Yesterday (April 23), the Israel PTO notified members of its email distribution list of the publication of a memorandum of proposed new legislation (a tazkir hok) that would change principally the Patents Statute. The deadline for comments (via a link on that same page) is 23:59 on May 1 – fewer than nine days after distribution of the email, of which two days are non-workdays (Saturday and Independence Day (Yom Ha’atsma’ut)), which this year is being celebrated on May 1), and one is Memorial Day (Yom Hazikaron), a day on which many people work shortened hours or don’t work at all, which this year is being commemorated on April 30.
The memorandum was actually first posted on the (misnamed) “Justice” Ministry’s site at 16:11 on Thursday April 10, viz. at the close of business on the last day the Ministry and the ILPTO were open before the Passover holiday. Although those offices reopened on Sunday April 20, the email from the ILPTO was only sent on April 23. And very few if any regular users of the patent system in Israel regularly check the Ministry’s site for proposed legislation; to the extent people follow proposed legislation affecting patents, they tend to rely on the ILPTO’s emails. Clearly, someone doesn’t want public comment on these proposals. Oh, those pesky citizens!
It's not clear what the rush is. One of the main proposals – to create an Israeli provisional application – have been kicked around for several years, so a few more weeks’ wait won’t matter. One disappointing aspect of the memorandum is that the introductory part of the memorandum (translation below) is silent about a few significant proposed changes, which I list after the translation below. I do not relate here to the memorandum’s “explanations” that follow the proposed changes to wording the statute; I hope to do so in the coming days.
The memorandum follows what I assume is the Ministry’s standard format for such memoranda, with the introductory part constituting a sort of executive summary. I used Google to translate and made some changes thereafter.
Memorandum of Statute
A. Name of the proposed statute
Patents Statute Memorandum (Amendment No. 15) 5785- 2025
B. Purpose of the proposed statute, the need for it, its main provisions and its impact on the existing law
The memorandum includes proposals to change the procedure for examination of a patent [application – DJF] by the Patents Authority, and additional matters. These changes are necessary in view of technological changes, changes in corresponding procedures in foreign countries, and the need to re-examine the desired system of balances between the inventor and his competitors in the [should be “a” – DJF] variety of contexts.
Principal point 1: Examination of patents by demand
It is proposed to adopt a method according to which, before the examination of the application begins, the applicant will be required to request the examination by submitting a request and paying a fee ("Request for examination"), replacing the existing method according to which patent applications are examined in the order in which they are filed with the Authority in accordance with the classification of the scientific field of the subject matter of the application. According to the proposed arrangement, the applicant will have a period of four years during which he will be able to demand that his application be examined, and applications will be examined in the order in which the demands for examination are submitted. If the applicant does not request the examination within four years, the patent application will be refused and the patent will not be registered. The advantage is in making examination more efficient, so that only applications in which the applicants interested will be examined, in contrast to the current situation where sometimes after the examination begins, the applicants abandon the application.
Principal point 2: Provisional patent application
It is proposed to allow the filing of a provisional patent application, which, if the applicant does not convert it into a regular application within a year, will expire as if it had never existed after a year, i.e. before it has been fully published to the public and without the need for active notification of its abandonment, similar to the "Provisional Patent Application" track that exists in the USA. The advantage of this track is that it gives the applicant time to consider his steps with respect to his invention and the filing of the final application.
Principal point 3: Grace Period
As a general rule, an invention that is published before a patent application is filed will not be eligible for registration [in a patent – DJF] due to lack of novelty. There are limited exceptions to this rule, set out in Section 6 of the statute. It is proposed to stipulate that publication by the owner of the invention within a period of one year prior to filing the application will not negate the novelty of his application. This arrangement exists in Israel for designs, and also exists in the US and other countries.
Principal point 4: Possibility of early opening of the patent file for public inspection
Currently, patent application documents are opened for public inspection 18 months after the date of filing the application, and for an international application – within 45 days [of national phase entry – DJF]. It is proposed to allow the applicant to advance the opening of the patent documents for public inspection. Early publication will allow the application to serve as prior knowledge with respect to patent applications that will be filed after the early publication date, and in addition, early publication will advance the date from which the applicant will be entitled to receive reasonable royalties for infringement of the patent during the period that it was pending, provided that the patent is registered at the end of the examination process.
