A substantive post on the more notable aspects of last week’s amendments to the Israel patent statute is in progress, but at least one point bears separate discussion: the abolishment of the requirement for the publication of an abstract.
Section 26(b) of the statute says that upon conclusion of substantive examination and payment of the publication fee, the Registrar is to publish certain particulars concerning the application. Until now, subsection 26(b)(5) specifically said that one of these particulars was “a description of the essence of the invention, in the Registrar’s view” – in other words, an abstract – and section 27 said that this description “shall not serve the court or the Registrar as evidence when they come to construe the specification [which includes the claims – DJF] in any legal proceeding”.
In practice, until 2009 the Registrar simply published the first claim to fulfill his duty under 26(b)(5); as discussed in an earlier post, in 2009 the Registrar, acting ultra vires (as usual), decided to require applicants to submit such abstracts.
Both the pre- and post-2009 practices have now been mooted, as sections 26(b)(5) and 27 were removed from the statute as part of last week’s amendments. (Show of hands: how many of you think the ILPTO will continue to exceed its authority and demand the submission of an abstract despite the lack of statutory authority for such a requirement?)
An interesting question arises, however, as to the current effect of previously-published abstracts: does now-cancelled section 27 continue to apply to abstracts that were published under section 26(b)(5), or can such abstracts - to say nothing of abstracts submitted by applicants themselves in the past, even if never published - now be used in claim construction? I’m not going to speculate on the answer to that question, but I am going to advise my clients henceforth to not submit an abstract with patent applications filed in Israel.