š11 Kiryat Hamada Street, Jerusalem, Israel
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Almost Halfway
Iāve been so preoccupied with getting used to the new year, that all of a sudden 2024 is almost halfway done! Itās a little bit like my journey to work ā if Iām having a good conversation or listening to an enthralling podcast, I hardly even notice the traffic jams. But here we are. INTA has passed, so has the Israeli conference for the biotech innovation industry BIOMED, and summer vacations are around the corner. However, as we know too well, due dates, decisions and instructions never rest and neither do we (at least, not all at the same time).
Apropos due dates and decisions, one very significant due date that all patentees have to deal with is the date by which they must file their patent application overseas so as to retain priority rights. Large corporations normally have a standard operating procedure which includes standard target jurisdictions. Small companies, however, for whom each patent family is of great significance, often agonize over where to register their patents. The reason for this is more often than not, due to a lack of understanding of the countries in which, by obtaining a patent, there may exist the greatest potential for successful business ventures.
Such was the conversation with Simon, one of our āforeign associatesā, during a visit to our firmās Jerusalem office a number of weeks ago. āI would like to recommend to my clients that they consider Israel as a patent destination, but Iām not sure why they might want toā, said Simon. Realizing that many might be asking the same question, and bearing in mind that Israel is only the 98th most populous country in the World, I sat down to answer exactly that question: āWhy Register Patents in Israel?ā. Scroll down to see what I came up with.
Apropos the provision of instructions, our Patent Attorney Eviatar Aron, has crafted a piece which discusses an aspect of the impact of the digital revolution on the practice of IP services. He also relates to a little known aspect of Design practice in Israel; and finishes off with a chat with our Barak Hullman, on our latest featured podcast.
As usual, feel free to contact us about any of the matters raised in this, our latest newsletter!
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Israel should be considered as a patenting venue if any if the following applies:
- Manufacture: Israeli companies are known to manufacture products covered by my patent, for example, in agriculture, water technology, telecom, pharma, or defense.
- Research & Development: My invention is in a field where there is extensive R&D activity in Israel. This would not only potentially curtail competing market activities, but it would also position me for potential partnership opportunities with companies undertaking such R&D activity (see #3).
- Partnership Opportunities: Following on from #2, patents are a double-edged sword. My ownership of a patent can be used as a device to prevent use of my invention by a third party. However, offering use of my patent, as by licensing, to an Israeli company that is active in the field of my invention, could enable me to license my patent to them, so as to generate an additional income stream for me. Furthermore, depending on the terms of the license, I may also benefit from a partial share in future, related technologies.
- Exposure to additional markets: Israel is home to over 450 incubators and accelerators (as per IVC Online). Many of these are owned, at least in part, by corporations from the world over, including the US, Europe, China and Japan, and most of the VC investment also comes from outside of Israel. Joint ventures of one sort or another with an Israeli company can often mean exposure to additional markets that you would otherwise not have thought possible.
The conclusion is that Israel is a great business destination for many different types of venture. But donāt take my word for it.
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Until 2018, when Israel implemented a New Design Law, a design application under the old Patents and Designs Ordinance (1924) was unpublished until grant. That provided a certain degree of comfort for the designer, but an equal and opposite degree of discomfort for the rest of the market!
Fortunately, it is now possible to access the contents of design applications within a few weeks of filing, providing a useful resource for the market in general.
Balancing Conflicting Needs
However, in view of the fact that new products can take some time to migrate from the drawing board to the marketplace, immediate publication of design applications can be discomforting in some situations, potentially providing valuable commercial intelligence to competitors for free(!)
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Since the advent of the internet and email, client-attorney communications have evolved. From written letters sent by post, then telex and fax (pre-Internet), the e-mail has become the preeminent mode of communication, even to the extent where formal letters on official letterhead and bearing a physical signature were (and in many cases still are) sent by email.
More specifically, even formal communications have used email, requiring a formal email address associated with an attorney or his/her firm. This has allowed patent attorneys and attorneys to maintain an accurate record of the incoming and outgoing communications with clients and colleagues, normally by use of workflow software designed to store digital documents in a way that is recognizable as being analogous to the traditional paper filing systems.
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A good thing about patent renewal fees in Israel is that they are only payable after grant, and even then, only once every four years.
A tricky aspect of this however, is that the first renewal fee, which covers years 1-6 (calculated from the effective date of filing) is due for payment 3 months after grant. The reason that this is tricky is that by definition, it is not a date that can be automatically calculated based on the date of effective filing, as it is entirely dependent on the date of grant.
If you want to know how to handle this effectively while retaining your peace of mind, click here.
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Eviatar Aron is a patent attorney in the US and Israel who specializes in Hi-Tech, Software, Electrical and Mechanical Engineering and other areas.
Barak Hullman sat down with Eviatar in the offices of JMB Davis Ben-David in Jerusalem to discuss what he has learned from helping clients get patents over the past 10 years.
In this episode we discuss what to do before getting a patent, how to avoid costly mistakes, the benefits of getting a patent, tips for startup founders and much more.
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The JMB Davis Ben-David patent services team helps companies and individuals secure and leverage their patent rights for products in the US, Israel, and globally.
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The JMB Davis Ben-David trademark services team works with leading international brands seeking to merchandize their products in the US, Israel and the rest of the world.
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For 25 years, the JMB Davis Ben-David team has successfully assisted clients in registering design patents that protect their original designs for products ranging from medical devices to diamonds.
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The JMB Davis
Ben-David
YouTube Channel
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You'll find our hour long webinars on Patents and using the Patent system to your advantage.
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We're here to help you with your patents, designs and trademarks.
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We started JMB Davis Ben-David with one goal in mind: to help our clients navigate the challenges of securing rights to their IP. This includes patents, designs and trademarks. Since 1995 we have been working with partners around the world so as to secure our clientsā IP rights. Weāre here for you.
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Managing Partner
JMB Davis Ben-David
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