FAQ - Patents
The Israeli Patents Law 5727–1967 states that an invention is deemed new if it was not published, in Israel or abroad, before the application date. Such publication may be by written, visual, audible or any other description, or by exploitation or exhibition. A prior publication is considered as such if it is in a manner that enables a person skilled in the art to make it based on the publication description.
Accordingly, not every hint relating to the invention is considered as prior publication. However, it is highly recommended to consider carefully before exposing the invention in order to avoid such disclosure from being considered as publication.
The numbers appearing as part of the titles of Israeli Legislation (such as 5727 in the Patents Law, 5727-1967), reflect the Jewish calendar year in which the law was enacted. The Gregorian calendar is also noted in the title of the law.
In Israel, a patent attorney is not necessarily a lawyer.
Generally, a patent attorney is a person who graduated from an institution of higher education in one of the following fields: engineering, chemistry, physics, biology, pharmaceutical science, or computer science. However, a patent attorney’s education in the field of law is limited mainly to the Patents Law and other Intellectual Property related laws, which he studies practically during his qualifying service period in work and for which he is examined before being granted a license. For further details on eligibility for registration in the Register of Patent Attorneys, please see previous question in this site.
A patent attorney is permitted to work in Israel for pay in respect of patents, designs and trademark applications and prepare any document which is to be filed to the Registrar, to the Patent Office, or to an authority for the protection of industrial property in another country, and to represent clients and handle proceedings before the Registrar or the Patent Office. In addition, a patent attorney may have, subject to permission of the Court, the right to argue before the Court on behalf of a party in proceedings under the Patents Law 5727-1967, in all matters relating to an invention or a patent which is not a point of law, and provided that the advocate of the same party is present at that time.
An advocate, on the other hand, is a member of the Israel bar association, and as such has an exclusive right to deal with legal proceedings, give opinions regarding matters of law and represent before a court of law and before official authorities, such as the Patent, Trademarks, and Design office. Therefore, an advocate may perform all the same services as a patent attorney. In addition, an advocate may handle any legal proceeding, including litigation relating to Intellectual Property and Intellectual Property related agreements. Nonetheless, in legal proceedings relating to patents, an advocate would normally cooperate with a patent attorney who is knowledgeable in the technological field of the invention and its details.
RCG offers its clients the best of both worlds. The group includes both patent attorneys and advocates who work in tandem.
A patent attorney in Israel is a person registered in the Register of Patent Attorneys who holds a patent attorney’s license.
In order to receive an Israeli patent attorney’s license, a person needs to be an Israeli resident, be registered as an engineer in the Register of Engineers and Architects under the Engineers and Architects Law 5718-1958, or have graduated from an institution of higher education in one of the following professions: engineering, chemistry, physics, biology, pharmaceutical science, or computer science. In addition, he needs to have performed qualifying service in Israel during not less than two years in the office of an experienced patent attorney (or in the patent department of an industrial enterprise), and he is required to pass the Bar exams (or be exempted therefrom) in order to receive the license. Thereafter, the patent attorney needs to pay an annual fee in order to maintain the validity of his license.
In Israel, a patent is an asset which can be assigned both by agreement and by act of law (for example as part of an inheritance).
Assignment of patent rights (or in an invention) has to be done in writing, and will have no effect on any third party, unless it is registered in the Patents Register accordingly, as prescribed by law.
A patentee or an owner of a patent application may also grant a license to exercise the invention, and such a license will have no effect on any third party unless registered in the Patents Registrar, as prescribed by Israeli law.
Yes, a patent may be placed under a charge. A patentee may use the patent or any revenue therefrom or both as a guarantee and the charge must be drafted in a written document.
According to Section 19 of the Patents Law, 5727-1967, a charge on a patent shall have no effect with regard to any other creditor or the patent holder or to a liquidator or trustee in bankruptcy of the patent holder, unless it was registered in the Register within twenty-one days after the day on which it is created, and it is subject to any other right in the patent granted before the charge was created and duly registered under this law. However, if the patent is part of assets charged with a floating charge by a corporation, the floating charge need not be registered according to said section.
