by Jeremy M. Ben-David, Managing Partner, JMB Davis Ben-David
In a few days from now, at the beginning of the Pesach or Passover holiday, Jewish people the world over will sit down for the annual festive meal, the “Seder”, and recall the events of 3,333 years ago, when the Children of Israel left slavery in the Egypt of the Pharoahs. They became “The People of Israel”, and gave a book of laws to humankind, forming the basis for many values that society holds dear to this very day. (A book that analyses this latter point in depth is World Perfect.)
A key element of the “Seder”, as with any educational and experiential process, is asking questions, specifically those that have become known as “The Four Questions”, comparing some of the customs and practices of the meal that is included in the Seder with ‘normal’ meals.
In the spirit of the Four Questions, I would like to highlight a few patent related matters that are unique (or almost unique) to practice in Israel; an understanding of which can lead to a greater understanding of how the system works and what to expect if you or your client decides to file in Israel.
Here are my four questions, after which my answers (in brief) will follow:
- In most jurisdictions, you have to request examination, amid specified time limits, whereas in Israel you don’t have to, but you may… how does that work?
- In most jurisdictions, there is no ongoing duty of disclosure, and where there is, i.e. in the US, it applies from the moment of application and to all prior art. In Israel it’s similar but uniquely different. How?
- Provisional patent applications were introduced in the United States in 1994. No other leading jurisdiction has them. But there is now a proposal to introduce an Israeli-style provisional patent application. Why is this?
- In most jurisdictions, there exists a process for post-grant opposition, although in India one can also file a pre-grant opposition. In Israel, the only type of opposition that exists is pre-grant. Why is this, is there a connection to the Indian pre-grant opposition and how does it work?
Here are my brief answers:
a. Applications are assigned to an examination group and are then examined in turn. On average, the Patent Office issues a Notice Prior to Examination within about 1-2 years after the application is filed, as a precursor to examination.
b. Accelerated examination is available, acceptable reasons including, age or health of applicant, alleged unauthorized exploitation by third party, public interest, specific circumstances justifying acceleration, including potential financial loss by applicant.
For a first filed application, examination may be accelerated so as to receive an early search report as the basis to file in other countries.
As a sign of the times, a COVID-19 related application may also be accelerated.
2. Ongoing Duty of Disclosure:
a. An ongoing duty of timely disclosure of prior art exists until allowance; it is recommended to continue to make significant prior art of record until grant.
In contrast to the more widely known practice in the US, this obligation only starts at the time of responding to the Notice Prior to Examination. A further difference from the practice in the US, is that it is a relatively narrow requirement, namely, that it relates solely to prior art uncovered during the course of the examination of parallel applications in other jurisdictions. However, as all relevant art would normally be filed in an IDS in the United States application, and as art listed in an IDS is deemed to have been considered by the Examiner, Israeli practice is to disclose to the Israel Patent Office all IDS listings.
b. Prior Art Uncovered after Allowance. There is no obligation or mechanism to disclose prior art uncovered after allowance. However, if significant prior art potentially affecting questions of novelty and/or inventive step is uncovered after allowance, we recommend reviewing it for relevance to the question of patentability of the allowed claims. If, as a result of such a review, you have serious questions as to the patentability of the claims as allowed, a post-issuance amendment may be considered with a view to narrowing the claims.
3. Provisional Applications:
They’re a bit like Marmite®. You either love them or you hate them. If you love them, you’re probably a serial inventor, who reckons that ‘getting a patent for 150 bucks(!) is a steal!”. If you hate them, you’re probably a Patent Attorney, and when yet another client extols the virtues of a provisional, you feel as if you’re again observing a production of The Emperor’s New Clothes – “It’s deja vu all over again” (Yogi Berra).
I remember when they introduced the US provisional application back in 1994. The legislator purported to have the interests of the American patentee at heart. This is well-described in the 1999 Yale Journal of Law & Technology, Vol. 1, Issue 1, in an article by James R. Barney entitled “An Overview of the Pros and Cons of Provisional Patent Applications”. In this article, Mr. Barney states “The purpose behind the creation of the provisional application was to eliminate a disparity in effective patent terms between domestic and foreign inventors filing for patents in the United States”. Nonetheless, as a professional, my feeling is that all the Provisional has achieved is the engendering of a universal but unrealistic expectation among inventors and startups that they will obtain patent protection without actually having to file a real patent application and actually spend any money (excluding small- or micro-entity filing fees).
Unfortunately, the above group of “inventors and startups” is not confined to the United States. It is an affliction which has become widespread in Israel too, to the extent that it is widely believed that more first filings by Israeli applicants are being made in the USPTO, in the form of provisionals, than in the Israel Patent Office.
And it is primarily for this reason that the Israel Patent Office is pushing to introduce this cut-price alternative, also in Israel.
I presume that there is a good reason that the UK abolished its own type of provisional application in 1977, and that there are not many, if any, other jurisdictions that have them. The Israel Patent Office has done some excellent things over the past years, and more good things are to follow (see “dessert” below), but in my humble opinion, this ain’t one of them.
When the Examiner is satisfied that the claims in an application are patentable and any objections concerning the specification or Figures that were raised have been responded to, a Notice of Allowance issues. The application will then be published for Opposition. A Notice of Opposition to the granting of a patent may be filed by any party, at any time during the three month period immediately following the publication. If no such Notice is filed, a patent will be granted at the end of the three month period.
So that’s it. Israel has a pre-grant opposition procedure. As in India, this is a relic that was left behind by the British, and no one ever thought to question whether it should be changed.
I’m not saying that pre-grant oppositions are necessarily better. There clearly needs to be a balance between the facility of obtain and enforce a patent, and the ability of the public to challenge the decision to grant a patent. The problem with the current system in Israel is that it is cheap to file a notice of opposition, and once filed, if it is seen through to the bitter end, up to five years may have elapsed. Without going into mind-numbing detail, the process is exceedingly slow, and makes it too easy for a competitor to put a spanner in the works of a patentee. And you can be sure that the competitor’s interests are entirely their own, not those of the public at large. Caveat emptor!
By this point, having received your fill of both questions and answers, you may be thinking of another key aspect of the Seder, namely, four cups of wine and a slap-up, festive meal.
At Seder, dessert is a big deal, and even has its own name “Afikoman”. But it’s definitely not what you might expect when you think of a classic dessert. I will however finish this piece with some dessert which, in terms the tools of our trade as patent professionals, really is a wonderful treat, and one of the things that may be listed as excellent, courtesy of the Israel Patent Office. I am referring to the brand new Israel patent database that was unveiled a couple of weeks ago, and resides at Patent Search (justice.gov.il). It really is a treat and… well, I won’t spoil it for you.
But do pay it a visit. You won’t be disappointed!