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No. 26
September 2012
International Association for the Protection of Intellectual Property
AIPPI General Secretariat |Toedistrasse 16 | P.O.Box |CH-8027 Zurich
Tel. +41 44 280 58 80 | Fax +41 44 280 58 85
[email protected] | www.aippi.org
Israel to reform Patents Law: patent applications are now published 18 months after filing
Tal Band, President, Israeli National Group of AIPPI, S. Horowitz & Co. Tel Aviv, Israel

In a nutshell, the Amendment encompasses the following issues:
  • The timeframe for the publication of patent applications –under the Patents Law (in its form prior to enactment of the Amendment), a patent application would have been published only after its examination and acceptance by the Patent Office.

    Pursuant to the Amendment, the date for the publication of patent applications is now based upon their filing date or relevant priority date, rather than their date of acceptance. Further, in terms of the Amendment, patent applications, including any related document (i.e., the complete file wrapper), will be published on the internet, as soon as possible after the passage of 18 months from their filing date or the relevant priority date, as applicable. However, in the case of an international application submitted in accordance with the PCT, the application will be published within 45 days after the applicant shall have complied with the requirements for entering the national phase in Israel.

  • Reasonable royalties –the Amendment now enables a patent owner to obtain, retroactively, reasonable royalties from any person who exploits the invention during the period beginning on the date of publication of the application for such patent (‒the publication date–) and ending on the date of acceptance of the application. The right to reasonable royalties is contingent on the fact that: (1) use of the invention as aforesaid would amount to an infringement of the patent, as granted, and (2) the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application. No retroactive relief will be granted for infringement of a claim that was added during prosecution of the patent application, following its publication. It should be noted that the existing provision in the Patents Law imposing the payment of full compensation on any person who infringes a patent, from the date of its acceptance and onwards, remains unaltered and in full force and effect. Legal proceedings for patent infringement (including for reasonable royalties relating to the infringement of a published patent application) may only be initiated after grant of the patent in question.

  • Submission of publications –the Amendment now provides for any person, other than the applicant, to have the right to submit to the examiner publications which are directly related to the invention. Such documents may be submitted during the period of pendency but ending two months after the commencement of examination.

  • The right to apply for the immediate and accelerated examination of patent applications –such right, under the Patents Law in its form prior to the Amendment, was available to the applicant only. However, following enactment of the Amendment, such right has been extended to include any other person. According to the Amendment, following an application by a person other than the applicant, seeking accelerated examination of a patent application, the examination may not be stayed. In addition, the Patents Registrar shall not grant the applicant an extension of time to file a reply to any office action, unless such extension is necessary due to circumstances beyond the control of the applicant or his representative and could not have been prevented (“exceptional circumstances ”). If, following an application by the applicant himself, seeking accelerated examination of a patent application, the applicant requests an extension of time to file a reply or stay the examination process, the accelerated examination will cease and the patent application will return to be examined in the ordinary course. Notwithstanding the foregoing, if the request for extension of time was made due to exceptional circumstances, then the accelerated examination will resume. The accelerated examination process must be performed by the Patent Office as expeditiously as possible. It should be noted that, unlike the other issues encompassing the Amendment, the aforesaid right of any person, other than the applicant, to apply for immediate and accelerated examination of patent applications will enter into effect in January 2013.

Comment

Israel has recently introduced an online interface, which permits any person to review and monitor the ongoing prosecution of Israeli patent applications. More importantly, the publication date will be the starting point of the right of a patent owner–if and when a patent is finally granted–to obtain, retroactively, reasonable royalties from any person who is found to have exploited the invention from the publication date until the date of grant of the patent.

Additionally, the Amendment creates the opportunity, albeit limited in scope, allowing for a “third party observation ” system in Israel. It is hoped that the system will be fully exploited, in order to improve the quality and efficiency of the examination of patent applications in Israel.

Lastly, the Patents Law will allow, for the first time, any person, other than the applicant, to apply for the immediate and accelerated examination of published patent applications. As a result of the Amendment, the exploitation by a competitor of the applicant of an invention claimed in such application, even prior to its acceptance, may lead to the imposition of liability on such competitor in the form of retroactive compensation, on the basis of reasonable royalties. Due to the uncertainty as to whether a patent will ultimately issue, the mere filing of the application and its publication could lead to intimidation and deter competition, even before the commencement of any type of examination regarding the eligibility of the claimed invention. Nonetheless, the possibility of applying for immediate and accelerated examination could prove to be of considerable importance in circumstances in which the patent application has already been published, but its examination has not yet commenced, or is progressing sluggishly.
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