When the term of filing has lapsed under special circumstances, the term may be extended, subject to the discretion of the Registrar (or Deputy Registrar). To this end, a petition for extension of the term for filing must be filed expeditiously along with an affidavit detailing the special circumstances responsible for the late filing.
There have been cases in our practice when such post-deadline applications have been allowed.
An ‘international patent’, as such, does not exist. To obtain international patent protection, an Applicant has to file a patent application in each country, where he/she would like a patent to be granted on an invention.
However, there is a procedure under the Patent Cooperation Treaty (PCT) that allows the filing of one international patent application, designating a plurality of countries. A final decision regarding those countries in which an Applicant indeed would like patents to be granted, can be postponed to a later stage.
No. A patent application must be filed in each country where an Applicant seeks protection. If an Applicant does so within one year from the filing date of your first patent application, he/she will be entitled to a ‘priority right’, whereby the effective filing date of the Applicant’s first application will be considered to be the filing date of all other applications, both for the purpose of establishing patentability of the invention and possible conflicts with third parties.
Yes, this is possible by requesting examination under Section 17(c) of the Patents Law, 5727-1967 (AKA Modified Examination) of an Israeli application.
There are no deadlines for requesting Modified Examination, which may be applied for at any time during the prosecution of an application. In addition, even if Modified Examination has been requested, the applicant may revert back to the regular (non-modified) examination procedure at any time up until acceptance of the application.
Is there a duty to disclose to the Patent Office a document in one country, documents that were cited against the same invention in other countries?
This does not apply to all countries. In some countries (including Israel) there is an ongoing obligation to update the Patent Office regarding publications that are related to the patentability of the invention.
In Israel, there is an ongoing obligation to update the Patent Office regarding any document that was cited against an application which corresponds to the one which is being examined in Israel. Nonetheless, there is no need to file copies of the publications unless they are specifically requested by the Examiner, or have been cited in the other country as having specific relevance (designated under category X or Y) to the claimed invention.
Is there any way to protect an invention that does not require substantive examination, or allows examination to be postponed to a later stage?
In certain countries there are ‘utility model’ patents, which can normally be obtained without examination and their registration is therefore much quicker than patents for inventions. Utility model protection exists in many European, South American and Far Eastern countries, but unfortunately is not available in Israel or the US.
However, a patent application may be examined in a Modified Examination procedure (examination under Section 17(c) of the Patents Law, 5727-1967), wherein the Israeli patent may be granted, based on the grant of a corresponding patent, having the same claims.
An Applicant has the option of obtaining a patent in Israel, which, if and when granted, should allow an Applicant to prevent others from exploiting his/her invention (with several exceptions as detailed in the Patents Law, 5727-1967).
Until an Applicant is granted a patent, he/she is not able to sue potential infringers for patent infringement. This becomes possible only after grant of a patent, and only then it may be possible to collect damages for any infringing activities which occurred after publication of the acceptance of an Applicant’s patent application.
Note that while a patent has not yet been registered, it may be advisable to mark a product as “patent pending“, which may have a warning effect on any competitors.
According to the Law in Israel, a patent application may filed in any formal language (Hebrew or Arabic) as well as in the English language. As a matter of practice, the vast majority of applications are filed in English. This saves the cost of translating the application from Hebrew to English or vice versa. In many other countries, it is mandatory to translate a patent application to the local language.
This depends on factors such as whether a prior art search needs be performed to obtain a preliminary determination of whether the invention is novel, and what scope of protection it may have, the complexity of the invention (for example, the amount of close prior art from which it needs to be patently distinguishable, the number of embodiments), and how complete a disclosure, and how much useful assistance, are provided by the inventor.
It generally takes about 4-6 weeks to complete a first draft for client review, and its finalization from that point depends mainly on the inventor. Naturally, at Reinhold Cohn, we always do our utmost to accommodate clients’ needs for urgency in such matters.
No, you are not.
However, sometimes the process of designing and constructing a prototype enables an Applicant to provide details of the invention in the patent application, and to change the concept of at least some aspects of the product. This may be extremely advantageous in ensuring that the actual product is duly described in the application and eventually well protected.
