Fulfillment of a Legacy
The Israel Patent Authority 2025
Jeremy Ben-David, Founder, Managing Partner
It had to happen. It was just a matter of time. Yup. Here in Israel, after a month of on again, off again, we finally returned to work. Incredibly, itâs been almost two weeks without a holiday(!) Seriously, it was nice to return to routine. After the introspection and celebration, this year made especially joyful by the return of our hostages, being back in the office has a certain newness about it; as if having received a sudden and welcome burst of energy.
The relative calm following the holidays has given me time to think more about the professional arena. Not just the here and now, but also how we got here. Israel 2025 boasts a patent system that despite being small, handling not much more than about 7,000 or so patent applications annually, is among the leading national IP institutions around the World, as demonstrated by its being one of the 24 International Searching Authorities (ISA) and International Preliminary Examining Authorities (IPEA) under the Patent Cooperation Treaty (PCT).
But it wasnât always so. I well remember the state of the Patent Office in the late 1980âs, as being very slow and, even when an Office Action (examination report) was received, it would normally be a hand-filled one page form, indicating that âthe claimsâ were rejected as lacking novelty or inventive step in light of specified prior art references. There was no specific indication as to why the Examiner had reached that conclusion. This lack of clarity in understanding why the Examiner was rejecting the claims was a source of great frustration; unless you know what the problem is, how can you fix it?
The change happened under the guidance of the late Michael Ophir, of blessed memory, whose tenure as Patent Office Commissioner from 1991-1996 laid the groundwork for everything to change. I met him on a couple of occasions when I was a young patent attorney. One occasion was at a meeting in the Patent Office. He told me a story of when he was serving as deputy commissioner under Yoel Zur. The Patent Office had received a request from an applicant, which eventually found its way to the Commissioner. It was already late afternoon or evening, when Zur discussed the matter with Ophir. Ophirâs response was that there didnât seem to be anything to be done, and they couldnât grant the applicantâs request. In response, Zur told Ophir that their job is to find ways to grant patents, not to deny them. He handed Ophir a law book and told him to study it closely until he found a way to grant the request, if at all possible.
That attitude not only made a big impression on me, and the way that I have tried to help clients during the four decades that I have been in practice, but it was clearly evident in the efforts that Ophir made to modernize the Patent Office.
It was also behind his efforts to have Israel accede to the PCT, which happened in his last year as Commissioner, in 1996. He told me about it personally when I bumped into him in a restaurant in Jerusalem and from the way he was talking it was clearly a moment of triumph.
Since then, there have been five more commissioners, the current one being Adv. Mordechai Shorek who was appointed in 2021. What is apparent, whether by default or design, Yoel Zurâs and then Michael Ophirâs legacy of trying to find ways to help the client, and the more specific legacy of the latter in modernizing the Israel Patent Authority, is seen in every aspect of its operations. While both the designs and trademarks departments have become efficient operations, from my own perspective it is in the functioning of the Patent department that this really stands out.
As we know, advancing patent applications through examination is a complex process. This is even more applicable to the process in Israel, due to two provisions of the Israel Patent Law, which, while not unique to Israel, are not considered to be standard practice in Patent Offices around the World. The first of these is the requirement to submit prior art cited in parallel examinations, similar (although not identical) to the Duty of Disclosure in the US. The second is the availability of what has been nicknamed âmodified examinationâ, wherein amendment of the claims to correspond to those in a parallel patent granted by one of a select number of foreign patent offices, can be used to shortcut examination. And of course, like many other patent authorities around the world, there are provisions for accelerating examination.
These provisions sound like a recipe for a grossly inefficient bureaucracy. (I apologize if that sounds tautologous). However, through meticulous planning and implementation, the Authority has a sophisticated system which provides the applicant with the following:
- Clarity as to when a first substantive office action is due to issue.
- The ability to delay examination so as to facilitate use of the Modified Examination provision.
- The ability to accelerate examination, whether this is based on an immediate threat of infringement by a third party, or by virtue of the invention being considered to be environmentally friendly, or simply under the provisions of the PPH.
In short, through a combination of significant thought and consideration, coupled with intelligent use of technology, the Patent Authority has, 30 years after Michael Ophirâs tenure, succeeded in implementing his vision in an outstanding way.
In conclusion, my own take home message from this is that we always need to remember that our primary goal in professional practice is to serve our clients and to help them achieve their goals.
By the way, if you are interested in any aspect of the Israel IP system, please reach out to me at Jeremy.Ben-David@jmbdavis.com.
