AMENDMENTS AND REAMENDMENTS
JURISDICTION REPORT: ISRAEL
Dr. Michael Factor
JMB, Fa©tor & Co
Draconian disclosure directive
A recent Israel Patent Office Circular, which will take effect in June 2010, details new requirements designed to increase productivity, minimise duplication of resources and shorten the examination process.
Applicants will be required to submit a copy of all responses relating to novelty and inventive step submitted in corresponding applications in other jurisdictions, in addition to the current requirements for information. Applicants may also provide copies of claim amendments submitted to overcome prior art rejections elsewhere and must explain how the amendments overcome these objections in order to satisfy duty of disclosure requirements. Applicants will also have to reference all known prior art directly relevant to the invention.
Excess claim fees
In December 2009, the Knesset’s Constitution, Law and Justice Committee decided to issue a surcharge of NIS500 ($133) for each claim beyond the first 50. Failure to pay will delay examination. Te amendment comes into effect immediately, and covers all new applications and Patent Cooperation Treaty national phase entries.
Two claims per category
In a further circular, the commissioner of patents decreed that a patent application may include up to two independent claims in each of the following categories:
• Methods of manufacture • Claims for a device or system • Claims for a tool for manufacturing • Swiss-type use claims.
18-month publication date
Currently, Israeli patent applications are not published 18 months aſter the priority date. Instead, only basic biographical information is published shortly aſter filing, and the specification and claims are published for opposition purposes only aſter allowance.
Te proposed amendment is designed to make Israeli practice conform with that of other leading jurisdictions. It provides for automatic publishing of Israeli patent applications 18 months aſter the priority date and, once granted, for the applicant to retroactively obtain reasonable damages or royalties from infringing acts performed aſter publication.
Te proposed amendment also provides that the application should include an abstract. Te publication fee will be cancelled, possibly with an amendment to the filing fee, and the file wrapper will also be available 18 months from priority.
www.worldipreview.com
Currently, it is possible to make significant modifications to the specification of an application prior to allowance. Te proposed amendment seeks to limit this practice.
Following the 1986 A.Sh.I.R. decision, upheld by Israel’s Supreme Court, it has been possible to obtain compensation against third parties that exploit inventions under the Law of Unjust Enrichment. Te proposed amendment suggests scrapping unjust enrichment as a ground for legal action concerning inventions, regardless of whether or not a patent application was filed.
Divisional applications
Section 24a of the Israel Patent Law 1967 allows for filing a divisional application at any time up to a patent application being allowed. In the interests of clarifying the scope of protection, in Circular 81, the commissioner of patents has creatively interpreted this section of the law to relate to the parent application only.
Israel and the US Special Report 301
Following plans to include Israel in the list of OECD countries, the US is considering downgrading Israel from its Priority Watch List of serious IP offenders to the less exclusive Watch List. Te change is apparently dependent on Israel making it easier for pharmaceutical countries to obtain longer patent term extensions.
In 2006, Israel reamended a 2004 amendment to the Patent Law that provided patent term extensions allowing local generic manufacturers to produce and export drugs as soon as the main patent had expired in at least one of the other countries where there was a patent term extension.
Te original amendment was poorly written and the then Deputy Commissioner of Patents Israel Axelrod interpreted it as allowing an applicant for patent term extension to choose the country on which to base its application for extension. Te preamble to the original amendment proposal appears to make his interpretation untenable. Te second amendment was designed to further clarify the legislators’ intent.
It appears that Israel being downgraded is conditional on its Finance Ministry authorising a tentative agreement reached between US and Israeli negotiators, under which Israel is to scale back the number of countries on the list that it can rely upon to limit the patent term extensions.
mfactor@israel-patents.co.il
World Intellectual Property Review March/April 2010
45
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