Significant amendment to the Patent Law takes effect

Further to a February 2010 agreement with the US Trade Commission, the 10th amendment to the Patent Law was published on 12th July 2012. The amendment forms part of the revisions to local IP laws and regulations which removed Israel from the blacklist of countries that fail to protect intellectual property adequately and enabled Israel to join the Organisation for Economic Cooperation and Development. The amendment includes several significant changes to the law and conforms Israeli practice with that of most Western countries.

Before the amendment, Israeli patent applications were available to the public only after the application has been allowed. Therefore, a remedy for infringement was available only after grant of the patent. The amendment mandates that an application be published within 18 months of filing. National phases of Patent Cooperation Treaty applications filed in Israel will be published shortly after filing in Israel. The examination process will also be open to the public and the file history will be available online.

The amendment also enables patent owners to obtain damages for infringement dating from initial publication of the application, provided that the granted patent is fundamentally the same as the initially published application. 

These amendments substantially reduce the “remedy-free” infringement period in Israel.

The generic pharmaceutical companies lobbied strongly against pre-grant protection and were supported by the Ministry of Health, which is interested in reducing high drug prices.

The amendment allows third parties to request expedited examination. When such a request is accepted, the application is picked up for examination earlier than the chronological order in which the application was received by the Patent Office. Thus, a potential infringer can request that the examination be expedited, thereby gaining certainty regarding the allowed claims.

Applicants can also file a request for expedited examination, which must include a declaration stating the reasons for expediting the examination. Special circumstances which would justify expedited examination may include:

• A medical condition or the advanced age of the applicant.
• Infringement or a valid concern that infringement is about to occur.
• Unreasonable delay in examination of the application.
• Public interest.

The amendment also allows third parties (which will now have access to the published application) to affect the examination process by submitting prior art to the Patent Office during examination of the application. The amendment does not affect the pre-grant opposition procedure which enables third parties to delay substantially the grant of a patent. An opposition generally delays grant of the patent for between one and five years. During the opposition procedure the patentee has no remedy for infringement, unless the granted patent is substantially similar to the initial publication of the application.

The changes to the law also include administrative improvements, such as a requirement to submit applications in digital format.

It is too early to predict the impact of the revisions on the protection of IP rights in the Israeli market; however, the revisions should help to expedite the process and to enhance legal certainty for both patent owners and their competitors.