For Associates

Patent Filing Basics

• Israel is a member of the PCT (since 1996)
• Patent Application filed in English
• Excess claims fees applied for every claim over 50
• Simple POA (scanned version, fax OK)
• No assignment from inventor is required
• Substantive Examination is performed
• High-level examination, ILPO is an International Searching & Preliminary Examination Authority under the PCT
• No Grace Period is recognized in Israel
• Application is now published 18 months from the 1st  priority date

Examination Process

• Instead of a Request for Examination filed by applicant, a Notice Before Examination is issued by the Patent Office 12-24 months after the filing date
• Applicant is required to provide known relevant references + a list of corresponding applications filed in other countries and a list of references cited against the corresponding applications (ongoing duty until Allowance)
• Applicant is invited to amend claims
• More than one Office Action may be issued

Acceleration Options

• Green applications
• Examination can be accelerated for green applications 
• Request acceleration for commercial and personal reasons
• Examination can be accelerated for commercial reasons (competition etc.) and personal reasons (medical conditions, age, etc.)
• PPH, Global PPH
• Israel has PPH agreements with the following patent authorities: Australia, Austria, Canada, China, Denmark, Estonia, European Patent Office, Finland, Germany, Hungary, Iceland, Japan, Korea, Nordic Patent Institute, Norway, Portugal, Russia, Singapore, Spain, Sweden, United Kingdom and United States.
• Section 17(c) of the Patent Law
  • Allowance of an Israeli patent application based on grant of a corresponding (sister) application in a qualifying country:
    Austria, Australia, Canada, Denmark, EPO, Germany, United Kingdom, Japan, Norway, Russian Federation, Sweden and the US
  • Sister application must be related to Israeli application (share same priority or one is a priority to the other)
  • Israeli application to be allowed with SAME claims as sister application
  • If several qualifying sister applications were granted, applicant can base his request on the most convenient one (best claims granted)
  • It’s possible to request allowance based on 2 sister application only if one claims a system/product and the other a method/process
  • Examiner has the discretion to reject allowance according to Section 17(c), but in practice grand majority of the requests are allowed unless there’s a very good reason to Examine application

Adding New Material

• The specification and drawings can be amended at any point before allowance
• In Chemical patents, new examples for new compounds and/or pharmaceutical activity can be added (contrary to Japan). These examples can be considered as substantive amendments
• Substantive amendments will receive the date of the amendment for patentability questions (not filing date).

Refusal of Application, Appeal Process

• If an application is refused, the decision can be appealed before the Commissioner of Patents
• The decision can be further appealed before the District Court

Divisional Applications

• Any application can be divided
• Divisional applications are accepted up to allowance of the application
• A divisional application can be further divided (same as in the US & Europe)

Grant / Opposition Process

• Pre-grant opposition
• Allowance is published
• 3rd parties have 3 months to file an Opposition
• Patent granted if no opposition was filed in the 3-months window or when opposition is overcome

Patent Term

• 20 years from the filing date (assuming annuities are duly paid)
• Annuities – are paid only after grant of the patent for the years 1-6, 7-10, 11-14, 15-18 and 19-20

Trademark application data

• Applicant’s information: complete name, street address and nationality of the same, state or country of incorporation.
• Description of the trademark or service mark: name of the mark to be registered; type of trademark (word or design/logo); claim to color if applicable; In case of design trademark, please provide us with a copy of the logo.
• International Class Information: In order to be able to select the Class Number according to Nice Agreement, please specify the goods or services which the registration will apply to. It is now possible to file either a single or multi-class trademark application; additional fees apply for multi-class applications.
• Local address for service – if the applicant is not domiciled in Israel.

Power of Attorney

• Our firm shall provide you with a Power of Attorney document for filing and prosecution of the Trademark Application, which will need to be duly executed by the Applicant (or by the Authorized Officer for a company).
• The original document is not required for filing (a copy is sufficient) and no notarization and legalization is necessary. The Power of Attorney may be filed subsequent to the filing of the application.

