Zeev Fisher (Fisher Weiler Group) – Europe

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.