August 1, 2010

Disclosure Requirements at the Israeli Patent Office

Dr. Ilan Cohn, Senior Partner
Dr. Ilan Cohn

Senior Partner

Reinhold Cohn & Partners

The requirements for disclosure of information to the Israeli Patent Office have been altered with effect as of 4 July 2010. Under the altered requirement applicants has to disclose also all information known that may be related to the invention. 

Section 18 of the Israeli Patents Law imposes certain disclosure requirements on applicants of patent applications. More specifically, Section 18 of the Law permits the Patent Office to request applicants to provide information on prior art references.

According to Section 18(1)1 , the Patent Office is entitled to require applicants to submit a list of references relied upon by Examining Authorities in other countries, including also references cited and/or submitted by applicants to Examining Authorities, for example, in an IDS submitted to the USPTO.

According to Section 18(2)2, the Examiner is entitled to request applicant to provide any prior art references known to applicant, which are directly applicable to the invention.

Prior to examination, the Patent Office issues a notification directing applicant’s attention to the need to submit information under Section 18 (“Section 18 Notification”). Hitherto, the Section 18 Notification directed attention only to Section 18(1) – meaning that information has to be provided only on references relied upon by foreign patent offices. The practice of the Patent Office has now been changed, with effect as of 4 July 2010. A Section 18 Notification now issued by the Patent Office will also refer specifically to Section 18(2) – meaning that applicant has to provide information on prior art references known to him that may be relevant in examining patentability, even if not relied upon by other patents offices when examining counterpart applications. This new requirement may have little practical implications.

 As is known, under the US disclosure requirement an IDS is submitted to the USPTO, which includes such references. Submission of information included in an IDS (for example, by way of providing a copy thereof to the Israeli Patent Office) would thus inherently fulfill the requirement under Section 18(2). IDSs were always included as part of the material submitted to the Israeli Patent Office in response to the Section 18 Notification as it falls under the category of information required under Section 18(1).

Some further points to note relating to the disclosure requirements of the IPO are:

  • The requirement is ongoing up to allowance of the application. Applicant is required to inform the IPO of any new references that are/were cited or surfaces in any other way, which may be of relevance in examining the issue of patentability of the claimed invention.
  • According to the Registrar’s directives (laid out in Circular Letter M.N.51) in response to a Section 18 notification, applicant is required to submit electronic copies of all citations under categories X and Y; as well as a list of corresponding patent applications in other countries.
  • The disclosure requirements apply to all references, whether cited by patent offices or cited during various proceedings, such as oppositions, patent nullifications, and other court proceedings.
  • Bear in mind that non-compliance with the requirements under Section 18 will be subject to sanctions, e.g. patent nullification, shortening of patent term, or grant of a compulsory license.

English translation of Section 18(1) reads:

18. The examiner shall use at least one of the following additional means of examination:(1) the list of documents used by patent authorities in any foreign state in the examination of a patent application on the same patent application, submitted in a foreign country by the applicant or by his predecessor in title to the invention;

English translation of Section 18(2) reads:

18. The examiner shall use at least one of the following additional means of examination:
….
(2) a list of documents published before the application date, known to the applicant and directly connected with the invention;

 

 

This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.

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