Priority Data and Documents (if applicable)

• Country, number and date of priority application.
• A Certified copy of the priority document issued by the corresponding trademark office. If the document is not in English, a notarized English translation will be necessary.
• It is possible to file the priority document for up to 3 months after the filing of the application.

Prosecution time frame

• In the normal course of events, examination may take between 10 months to a year and registration may take between a year to eighteen months from the date of filing.
• Once the trademark is accepted, it is published in the next available Trademarks Journal which issues at the end of each month for possible oppositions by third parties for a period of 3 months from the date of publication. If not opposition is filed, the application is registered; In any case, Examination must end within 2 years from filing.
  Once registered, the trademark is valid for 10 years and may be renewed immediately thereafter indefinitely for additional periods of 10 years.

Design application data

• Applicant’s information: complete name, street address and nationality of the same, state or country of incorporation.
• Pictures of the Design application product: Application should include pictures of the Design application product (photos, drawings or computer simulations) from several angles that describe all of the Design details. The pictures must be presented on A4 sized paper/s. Two sets of identical pictures must be prepared and near each picture will be mentioned the angle from which the picture is presented (Perspective View, Front View, Side View etc.). Nothing should be written on the picture pages except the view angles.
• Drawings describing a cut of the object or measurements thereof will not be accepted. In addition Close – Up pictures won’t be accepted. All pictures must be clear and not blurred.
• Previous publication: It will be checked if the design had been made public in Israel prior to the filing of the application. A publication available on the Internet is considered available in Israel. A publication outside Israel will not affect the novelty of the design in Israel.
• Product vs. set of products: Each application for a Design Registration must include one object solely, unless the application is for a set of objects. A “set” is a group of objects bearing a similar nature, that are sold together or that are meant to be used together and that carry the same design type. For example: cutlery, chess pieces etc. Please be advised, the application fee for a set of objects is different than a regular application fee.
• International Class Information: the class is assigned by the Examiner once the design application is allowed.
• Local address for service: if the applicant is not domiciled in Israel.
• Novelty Declaration: It is possible to write a brief note regarding the novelty of the design for which the applicant claims. In specific cases the examiner may ask the applicant to produce a Novelty Declaration as mentioned above. The novelty declaration should be about the design’s novelty and not about the functional novelty of the object. The examiner may raise objections regarding the formulation of the Novelty Declaration or regarding the need for one. The Novelty Declaration will appear on the design certificate, if given.

Power of Attorney

• Our firm shall provide you with a Power of Attorney document for filing and prosecution of the Design Application, which will need to be duly executed by the Applicant (or by the Authorized Officer for a company).
• The original document is not required for filing (a copy is sufficient) and no notarization and legalization is necessary. The Power of Attorney may be filed subsequent to the filing of the application.

Priority Data and Documents (if applicable)

• Country, number and date of priority application.
• A Certified copy of the priority document issued by the corresponding patent/design office. If the document is not in English, a notarized English translation will be necessary.
• It is possible to file the priority document for up to 3 months after the filing of the application.

Prosecution time frame

• In the normal course of events, examination may start 6 to 12 months after filing. According to the Designs Regulations the design application examination must be completed 12 months after examination has started. An extension of 3 additional months can be requested. If the application is not registered by that time-frame, the application will deemed to be abandoned.

Validity and renewal

• A registered Design is valid from the application filing date, which is to say from the date the application was received at the Patent Office.
• The registration of the Design will be published in the Patent and Designs Journal that comes out once a month. The notice will include the name of the Design, number of the application, classification, date of filing, name of the applicant and date of the Priority Document if relevant. The Patent Office doesn’t immediately advertise the shape of the Design and it stays confidential for two years from the day the application was filed.
• Once registered, the design is valid for 5 years from the filing date and may be renewed for additional periods of 5 years.

Disclaimer

• It is possible to add to the Design application a disclaimer that is meant to emphasize that the applicant withdraws his claim from certain design elements in the Design. In certain cases the applicant will be asked by the examiner to add a disclaimer as mentioned above. A disclaimer will appear on the Design certificate, if given.