Duty of Disclosure: A Comparison of Requirements in Israel and the US

by Jeremy Ben-David, Founder, Managing Partner, JMB Davis, Ben-David

The ongoing duty of disclosure for patent applications in the United States not only places a heavy burden on the applicant, but it is almost unique in the world of patent prosecution. Unless, of course, your US applications have sibling applications in Israel. Israel, too, has a similar requirement regarding the disclosure of prior art. The two systems are so similar, in fact, that almost everything that is required for disclosure to the USPTO can be taken ‘as is’ and filed in the ILPTO. 

There are some differences, however, and it is both the similarities and the differences that were the subject of JMB’s online seminar on February 7, 2024. Joined by dozens of practitioners from the UK through China and all the way to New Zealand, as well as by local Israeli businesspeople, Jeremy Ben-David and Dr. Mike Hammer discussed and clarified how to properly and efficiently manage these duties of disclosure, so as to save both time and money.

Needless to say, whereas most are familiar with US practice, the requirements in Israel are far less well known. Our seminar dealing with a comparison of these two practices and how to effectively manage them, may be viewed here: https://www.youtube.com/watch?v=UXB4kX9WwwQ.  

What do I need to know? There are three essential questions that must be considered with regard to the Duty of Disclosure, in both the US and in Israel, namely,

  1. When does it start?
  2. When does it finish?
  3. What must be submitted?

On the assumption that the answers to these questions regarding the US are well known, I will relate here primarily to the corresponding answers as they apply to Israel:

Timing of DoD Requirements In Israel, the Duty of Disclosure (“DoD”) commences when filing a response to the “Notice Prior to Examination”, and terminates as of the date of Publication of Allowance, i.e. following payment of the issue fee. Compare this with the US, whose DoD starts and finishes earlier.

What must be submitted? The most difficult part is knowing what to submit. Without going into detailed explanation, let’s assume that you or your client is familiar with IDS requirements in the US. I will then rephrase the question “what must be submitted?” to “how do Israeli DoD requirements differ from those in the US?”. The answer to this question should be easier to both understand and implement.

  1. As a first point of practice, an IDS can be submitted in the Israel Patent Office in almost “as is”. When I say “almost” that is because it can be attached to a cover later. But as a list of references that have been obtained from various sources, including references known to the applicant, Search Reports and Office Actions, submission of a copy of an IDS is acceptable.
  2. Additional references that are required in Israel but which are not required in the US are those references that are not material to patentability. Whereas in the US, the applicant and attorneys are allowed to make that call, in Israel the Law requires all references to be submitted, regardless of their material relevance.
  3. Regarding whether full copies of references or merely a title (enabling the reference to be obtained by the examiner, if necessary), in Israel, full copies of patent references are normally NOT required. However, full copies of non-patent i.e. literature references are required if they have been cited as material (i.e. X or Y).
  4. Finally, in view of the fact that the window for submission of references under the DoD in the US may close while the window in Israel is open, from that point and on (i.e. from the time that the window closes in the US), you must be vigilant to make sure that you continue to submit DoD materials in Israel, for as long as is required.

Finally, by way of convenience, we have prepared a comparison table showing requirements in both the US and in Israel, for your convenience. It may be downloaded here.

Please be in touch if you have any questions.

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