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

In Israel, during the normal course of prosecution, examination is performed in turn, but only after a “Notice Prior to Examination” and has received a satisfactory response. The following addresses, in broad strokes, the information that we need to submit to the Israel Patent Office in response to the Notice:

1. Duty of Disclosure

It is at this juncture, prior to examination, that the ongoing duty of disclosure begins. The detailed nuts and bolts of this are laid out in my article “IDS Plus What?”, which compares the requirements in Israel with those in the US. Essentially, if you send us a copy of all IDS’s that you submit, PLUS listings of non-material references (if these were not submitted in an IDS), and any references that may have become known to you after  your last IDS – those two items will cover what is needed.

2. List of Foreign Applications 

A list of all patent applications in all other jurisdictions for the same invention. 

3. Earliest Publication

(i) Date of the earliest publication of any application or patent for the same invention.

(ii) If the application claims priority from an application which is itself a divisional, continuation or continuation-in-part application, the date of the earliest publication of any application in the chain.

4. Amendments

Voluntary Amendments to the claims may be made prior to commencement of the examination.  This will not limit further amendments during prosecution.  

Recommended points for claims review:

A. Multiple Inventions: On commencement of examination, if the Examiner adjudges the claims as reciting multiple inventions, contrary to Section 8 of the Law; only the first claimed invention will be examined. We strongly suggest that you take this into account when reviewing the claims for possible pre-examination amendments, at this time, and check that if only one independent claim is examined, that it is the preferred claim.

B. Excess Claims Fees Payable Prior to Examination: An official excess claim fee of equal to approximately US$ 155 will be payable for each claim in excess of 50 that remain after response to the present Notice. Failure to pay the required fee will postpone examination. This should be borne in mind when considering amendments to the application. 

Next time out, we’ll take a look at ways to optimize examination.

In the meantime, email me if you have any specific questions.

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