An Amendment to The Israeli Patent Law
August 19, 2012
On July 12, 2012 an amendment to the Israeli patent law was published (amendment no. 10), encompassing several important issues:
- Publication of applications – Prior to the amendment, according to section 26 of the Israeli patent law, an Israeli application would have been published only after allowance. According to the amendment, Israeli applications that are not a national phase of a PCT application would be published 18 months following the earlier between the filing date and the priority date. Israeli applications which are a national phase of a PCT application would be published 45 days following payment of filing fees. The application, as well as the application file-wrapper, would be available on the internet site of the Israeli Patent Office (IPO). By this amendment, Israel joins many PCT member states in which the application is published 18 months following the priority date.
Moreover, according to the amendment, the applicant is entitled to compensations on account of use of the invention during the period following the initial publication (under section 16 of the Law) and prior to the final publication (under section 26 of the Law). The applicant is entitled to compensations only if the invention as defined in the claims of the granted patent is substantially identical to the invention claimed in the application and only if the use constitutes infringement of the patent as granted.
- Third-party prior art submission – According to the amendment, a third party who is not the applicant, will be able to submit prior art to the Examiner of the Israeli Patent Office (IPO). Third-party submission will be possible up until two months following submission of prior art disclosure by the applicant, as required by Section 18 of the Israeli patent law. Of note, although third-party submission may extend prosecution, the Israeli patent law currently does not provide patent term adjustment to compensate for reduction in the 20-years-from-filing patent term due to patent office delays or delays in grant due to oppositions.
- Expedited commencement of examination – Prior to the amendment only an applicant could file a request at the Israeli Patent Office (IPO) to expedite examination for an application. According to the amendment, starting on January 12, 2013, a third-party can also file such a request, provided the application fulfils one of the requirements of Section 19A(C) of the Israeli patent law, namely:
- There are reasonable grounds to believe that if examination of the application is not expedited (but rather proceeds according to filing order), the third party (engaged in the field of the invention) may have to postpone development or manufacture of a product or method that are claimed in the application.
- The time that elapsed since filing of the Israeli application is unreasonably long compared to the filing-to-examination time for other applications in the same field.
- Public welfare.
- Special circumstances.