Hitherto, Israel has charged a single fee for patent applications, irrespective of application length or the number of claims. Two weeks ago, the Commissioner sent out a letter informing the patent practitioner community that on December 1, 2009, the Knesset’s Constitution, Statute and Law Committee approved the imposition of a fee of 500 shekels (approximately $130 at present exchange rates) for each claim in excess of 50. As of December 22, 2009, official notice of this change had not been published in the official state publication journal (the equivalent of the Federal Register in the USA), but such publication is expected soon; the new regulation is expected to take effect 30 days from publication.
In the same vein, this week the ILPTO circulated an updated list of official fees that will take effect January 1, 2010. Most fees have been revised upward by a few percentage points. For example, the filing fee for a new patent application will rise about 2.5%, from 1162 shekels to 1191 shekels. The new list makes no mention of excess claims fees (as it shouldn’t, since such fees will not take effect January 1), nor does it even mention that fees for excess claims will soon be imposed.
Presumably, (a) the new regulation governing excess claims fees will not have retroactive effect for applications having 51 or more claims that were filed prior to the regulation’s coming into force, and (b) applications which as of the publication date of the new regulation have fewer than 51 claims, but which are amended to include more than 50 claims between the publication date and the coming into force of the regulation, will not be subject to excess claims fees, although the latter is an open question. Similarly, it is unclear if in the future, excess claims fees will apply to applications already on file with more than 50 claims, in cases in which some of the excess claims are cancelled and replaced with new claims. For those applications where many claims could be filed but for some reason haven’t been filed, it may be prudent to add such claims now, so as to avoid having to pay fees for them in the future.
As a practical matter, the combined filing and publication fees for a new application will remain about 1200 shekels. Consequently, in those cases where an applicant feels a necessity to file 53 or more claims, from an official fees standpoint it will be less costly to file two applications each containing up to 50 claims than to file a single application containing 53 or more claims. In thinking about how to approach such situations, there spring to mind a number of options for minimizing applicants’ costs while preserving their ability to maximize their claim coverage. I won’t detail those here. Suffice it to say that the decision regarding how to approach such cases should be made in consultation with competent Israel patent counsel.