A prior art search may assist an Applicant decide what aspects of the invention are novel. If the search reveals that the invention is not novel or its scope is narrow, an Applicant may decide not to proceed, saving time and costs.
In addition, knowledge of prior art can help an Applicant’s patent attorney draft the description and claims with more expertise , by helping him/her emphasize the important features which distinguish the invention from the prior art.
Note: Many inventors believe that their invention is new because they have not seen it anywhere.
This is, however, not always correct, because somebody may have thought of the invention before, attempted to obtain a patent for it, but not managed to introduce it into the relevant market for whatever reason. From this point of view, a prior art patent search may be very useful.
A good patent search takes time. If there is not much time remaining to draft and file an application (e.g. due to an upcoming marketing trip where exposure of the invention is necessary), a quick search or no search may be the only options. However, often it would be worthwhile to complete the search after having filed the application.
There is an organization in Israel called “Tnufa” which provides initial funding, but under terms that make it difficult to transfer any attained knowledge out of the country. For details and further information, please visit the Tnufa website.
Generally, registration of a patent includes at least the following steps and their related costs:
Searches: A prior art search is performed (in order to check whether the invention has been published by other parties, and how it may be defined in view of previous publications). At this stage (which is not mandatory, but is highly recommended, and is best done with the assistance of an Information Scientist), costs may include the services of an Information Scientist, as well as the cost involved in utilizing data banks.
Drafting an Application: Costs at this stage include patent attorney fees for drafting the application, and are dependent on the complexity of the invention.
In Addition, Applicants are required to meet local standards for filing of drawings and may need the assistance of graphical experts.
Filing an application: In each country where protection is sought (either simultaneously or at different stages), at this stage, an Applicant is required, by patent attorneys in their respective countries, to settle any debts for services related to filing the application, as well as official fees in each country. In many countries there is also a need to translate the application into the local language.
Examination: At this stage, examination reports (also referred to as “Office Actions” and/or “Official Notifications”) are received from the relevant authorities in each country, to which a response has to be filed within a defined period. The cost of this phase varies between different applications and the number of prosecution rounds involved, as Examiners may (rarely) accept an application without any special demands, on the one hand, or may raise many complex arguments and cite many publications, on the other.
Additional Official Fees: In addition to the above, official fees need to be paid in each country (such as publication and examination fees, annuities, etc.). In few countries, an annual fee has to be paid, from the filing date and until the end of the patent term (twenty years, unless the application or the patent is abandoned before such time), while in other countries, such fees are payable only upon grant of a patent.
Additional Expenses: In addition to the above, there are other expenses that should be considered, depending on the country where a patent is requested, and the specific circumstances, such as choosing to file an international application (PCT), opposition proceedings, divisional and continuation applications, requests for continued examination, etc.
In addition, in order to benefit from patent protection, an application must be filed in each and every country wherein patent protection is sought, and such costs vary between countries.
The patent examination procedure depends on the specific technological area of the invention, and according to the country where the application is filed. Generally, such a process takes several years.
In some cases, it is possible to request expedited examination. In Israel, for example, a petition may be filed for accelerated examination, based for example on the Applicant’s knowledge that some party intends to use the invention without permission. In addition, the Registrar has recently introduced a fast track for examining “green” technology patent applications.
In order to apply for a patent in Israel, one must prepare a patent application (drafted in accordance with the requirements of the Law) and file it with the Patents, Designs and Trademarks Registrar, along with official fees. To this end, the procedure is as follows:
The inventor (or the owner of the invention) may draft and file an application on his own behalf. In such cases, it is recommended to review beforehand the “Notes for Applicant from Overseas for Patents in Israel“, as published by the Patents Registrar. Such independent action may initially save certain costs, but includes the risk which results from an Applicant’s lack of knowledge and professional experience in drafting patents, and in local law.
Alternatively, one may employ a patent attorney, who would be able to contribute his experience and expertise, both in drafting the application and in formulating decisions regarding the most appropriate time to file an application, and what should (or should not) be included therein.