November 1, 2010

Israel: “Incorporated by Reference” in a Patent Application

Dr. Ilan Cohn, Senior Partner
Dr. Ilan Cohn

Senior Partner

Reinhold Cohn & Partners

The Registrar of Patents has now issued a new Circular Letter with guidelines relating to the issue of incorporation by reference. Generally, incorporation by reference will no longer be permitted and will either have to be replaced with relevant passages from reference so incorporated or deleted altogether.

On November 8, 2010, the Registrar issued a new Circular Letter1 setting new guidelines relating to the use of the phrase “incorporated by reference”. This phrase having particular significance under US patent law2, often appears in patent applications filed in Israel as well as in other countries. Up to now, there has been no uniform practice at the Israeli Patent Office (IPO) regarding the use of this phrase and lack of clear guidelines on this issue led to inconsistent objections raised by the examiners. Often, examiners raised objections against such incorporation under Section 12(a)3 of the Law and Rules 20(a)(1) and 20(a)(2)4, requiring a patent specification to include, among others, a description of the invention with sufficient details to permit a person skilled in the art to carry out the invention based thereon. Incorporation by reference was interpreted by some examiners as not fulfilling this requirement.

The new guidelines now clarify that incorporation by reference will no longer be permitted. Accordingly, the phrase “incorporated by reference” will have to be deleted altogether or replaced by a proper disclosure. These new guidelines are similar to the examination guidelines at the European Patent Office5.

The Circular Letter addresses three different scenarios:

(a) Incorporation by reference of a priority document;
(b) Incorporation by reference of a prior publication as part of the description of the invention or the manner in which it is carried out; and
(c) Incorporation by reference for the purpose of a description of the state of the art.

 

In the first case, under the new guidelines, the relevant passages from the priority document will have to be incorporated into the specification and the incorporation by reference will have to be deleted. In the second case, at the discretion of the examiner, applicant may be required to amend the specification by incorporating relevant passages from the referenced publication. This may be required where the examiner is of the opinion that a mere reference to prior publication is insufficient for an understanding of the manner in which the invention is carried out, among others, where the incorporation by reference is of a large number of prior publications. In the third case, while the prior publications can of course be mentioned, this will be without the term “incorporation by reference” which will have to be deleted.

Of importance are the guidelines that such amendments will not be regarded as an addition of new matter. Under the Israeli Patent Law, amendments of a substantive nature may affect the date of the application, while other amendments do not. The former is stipulated in Section 236; while the latter is stipulated in Section 227 of the Law. In the Circular Letter the Registrar clearly notes that amendment of the specification by incorporation of the relevant passages from previously incorporated by reference publications will not be regarded as amendment under Section 23 but rather as an amendment under Section 22; i.e. it will not be considered as addition of new matter.

Finally, the guidelines state that incorporation by reference of patent applications and other publications, which have not been published, will not be permitted.

M.N.85 dated 8 November 2010.
37 CFR. §1.57 “Incorporation by reference”.
Section 12(a) reads (translated from Hebrew):

12(a) The specification shall include a title by which the invention can be identified, its description with drawings that may be necessary, and also a description of the manner in which the invention can be performed, enabling a skilled person to perform it.

Regulation 20(a) reads (translated from Hebrew):

20(a) The specification shall include the following subjects, in the order in which they are here enumerated:

(1) an introduction, explaining the purpose of the invention, and a concise description of the state of prior art-as far as known to the applicant in view of the invention-in the technical field in which the invention was made;
(2)a description of the invention, with reference to drawings or examples as far as necessary in order to understand the invention;
(3) a claim defining the invention concisely and clearly.

Guidelines for Examination in the EPO, Part C, Chapter II section no. 4.19: “Reference documents” (as well as sections II 4.3 and 4.4).
6 Section 23 reads (translated from Hebrew):

23. If amendments of a substantive nature were made in the specification, then the Registrar may prescribe, for the purposes of sections 4, 5 and 9 –
(1) if it is possible to distinguish between those amendments and the existing specification – that the date of the amendments shall be the date on which they were submitted to the Office;
(2) if it is not possible to distinguish between the amendments and the existing specification – that the date of the entire application shall be the date on which the amendments were submitted to the Office.

 7 Section 22 reads (translated from Hebrew):

22. The applicant may, at any time before the application is accepted, amend the specification in his application, either in consequence of a notice under section 20 or at his own initiative.

 

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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