Expediting and Modifying Patent Examinations in Israel

There are two types of procedures under Israeli Patent Law for facilitating the examination of a patent application:

Expedited Examination. Expediting the examination of a patent application means advancing the application out of turn for immediate examination.

Modified Examination. Modified examination means that the substantive examination of a patent application is significantly shortened, as the examiner relies on search and examination results issued by a foreign patent office. 

This short guide is intended to give the reader a short overview of expedited and modified patent examination practice and procedures in Israel, with the hope it may be offer our clients substantial savings in both cost and time.

A Short Guide on Expediting and Modifying Patent Examinations in Israel

Expedited examination for green technologies or for inventions related to COVID-19 virus.

Green technologies – 

Technologies that help mitigate the impact of global warming, diminish pollution, contribute to the discovery or development of energy resources or the more efficient utilization and conservation of energy resources, etc.

COVID-19 Inventions – 

Medical products and processes supporting the response to COVID-19.

Requirements

Filing a petition for expediting the examination together with a letter explaining the invention’s contribution to the environment, or its utility for fighting COVID-19.  

Benefits

Examination commences within three months, rather than the average three-year pendency period.

Limits

Applicant must respond to an Office-Action within a maximum of four months, without extensions, otherwise the patent application is returned to turn for regular examination, unless the examiner is persuaded that an extension is required for reasons beyond applicant’s control or ability to prevent.

Costs

Official fees: $0

Professional fees: $250

General

Expedited examination based on the applicant being age 70 or older. or based on the applicant’s health being that the applicant may not be available to assist in prosecution if prosecution proceeds normally.

Requirements

Filing a petition for expediting the examination together with an affidavit supporting applicant’s alleged old age or health issues.

 

Benefits

Examination commences within three months, rather than the average three-year pendency period.

Limits
Applicant must respond to an Office-Action within a maximum of four months, without extensions, otherwise the patent application is returned to turn for regular examination, unless the examiner is persuaded that an extension is required for reasons beyond applicant’s control or ability to prevent.

Costs

Official fees: $0

Professional fees: $250

General

Expedited examination if the regular patent process time is likely to prejudice the applicant’s or a third party’s rights. Expediting the examination under a special order is available both to the applicant and to a third party.

Requirements

Filing a petition for expediting the examination together with an affidavit supporting the alleged facts of the matter. The following arguments are considered sufficient basis for expediting the examination under a special order:

(1) Expediting the examination is required, because another party has begun to exploit the claimed invention without permission, or there is a reason to believe that he will do so.

(2) Expediting the examination is just, because the examination of other applications of the same class, filed on approximately the same date, has already begun.

(3) Expediting the examination would benefit the public good.

(4) There are special circumstances that justify expediting the examination.

Benefits

Examination commences within three months, rather than the average three-year pendency period.

The procedure is available for third parties, who wish to expedite applicant’s patent examination.

Costs

For petitions filed by the applicant:

Official fees: $350

Professional fees: $650

 

For petitions filed by third parties:

Official fees: $5,000

Professional fees: $1,500

General

The Patent Prosecution Highway (PPH) is a set of bilateral agreements for sharing information between patent offices, with the goal of reducing examination workload and improving patent quality. The PPH puts in place a procedure whereby an intellectual property office can make use of relevant work already conducted by another office when conducting the patent examination. Thus, if claims have been found to be acceptable by a first intellectual property office, an accelerated examination of a corresponding application at a second office may be requested.

As a result of the success of the PPH Program, the maintenance of the many individual bilateral agreements between countries has become challenging. A need for a single set of principles that would form a worldwide PPH system became pressing. On January 6, 2014, the Israeli Patent Office has joined 17 Intellectual Property Offices in a Global Patent Prosecution Highway (GPPH) arrangement.

The GPPH uses a single set of qualifying requirements, aiming to simplify and improve the existing PPH network. Under the GPPH, a request for accelerated processing can be based on work products, including PCT work products, providing the eligibility criteria are met. 

As of January 2021, these patent offices have joined the GPPH: 

IP Australia, Austrian Patent Office, Canadian Intellectual Property Office, Danish Patent and Trademark Office, Estonian Patent Office, Finnish Patent and Registration Office, German Patent and Trade Mark Office, Hungarian Intellectual Property Office, Icelandic Patent Office, Intellectual Property Office of New Zealand; Israel Patent Office; Japan Patent Office; Korean Intellectual Property Office; Nordic Patent Institute; Norwegian Industrial Property Office; Patent Office of the Republic of Poland; Portuguese Institute of Industrial Property; Russian Federal Service for Intellectual Property; Intellectual Property Office of Singapore; Spanish Patent and Trademark Office; Superintendence of Industry and Commerce; Swedish Patent and Registration Office; United Kingdom Intellectual Property Office; United States Patent and Trademark Office.

Since the guidelines of the GPPH pilot take precedence over those of the existing bilateral arrangements, and since most offices with which the ILPO has established PPH arrangements are participants in the GPPH pilot, the ILPO’s bilateral PPH agreements are currently of no practical effect, but for two important exceptions: the PPH agreements with the Slovenian Intellectual Property Office (SIPO) and with the European Union Intellectual Property Office (EUIPO), whom have yet to join the GPPH.

Requirements for expedited examination

There are four requirements for requesting accelerated examination under the PPH/GPPH program at the ILPO. These are:

1) Both the ILPO application for which acceleration is requested and the Office of Earlier Examination (OEE) application(s) forming the basis of the PPH/GPPH request shall have the same earliest date (whether this be a priority date or a filing date).

