Israel has three different procedures for expediting the examination of patent applications.
One of these procedures, section 17(c) of the statute, concerns substantive examination of the application. Under 17(c), the Commissioner from time to time publishes a list of recognized patent-granting jurisdictions. The grant of a corresponding patent in one of these recognized jurisdictions can then be used as basis for allowance of the Israel application (fulfilment of the requirements for unity of invention, novelty, inventive step, sufficiency of description, and basis for and clarity of the claims), if the Israel claims are amended to be substantially identical to the foreign claims and the Israel application shares priority with the foreign patent. This procedure is only useful once substantive examination of an application has begun; the fact that a corresponding foreign patent has been granted can’t be used to induce the ILPTO to actually examine the application.
The upshot of 17(c) practice is that it frees up examiners to spend their time examining other cases, without duplicating the efforts of examiners in other countries.
In this context, it’s worth mentioning that during his tenure from 2003 through 2010, the previous Commissioner expanded 17(c) practice in two ways. First, rather than making applicants wait for the ministerial act of the granting of the foreign patent, he deemed a notice of allowance sufficient to invoke 17(c). Second, he stated that a positive PCT examination report could be used to establish the novelty, inventive step and unity of invention of the claims of an Israel national phase application (or an Israel application which was later filed as the PCT that received the positive examination report). In this way, he further reduced the ILPTO’s workload.
The other two procedures are not directed to substantive examination but to the order of examination, and enable an applicant to have its application moved to the front of the examination queue. The first of these is the patent prosecution highway. Israel has bilateral PPH agreements with the USA, Denmark, Japan, Finland and Canada, and PPH-PCT agreements with all these countries except Denmark. (And I noted yesterday, in a display of multiple personality disorder it also has a PPH-PCT agreement with itself. Really, I can’t make this stuff up.) Per the PPH, an applicant can ask to have his application examined out of turn based on a positive PCT WOISA or IPRP from a country with which Israel has a PCT-PPH agreement.
The second procedure for getting one’s application moved to the front of the line is similar to the old “petition to make special” practice in the USA: you ask the ILPTO to move your application to the front of the line. Historically this was set out in Rule 35, which stated that an applicant could ask that his patent application be examined immediately on the basis of “reasonable grounds”; these were typically the advanced age of the inventor, imminent launch of a product to be protected by the patent, or concern about possible infringement.
In July 2012 a new statutory section, 19A, was introduced, in which subsection (a) codified, clarified and replaced the prior Rule 35 practice. Section 19A(a) provides six different reasons one can give for advancing the examination of one’s patent application, but it is the second one listed that is of interest here: “A notice of the Commissioner regarding the possibility of advancing the examination on the basis of examination of a corresponding application under the conditions and in the countries indicated by the Commissioner”.
To date, the Commissioner hasn’t published a list of countries under 19A(a)(2). However, in a notice published at the beginning of October, the Commissioner said that a PCT-PPH request would be viewed as a request under 19A(a)(2) to begin the examination of a national phase application in Israel. It’s not clear why the need was felt to explicitly tie PCT-PPH to the new statutory provision. The Commissioner could have let things stand as they were.
But at least the October announcement does no harm to the PCT-PPH program. Where the October announcement took a bizarre turn was when it concluded with the statement that the Commissioner was rescinding the policy of allowing partial substantive examination on the basis of a positive PCT work product, which was published in circular MN 71 of the previous Commissioner. That’s a non-sequitur: PCT-PPH and 19A(a) concern the order of examination, not substantive examination – a fact the Commissioner himself pointed out in the October announcement! Why rescind the existing policy regarding partial substantive examination, and force examiners to do examination work concerning industrial applicability, novelty, inventive step and unity of invention, when someone in another respected patent office has already done so? Unfortunately, no reason was given for this change in policy, which seems to be a case of shooting oneself in the foot.
If the Commissioner was already going to make an announcement, he could have taken the opportunity to publish a comprehensive list of countries that can be used to invoke the 19A(a) procedure, and on that list he could have included the ISAs of the countries with which Israel has PCT-PPH agreements. Or even more easily: he could have just said that any country already recognized for purposes of 17(c) substantive examination (including its PCT ISA or IPEA, if it has one) will henceforth also be recognized for purposes of 19A(a). Which would allow applicants with patents granted in certain other countries to quickly gain allowance of their applications here, and get more pending applications out of the examination queue more quickly.
I’m not sure if the rescinding of the is more reminiscent of the Monty Python sketch in which Graham Chapman wrestles himself and wins in a knock-out, or of Cleavon Little kidnapping himself in Blazing Saddles. It’s certainly a step in the wrong direction.
 The other five grounds for advancing the case out of turn are (1) the advanced aged or poor health of the inventor; (3) knowledge or a well-founded suspicion of infringement of a claim of the application; (4) unreasonable delay in the commencement of examination of the application (which may be determined inter alia by comparison to the time from filing to first office action for applications in the same class); (5) the public interest; and (6) special reasons justifying such examination out of turn.