Patents Comparative Guide

Author:Mr David Gilat
Profession:Gilat Bareket & Co., Reinhold Cohn Group
 
FREE EXCERPT

1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

The Patents Law, 5727-1967 is the main source of patent law. The main secondary legislation includes:

the Patent Regulations (Office Practice, Rules of Procedure, Documents and Fees), 5728-1968; the Patent Regulations (Extension of Protection ‒ Procedures for Order Application, for Opposition to an order and for Application for Revocation), 5758-1998; and the Patent Regulations (Application of the Patent Cooperation Treaty), 5756-1996.

1.2 Who can register a patent?

Section 2 of the Patents Law stipulates that an application to register a patent shall be filed by the owner of the invention. According to Section 1, the owner of an invention is the inventor or persons that derive title under the inventor, being entitled to the invention by operation of law, by transfer or by agreement. According to Section 11(b) of the Patents Law, an applicant that is not the inventor must specify how it came to own the invention.

2 Rights

2.1 What rights are obtained when a patent is registered?

According to Section 49 of the Patents Law, a successfully registered patent entitles the patent holder to enjoin third parties from exploiting the invention for which the patent is granted without consent or unlawfully. 'Exploitation' is use either in the manner prescribed in the claims or in any manner which involves the essence of the invention in view of its claims. Section 49(b) clarifies that: "The grant of a patent does not constitute permission to exploit any invention unlawfully or in a manner that constitutes infringement of any existing rights under any law."

2.2 How can a patent owner enforce its rights?

Patent holders and exclusive licensees can enforce their rights by filing suit in court. Under Section 179 of the Patents Law, an action for infringement may be brought only after the patent has been granted.

2.3 For how long are patents enforceable?

According to Section 52 of the Patents Law, a patent remains valid for 20 years from the date of filing of the patent application, provided that renewal fees are paid. A patent may still be enforced by way of a claim for damages after the expiry of this term, subject to Israel's seven-year statute of limitations, if the infringement occurred during the life of the patent. The possibility of post-term injunction has been considered by the courts, although it is unclear to what extent this option exists.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

The Israel Patent Office.

3.2 What is the cost of registration?

The fees for patent registration are currently ILS2,010 (approximately $570). The costs of registering a patent include the patent agent's fee and other Patent Office fees during the process. Attorneys' fees usually range from $5,000 to $10,000.

3.3 What are the grounds to reject a patent application?

Failure to comply with the patentability requirements set forth in Section 3 of the Patents Law (novelty, utility, industrial application and inventive step); Failure to comply with the requirements of enablement, sufficiency, description (Article 12) and support of claims (Article 13); Failure to provide a full list of references and publications (Section 18). The courts have held that such failure amounts to lack of good faith (eg, see CC 14/92 (Nazareth Distr) Plasson Maagan Michael Industries Ltd v Freddi Priant et al. [1993]); Lack of ownership of the invention; and Failure to comply with the formal requirements set forth in Chapter 3(a) of the Patents Law (payment of relevant fees, inclusion of proper specification and claims etc).

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

According to Section 19A of the Patents Law, an applicant may request accelerated examination of its application by submitting to the registrar a request detailing reasonable justification for this request, accompanied by an affidavit supporting the facts specified in the request. Section 19A also provides examples of reasonable justifications, including:

the applicant's advanced age or medical condition; the existence of a programme which provides for expedited examination due to a corresponding application (eg, a Patent Prosecution Highway programme, according to a bilateral or multilateral agreement); unauthorised exploitation of the invention by another person; improbable delay in commencement of the examination; and public interest. An accelerated examination may also be requested by a third party, based on justifications including:

an established concern that regular examination of the application may cause a delay in the development of the product or process claimed in the patent application; improbable delay in commencement of the examination; and public interest.

3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?

Yes. According to Section 7(1) of the Patents Law, method claims for human therapeutic treatments are not permissible. According to Section 7(2) of the Patents Law, claims for new varieties of plants or animals are also not permissible, except microbiological organisms not derived from nature. So-called 'use claims' are further not permissible, as they are not perceived as either process or product claims. So-called 'Swiss-type' format claims are further not allowed. Case law has created additional exclusions, such as methods of doing business.

3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?

Yes, in the form of patent extension orders, but only in respect of patents relating to pharmaceutical preparations and medical devices. Extension orders may be granted for up to five years as compensation for regulatory delays that prevent the patent holder from exploiting the patent. The conditions for their grant are listed in Section 64D of the Patents Law, as follows:

The substance, process for production or use thereof, medical preparation incorporating the substance or process for production thereof, or medical equipment claimed in the basic patent and the basic patent remain in effect; The pharmaceutical preparation contains a substance registered in Israel's Pharmaceutical Registry; Said registration is the first registration containing the substance enabling the substance to be used in Israel for medical purposes; No other extension order has previously been issued for the patent or the substance; and If marketing approvals have...

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