Principal point 5: Divisional applications
It is proposed to authorize the Minister of Justice to determine conditions and limitations on the division of an application. Currently, as long as the patent application is not accepted [viz. published after examination for purposes of opposition – DJF], the applicant is entitled to demand that it be divided into several applications. This arrangement allows the patent applicant to split A patent application that he filed so that he could advance the registration of the patent for the parts of the application that the patent examiner approved as patentable, and continue the discussion with the examiner regarding the remaining parts of the application. However, there arise allegations of abuse of the ability to divide an application, so that applications that are not fit for registration remain pending for a long period. The authorization is intended to enable the Minister of Justice to establish mechanisms to reduce the abuse of divisional applications.
Principal point 6: Right to continue exploiting an invention after reopening the application file
Currently, a person who began to exploit an invention before a patent application was filed on the invention, or after the patent protecting the invention expired, will be entitled to continue exploiting it even if a patent application was filed or if the patent was reinstated, respectively. It is proposed that this arrangement will also apply in the case of a patent application that was refused by the examiner and then the refusal of the application was cancelled and the patent was granted.
Principal point 7: Additional remedies for infringing products
It is proposed to explicitly enshrine in the Patent Statute the authority of the court adjudicating a charge of infringement to order the transfer of ownership of infringing products or their destruction, similar to the authority that exists in most intellectual property legislation and in accordance with Article 46 of the TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights).
Principal change 8: Change in the name of the Patent Authority and granting additional functions
It is proposed to change the name of the Patent Authority to "Intellectual Property Registration Authority" to express all of the authority's areas of activity, which also deals with designs, trademarks and appellations of origin. The functions of the Patent Authority include providing information to the public on patents and maintaining contact with institutions and bodies outside Israel in its areas of activity, and it is proposed to also add to these functions service to the public on the subject of intellectual property registration.
C. The impact of the proposed law on certain population groups
No effect.
D. The impact of the proposed memorandum of law on the budget and administrative standard of the initiating ministry, other ministries and other authorities.
No impact.
As will be discussed in a future post, a reading of the details of the proposed amendments shows that the above summary glosses over some critical details of the points mentioned. Additionally, there are several significant proposed changes that are not mentioned at all in the introductory section above. Among these:
- it will not be necessary to provide a copy of the priority document, unless asked to do so by the examiner;
- third parties would be allowed to pay the examination fee;
- in cases in which an application is “accepted” prior to 18 month publication, the Office as a matter of course will conduct a further examination before the end of the opposition period (if no opposition has been filed) and may rescind the ”acceptance” of the application;
- acceptance under section 17(c) would be allowed if both the Israel patent application and the corresponding foreign application are national phase application of the same PCT application;
- the filing of an opposition or other challenge to the foreign patent on which a 17(c) request is based will automatically result in the return of the application to the examination queue;
- once the application is filed, it will not be permissible to broaden claims in any way, even if there is support for such broadening in the application;
- the long-standing practice of being able to add new material to an application, provided that such material is post-dated to the date on which it is added to the application, will be abolished;
- any party will be able to oppose the grant of a patent, or seek its cancellation before the Office, on grounds that the applicant is not the owner of the invention; currently only a party alleging that it is the actual owner may make such an argument before the Office;
- an Israel patent application A having a filing date earlier than application B but a publication date after the filing date of B will constitute prior art for purposes of considering novelty;
- any party will be able to request reexamination of a patent or patent application on grounds of lack of novelty due to an earlier-filed Israel patent application;
- as is already the case for pre-grant oppositions, if a cancellation action is initiated against a patent by a third party that then withdraws from the proceeding, the Office may still cancel the patent;
- the standard for considering a late-presented priority claim and certain other matters will reduced to a “reasonable care” standard instead of an “unavoidable” standard.
Rather a lot to pack into a set of amendments with such a small window to respond.
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