspto.gov/news/pr/2011/11-39.jsp

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” ?!

Following years of pedantically requiring Trademark Applicants to enter Notices of Disclaimers waiving rights to exclusive use of words, letters and other symbols deemed to be non-distinctive or commonly used in a particular field of trade, the Israeli Registrar of Patents, Trademarks & Designs is having second thoughts about continuing to employ this oft-used (and sometimes draconian) condition of allowance during Trademark examination in Israel. 

In a draft Memorandum sent to IP and Legal Attorneys for input late last week, the Registrar noted that Section 21(a) of the Israel Trademarks Ordinance [New version] 1972, which empowers the Registrar and his Examiners to impose disclaimer requirements as conditions of acceptance of a mark, has been applied over the years in non-uniform fashion, thereby leading to uncertainty on two levels. Firstly, the Registrar notes that the lack of uniform application of Section 21(a) has led to uncertainty regarding the Israel Patent & Trademark Office’s (IPTO’s) own policy on disclaimers. Secondly, it has led to confusion vis-à-vis the significance attributable to the many cases for which disclaimers have not been required by the IPTO.

After noting that Trademark laws are designed to ensure that no person is afforded exclusive rights to use a non-distinctive mark or one which is in essence a common term in trade – and that Trademarks are examined in their entirety and registered in their entirety, such that even without a disclaimer being entered the owner of a Trademark registration will not be afforded exclusive rights to each and every element of the mark separately – the Registrar has proposed to generally cease conditioning the registration of marks containing non-distinctive elements upon the entry of related disclaimer notices.  The Registrar has stated that although he will still retain a discretionary right to apply Section 21 in appropriate cases – and while an Applicant would still be entitled to enter a voluntary disclaimer notice as he sees fit – the proposed new policy is intended to correlate with the “… widespread trend in European countries to no longer require disclaimer notices of this sort”.

In conclusion of his draft Memorandum, the Registrar expresses his hope that the proposed new practice of refraining from issuing disclaimer directions, will lead to a more efficient and timely examination process, and one with greater uniformity in its results.

The Registrar has invited comments on the draft Memorandum to be submitted by September 6, 2010, and it is therefore possible that the Memorandum will undergo some changes prior to being finalized as an Official Directive. If however the new practice is brought into effect in the substantially the same form as currently proposed, then it will certainly smoothen the Examination process in Israel, and contribute to shortening the pendency period which currently stands as a minimum of 12 to 15 months in the absence of accelerated examination.  We thus view this proposed reform to be a positive step in the right direction by the Registrar. What remains to be seen however, is whether the Registrar will now be encouraged to relax his long-held adversity to accepting word-mark slogans and three-dimensional Trademarks for registration in Israel.

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.

As promised – here goes the first post about Israeli IP litigation

Well, you are considering beginning a trademark litigation in Israe, but who will hear your trademark case?

The first thing you need to know is that there is no IP court in Israel, and the regular court system hears IP matters.

Having said that, the commissioner of patents, trademarks and designs has jurisdiction to hear cases that have to do with the validity of trademark applications – competition procedures, oppositions, cancellations, etc.

So, basically, here are the relevant options:

-          Opposition or request to cancel a registered mark – the commissioner of patents, trademarks and designs. At the moment, in addition to the commissioner himself, there are two more “judges” (they are in fact called adjadicators) at the trademark office (we are proud to say that one of them is a “veteran” of our firm), who take most of the trademark cases. The current commissioner seems to prefer patent cases.

-          A suit that includes a motion to cease using a mark – since in most of the cases the plaintiff wishes the defendant to stop using his mark, he would have to address the district court. According to the Israeli law today, only the district court has an authority to grant such an order. Therefore, most of the intellectual property cases are filed in the district court, which is a relatively high court in Israel.

-          A suit only for monetary compensation – if a plaintiff has no interest in stopping the use of his mark (e.g. because the use of his mark ceised, or he wants to save cost), he can choose to waive his right to file a suit to the district court and file his suit in the magistrates court, instead. Filing a suit in the mesigtrates court can have advantages in touch cases, since the plaintiff has much more influence on the choice of venue and hence – on the choice of judge.

Location – there are a number of alternatives to choosing a venue for filing a suit. The most important ones are the place where the plaintiff or the defendant live or work, or the place where the infringment took place. However, a suit can be filed in any court in the same county in the relevant venue. Since Israel is a small country, this allows a lot of flexibility, and provides plaintiffs advantage in choosing the venue of the fight.

In a notice of the commissioner of patents, trademarks, and designs, it was noted that circulars of the commissioner on policy will become affective 3 months after publication on the PTO’s website, unless stated otherwise.

It was also noted that drafts of important circulars will be published for comments, as part of a due process.

In an important decision, the deputy commissioner of patents recently ruled that late national stage entry of a patent application will not be approved without a reason for the delay.

The deputy commissioner ruled that since the standard for allowing a late application enter the national stage is “due care”, this standard must be met. “Due care” includes, as a very first and basic step, finding out what the deadline is.

However, the interesting part of the decision is not the (expected) rejection of the petition, but rather the examples that the deputy commissioner brought to cases when such a petition will be allowed.

One such a case is when the applicant simply confused Israel (IL) with Iceland (IS). In such a case, the applicant did try to find out the date, but made an understandable mistake and hence, a petition for late entry of the national stage will be allowed.

Another case is a case when an applicant mistakenly thought that Sunday is a day off in Israel, like in most of the world, and filed the application on the Monday thereafter.

During passover, the Israeli PTO will not be working. Between March 29, 2010 and April 6, 2010, no documents will be accepted.

Documents that need to be filed should be filed a day after the vacation is over.