2) At least one corresponding OEE application has one or more claims that are determined to be allowable by the OEE. The indication that a claim is allowable should be provided as an explicit statement in any substantive work product from the OEE. Claim(s) determined as novel, inventive and industrially applicable in the PCT work products has/have the meaning of allowable in this document.

3) All claims on file, as originally filed or as amended, for examination under the PPH/GPPH must sufficiently correspond to one or more of those claims indicated as allowable in the OEE. Claims are considered to “sufficiently correspond” where, accounting for differences due to translations and claim format, the claims in the ILPO are of the same or similar scope as the claims in the OEE, or the claims in the ILPO are narrower in scope than the claims in the OEE. In this regard, a claim that is narrower in scope occurs when an OEE claim is amended to be further limited by an additional feature that is supported in the specification (description and/or claims).

A claim at the ILPO which introduces a new/different category of claims to those claims indicated as allowable in the OEE is not considered to sufficiently correspond. For example, where the OEE claims only contain claims to a process of manufacturing a product, then the claims in the ILPO are not considered to sufficiently correspond if the ILPO claims introduce product claims that are dependent on the corresponding process claims. N.B. If the claims on file at the ILPO do not, at the time of the PPH/GPPH request being made, correspond to those found allowable by the OEE then a set of amended claims, which do correspond to the allowed OEE claims, should be filed along with the PPH/GPPH request.

4) The ILPO has not begun examination of the application.

Required documents for expedited examination

The following documentation is needed to support a request for accelerated examination under the PPH/GPPH pilot program at the ILPO:

1) a completed request form and claim correspondence table showing the relationship between the claims of the ILPO application and the claims of the corresponding OEE application considered allowable by the OEE.

2) a copy of the office action(s) on the corresponding OEE application(s). The applicant can either provide these with the PPH/GPPH request or, where the OEE has a Dossier Access System upon which the respective documents are available, request that the ILPO obtain the documents required directly from the OEE.

3) a copy of the claims found to be patentable by the OEE. The applicant can either provide these with the PPH/GPPH request or, where the OEE has a Dossier Access System upon which the allowed claims are available, request that the ILPO obtain the claims directly from the OEE.

4) if the office actions and allowed claims, as noted above, are not in English, Hebrew or Arabic, and/or not available in English, Hebrew or Arabic on a Dossier Access System then translations of the documents should be provided. Where translations are required, machine translations are acceptable, although if a machine translation is of poor quality a further translation may be requested.

5) Copies of the patent documents cited by the OEE will not be needed where the documents are available, but copies of non-patent literature cited by the OEE should be included with the PPH/GPPH request. Translations of citations are not required.

The applicant does not need to provide further copies of documentation if they have already submitted the documents noted above to the ILPO as part of simultaneous or past procedures.

Procedure for expedited examination

The applicant files a letter requesting accelerated examination under the PPH/GPPH program to the ILPO, including a completed GPPH request form and claim correspondence table and other relevant supporting documents as noted above.

The PPH/GPPH administrator, who will be an ILPO patent examiner, will consider the request and if all requirements are met the administrator will notify the relevant heading examiner, who will conduct the accelerated examination. If one or more of the requirements are not met then the Administrator will contact the applicant and provide them with at least one opportunity to correct the PPH/GPPH request in cases where such a remedial correction is possible.

Costs

Official fees: none.

Professional fees: $350

General

Section 17(c) of the Israeli Patent Law provides for an alternative mode of examination of a patent application, known as ‘modified examination’. In most cases (but not always), a patent application that meets sec 17(c) requirements is deemed eligible for registration without having to go through substantive examination.

Requirements for modified examination

There are four requirements for requesting modified examination at the ILPO. These are:

1) a corresponding application forming the basis of modified examination request was granted by one of the following patent offices:

  • IP Australia (IP Australia)
  • Austrian Patent Office (APO)
  • Canadian Intellectual Property Office (CIPO)
  • Danish Patent and Trademark Office (DKPTO)
  • European Patent Office (EPO)
  • German Patent and Trade Mark Office (DPMA)
  • Japan Patent Office (JPO)
  • Norwegian Industrial Property Office (NIPO)
  • Russian Federal Service for Intellectual Property (ROSPATENT)
  • Swedish Patent and Registration Office (PRV)
  • United Kingdom Intellectual Property Office (UKIPO)
  • United States Patent and Trademark Office (USPTO)

 

2) both the ILPO application for which modified examination is requested and the corresponding application forming the basis of modified examination request have the same earliest date (whether this be a priority date or a filing date).

3) The claim(s) in the application for which modified examination is requested are identical to the claims in the corresponding application forming the basis of modified examination request.  Nevertheless, the application for which modified examination is requested may include fewer claims than those in the corresponding application forming the basis of modified examination request.

4) The description and drawings in the application for which modified examination is requested are identical to the description and drawings in the corresponding application forming the basis of modified examination request; or, in the alternative, the description and drawings are sufficient to enable a person skilled in the art to perform the invention subject matter of the application.

Note, however, that meeting the requirements of sec 17(c) do not suffice in all cases. An examiner may reject a request for modified examination if he believes that the claims granted in another jurisdiction do not overcome substantive issues of patentability or are otherwise not eligible for modified examination. Where a request for modified examination is rejected, the application proceeds to standard examination.

Note also that where a request for modified examination is granted, the requirements of sec 17(c) only apply during the examination stage – once acceptance has taken place the application/patent is subject to the usual requirements of the Patent Law, such as during opposition, revocation, voluntary amendment etc.

Modified examination may be requested at any time prior to allowance. However, it is recommended to file a request for modified examination before the examination commences, since if the request is filed after the ILPO has already concluded a standard examination, and issued a substantive refusal, the applicant will have to overcome these refusals even if modified examination is requested thereafter.  

 

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