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ISRAEL PATENT PROSECUTION


Israel patent practice is distinct from US and European practice in a number of respects. Moshe Tritel describes a number of such areas with important practical ramifications for applicants seeking to maximise their patent protection in Israel.


Earlier-filed patent applications


In contrast to classical prior art publications, which are published prior to the effective filing date of a patent application, earlier-filed patent applications, though unpublished at the effective filing date of a patent application, can be cited as prior art in some jurisdictions. Te Israel Patent Office relates to earlier-filed applications slightly differently from either the European or US patent offices.


Selection patents


Tese constitute a special class of patents and patent applications with regard to their treatment by Israel patent examiners. While selection patents can occur in various fields, they are most oſten found among chemical and pharmaceutical patents.


Patents of addition Tese are unique to Israel patent practice.


Treatment of earlier-filed patent applications


Understanding of this topic requires familiarity with Sections 2, 4, 5 and 9 of Israel Patent Law:


• Section 2 of the law provides for the right of an


applicant to request a patent for an invention. While it does not explicitly state so, the use of the singular in this statute is relied upon to prohibit the granting of more than one patent for a single invention (‘double patenting’).


• Sections 4 and 5 relate to novelty and non- obviousness (inventive step) respectively and are similar to corresponding sections of the US and European patent laws.


• Section 9 provides that in cases where more than one entity applies for a patent for the same invention, the patent will be issued to the first to file a valid patent application.


In Israel, earlier-filed but unpublished patent applications are not considered prior art for the purposes of Sections 4 and 5 of the law. However, the claims of an earlier-filed Israel Patent Application, whether or not issued at the time of examination of the later application, can present a prima facie bar to patentability of a later-filed application under Sections 2 and 9, if the claims of the two documents are considered by the examiner to significantly overlap.


In cases where the two applications are not commonly owned, the first-filed application is examined, while examination of the second-filed application is suspended until the first application is abandoned or allowed and published for


opposition purposes. In the latter case, the


pending claims of the second application are checked against the issued claims of the earlier application to avoid overlap. In cases where the two applications are commonly owned, the overlapping claims of the second application are provisionally rejected until the overlap is removed by amendment of one or both of the applications. Examination is not suspended in this case.


A double-patenting/overlap objection may also be issued against related patents and/or applications claiming substantially the same invention. Tis could happen, for example, in the examination of a divisional application with similar claims to a parent and/or a sister application.


Te recently published Guidelines for Israel Patent Examiners provide that an overlap objection should be raised when either:


• A claim is essentially identical to one in the earlier patent specification; specifically, where each and every essential element of the claim being examined is present in the claim in the earlier application.


• The examined claim is a modification or improvement of the overlapping claim, and the modification or improvement is not inventive.


Several relevant scenarios will now be considered.


www.worldipreview.com


Life Sciences Intellectual Property Review 2011


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