I. Israel Patent Office Issues Draconian Disclosure Directive

A recent Israel Patent Office Circular (M. N. 77) by the Israel Commissioner of Patents Dr. Meir Noam, details new requirements designed to increase patent office productivity, minimize duplication of resources and shorten the examination process.

In addition to filing details of citations in corresponding applications abroad as required under Section 18 of the Law (Duty of Disclosure), applicants will now be required to submit a copy of all responses made in corresponding cases abroad as far as Novelty and Inventive Step are concerned. This response may include claim amendments submitted to overcome the Official Actions made elsewhere. However the applicant must explain how the claim amendments overcome the prior art objections. 

Failure to submit such arguments will be considered as failure to fulfill the Duty of Disclosure. Furthermore, the applicant is now required to reference all known prior art that is directly relevant to the invention.

The new ruling applies to all applications for which a Notice Prior to Application has not yet issued.

Comments

As with many efficiency measures adopted by the USPTO, it is not clear whether this development will actually increase or decrease Examiners' workloads and affect time to issue. However, it will certainly increase the workload of the patent practitioners and presumably result in more expensive prosecution for the applicants. On the other hand, it is safe to assume that fewer invalid patents will issue, and there could be a corresponding decrease in oppositions and litigation.

There has been a difference of opinion within the profession as to the exact Duty of Disclosure requirement and the necessity and advisability of submitting prior art not cited against corresponding applications abroad but nevertheless known to the applicant. The current circular renders such arguments moot.

For a discussion of this development, see Israel Patent Office Issues Draconian Duty of Disclosure Directive in The IP Factor blog.

II. Notice of Excess Claim Fees

In a Notice of December 10, 2009, the Commissioner of Patents announced that the Knesset's Constitution, Law and Justice Committee have decided to issue a surcharge of NIS 500 for each claim beyond the first 50. It is not clear when the excess claim fees are due but from the Notice, it seems that they are due on filing. Failure to pay will hold up examination. Presumably there will be a follow-up Circular that clarifies the issue. At present, Israel examiners tend to relate to the independent claims only. It is to be hoped that this excess claim requirement indicates that in future all claims will be examined on their merits.

III. Second Reading of Proposed Amendment to Israel Patent Law to Result in 18 Month Publication

According to the Israel Patent Law applications do not automatically publish 18 months from the priority date. Instead, only the basic biographical information publishes shortly after filing, and the specification and claims publish for opposition purposes only, once allowed. Thus Israel has a "submarine" patent system as existed in the US prior to 1996, but which no longer exists in other major patenting jurisdictions.

Noting that there is frequently a corresponding PCT application or national application that publishes after 18 months, the Justice Ministry has published a Proposed Amendment to the Law, the preamble of which hypothesizes that the current state of affairs enables competitors to learn an applicant's technology from corresponding, published applications abroad and to implement the invention in Israel before a patent issued. Since this does not provide grounds for the applicant to sue, the Ministry proposes an amendment to the Law.

The proposed amendment 

The proposed amendment provides for automatic publishing of Israel patent applications 18 months from the priority date, and also provides for the applicant to obtain reasonable damages or royalties from infringing acts performed after publication and prior to allowance.

The proposed amendment includes several more provisions. For example, the application should include an abstract that defines the scope of the invention.

In addition, under the A.Sh.I.R. decision the District Court, upheld by the Supreme Court, has allowed compensation for "non-patented inventions" under the Law of Unjust Enrichment. This is problematic as it is not clear whether inventors of such non-registered patents are entitled to protection if the invention is directed to subject matter not patentable under Israel law:

• for expired patents
• for patentable subject matter not filed as a patent, or
• for inventions where due to prior publication by the inventor, there is no novelty.

The Amendment proposes scrapping Unjust Enrichment as grounds for legal action concerning the copying of inventions, whether or not a patent application was not filed.

The current publication fee will be canceled, possibly with an amendment to the filing fee, and the file wrapper will available for inspection from this 18 month publication.

If passed, this amendment can be expected to bring Israel Patent practice into line with other major jurisdictions such as the US, UK, EPO, Japan and PCT.

For additional commentary on this proposed amendment see Israel Ministry of Justice Proposes Amendment to Patent Law in The IP Factor blog.