A Few Words on Modified Examination in Israel Under Section 17(c) of the Statute

We’ve blogged before about modified examination in Israel under section 17(c) of the statute. Per §17(c), if a corresponding patent is granted in certain other jurisdictions, one can gain a quick allowance in Israel by amending the claims so that they’re identical to the ones granted elsewhere, and requesting allowance under §17(c).  This provision was added to the statute in 1995, following several years as policy adopted by the ILPTO to reduce its backlog. 

Usually, implementation of §17(c) is straightforward: the Israel application and the foreign patent share all priority claims in common.  But from time to time, the question arises, what constitutes a corresponding patent (or in the words of the statute, a parallel patent/application)?  Here are the relevant parts of the statute, translated into English:

17. * * * (c) An application meeting the following conditions shall be deemed to comply with sections 4, 5, 8, 12 and 13 of the statute [novelty, inventiveness, unity of invention, sufficiency of disclosure, clear and supported claims – DJF] –

(1) the applicant filed a patent application for the same invention (herein – “parallel application”) and was granted the patent, in a country whose name the Commissioner has officially published (herein – “parallel patent”), and one of the following conditions is met:

(a) a legally valid priority claim was made in Israel on the basis of the parallel application, per section 10 of the statute;

(b) a legally valid priority claim was made for the parallel application from the Israel patent application;

(c) a legally valid priority claim for the Israel application was made from an application filed in a WTO country, and from that WTO-country application a legally proper priority claim was made for the parallel application; * * *

§17(c)(1)(a) and §17(c)(1)(b) are easy enough to understand: the IL application claims priority directly from the parallel application, or vice versa. Probably the most common situation, however, is that of §17(c)(1)(c), where the IL application and the parallel patent share a common priority claim. For example, the Applicant files a US provisional, then files a PCT claiming priority from the provisional, then enters the national phase in Israel and the USA (or Europe).  The US (or EPO) patent is granted.  Since both the IL and US (or EPO) cases claim priority from a common predecessor application (the provisional) filed in a WTO country (the USA), the condition of §17(c)(1)(c) is met.  So if the claims in Israel are amended to be identical to those of the US (or EPO) patent, allowance under §17(c) can be requested. 

Now let’s complicate things a bit.  Suppose that there are two US provisionals, and the PCT claims priority from both provisionals, as do the national phase applications in the EPO and in Israel.  Does this make a difference?  As a practical matter, no: the ILPTO will normally grant the §17(c) request on the basis of the granted EP.  And this seems eminently reasonable: since the two cases both derived from the same PCT, and share the same priority claims, they should be regarded as corresponding (or “parallel”) applications. 

Nevertheless, it’s worth noting that nothing in §17(c)(1)(c) says that all the priority claims between the parallel application and the Israel application must be held in common. It merely says that there needs to be a common priority claim.  Let’s suppose, therefore that in the case of the two provisionals serving as priority applications, the parallel patent is a US patent that was filed as a national phase of the PCT. But let’s also suppose that, for some reason, in the US the applicant decided to forego the priority/benefit claim to the earlier provisional.  Should that change the calculus for §17(c) in Israel?  I would think not, since it means the US application was actually exposed to a larger group of prior publications than if the claim to the earlier provisional had been maintained, and, strictly speaking, the condition of §17(c)(1)(c) has been fulfilled.  Would it matter if it was the second provisional the benefit of which was waived in the US national phase case? Again, presumably not, since here too the US application would have potentially subject to a larger group of prior publications than if the claim to the later provisional had been maintained, and, strictly speaking, the condition of §17(c)(1)(c) has been fulfilled – there’s a common priority claim between the US and Israel cases. 

But now let’s suppose that it’s the Israel application that forswears one of the priority claims. Now what? Logic would suggest that, in the absence of one of the common priority claims, it’s now the Israel application that’s potentially exposed to a larger group of prior publications, and therefore the grant of a US (or EP) patent that includes two priority claims cannot presumptively mean that the IL claims are also allowable.  But that’s not what the statute actually says: all that’s required, per the statute, is one common, valid priority claim.

Another question arises with respect to the situation where both §17(c)(1)(a) and §17(c)(1)(c) are applicable.  Suppose that a US provisional is filed, then six months later a US non-provisional is filed claiming the benefit of the provisional, and within a year of the provisional filing an IL application is filed claiming priority from both.  The US case is granted.  Whither the IL case under §17(c)?  The two applications share a common priority per §17(c)(1)(c) (viz., the provisional), and the IL case claims priority directly from the US case that’s now been granted, in accordance with 17(c)(1)(a). 

The ILPTO’s view, as set forth in its examination guidelines, is that it’s not necessary for the Israel application and the foreign patent to share ALL priority claims, but the claimed invention must be supported by the disclosure of the common priority document.   So in the situation where both §17(c)(1)(a) and §17(c)(1)(c) are applicable , the ILPTO will probably grant the §17(c) request.  Although I suppose that if one wishes to split hairs, it could be argued that, by the letter of the statute, this wouldn’t be an acceptable application of §17(c)…but I’m not going to explain here why that might be so. 

 

One can imagine even more complicated fact patterns in which questions about the applicability of §17(c) may arise. Suppose, for example, that Applicant files provisional 1, then a PCT claiming priority from that provisional, then a US national phase application from the PCT, then a second provisional, then both a US CIP that claims the benefit of everything that went before it, and an Israel application that claims priority from prov 2 and the CIP.  The CIP is granted, and the claims in Israel are amended to correspond to those of the granted CIP. The chart below shows the relationships.  The question is, Can §17(c) be invoked here?

USA	P1	→	PCT	→	US NP	→	→	CIP
						P2	→	CIP
						↓		↓
IL						priority claimed		priority claimed

Seems to me that the answer is a definite “Maybe” - it depends on the particular facts.  But the good news is that, per the ILPTO’s examination guidelines, the situation does not per se preclude §17(c) treatment.