by Dodiva Grant-Cohen, Israel & US Attorney, Patent Attorney, JMB Davis Ben-David
You have now filed your patent application in Israel. “What comes next?” you may ask.
As detailed below, prior to commencement of examination there is a duty to disclose all known relevant publications and all references cited in parallel applications.
What is the Duty of Disclosure requirement?
According to Section 18 of the Israel Patent Law, an applicant must disclose a listing of all relevant publications known to them, as well as all references cited in corresponding applications, during the duration of examination and until allowance of the application. This also entails the provision of copies of all non-patent references cited against novelty and/or inventive step in corresponding applications. However, when requesting modified examination under Section 17(c) of the Law, non-patent documents that are cited against novelty and/or inventive step must be listed, however, they do not need to be submitted. Click here for an explanation of modified examination.
When does the Duty of Disclosure start?
In all cases, the Patent Office will issue a so-called Notice Prior to Examination prior to the onset of examination. It is in response to such Notice that an applicant is first required to submit the above listing and documents (herein “Disclosure Materials”).
How Early can Disclosure Materials be Submitted?
Unlike in the United States, in Israel it is not only not required to first submit Disclosure Materials before being requested to do so (by issuance of a Notice Prior to Examination); it is advised not to submit these materials before being requested. This is for the reason that there exists a possibility that early or pre-emptive submission could cause the Materials to be overlooked by the Patent office. If accelerated examination is requested, such as under the PPH, however, a Notice Prior to Examination will be issued immediately. Click here for an explanation of accelerated examination under the PPH.
Once a response to a Notice Prior to Examination has been filed, when should additional Disclosure Materials be submitted?
It is best to submit additional duty of disclosure material as soon as one becomes aware of it. Regular submission of additional disclosure material enables the Examiner to examine it as it is submitted and any examination conducted will be based on the most recent disclosure material. A delay in additional material submission may result in it not being examined if a Notice Prior to Allowance is issued in the meantime.
Are there any circumstances in which one can wait to submit duty of disclosure material?
If an office action has issued, but has not yet been responded to, we recommend submitting the additional material with the response. The reason for this is that there is no benefit to submitting this additional material right away since examination is essentially on hold until the response is filed. As such, an opportunity to have the references examined is not being missed.
What about the Submission of Disclosure Materials that were Discovered After Issuance of a Notice Prior to Allowance? Should they be Submitted?
All duty of Disclosure Materials must be submitted up to allowance. i.e. publication for Opposition. Nonetheless, at this stage these materials will not be reviewed by the Examiner.
Is there an Option to Reopen Examination?
Yes. If disclosure materials come to light after a Notice of Allowance has been issued, it is possible, though not required, to request reexamination. This topic will be discussed in a later article.
If you have any questions related to the above, please email me at Dodiva.Grant@JMBdavis.com.