28 Oct
2021

Israel

How do you get a patent in your jurisdiction?

Q: What types of patent are granted in your jurisdiction, and what rights do they confer on owners?

Patents are governed by the Patents Law 5727-1976, as well as by various regulations relating to patents.

In Israel, it is possible to obtain Utility Patents only.

Q: What inventions are eligible for patent protection in your jurisdiction?

The Patents Law provides that for an invention to be patentable – be it a product or a process, in any technology field – it must be novel and useful, have industrial application and involve an inventive step.

Q: Are there any specific exemptions to patent eligibility?

The following are excluded by the Patents Law:

  • procedures for therapeutic treatment on the human body; and
  • new varieties of plants or animals, except microbiological organisms not derived from nature.

Q: Are there technology-specific eligibility issues that applicants must navigate (eg, in software, business methods, AI, medical diagnostics, pharmaceuticals, medical procedures, etc)?

The Patents Law excludes from patent eligibility, procedures for therapeutic treatment on the human body and new varieties of plants or animals, except microbiological organisms not derived from nature.

In addition, discovery, scientific theories, mathematical formulas, rules for playing games and mental acts, as such, are considered as abstract ideas or processes devoid of technical character. Yet, a technological character may be crystallised by combining the aforementioned ideas or processes with additional technological means, resulting in products or processes in technological fields that are eligible for patent protection.

Q: What are the time and costs involved in securing a granted patent?         

According to the Israeli Patent Office’s (IPO) 2020 annual report, the average time from filing an application until the end of examination is 42 months. There is a difference between different technological fields, with examination of applications in biotechnology taking the longest (on average, 19.5 months from the issue of the first official notification) and mechanics, electronics and physics taking the shortest (on average, 11.4 months from the issue of the first official notification).

According to the IPO’s 2021 fee schedule, the following costs are involved in securing a granted patent:

  • standard filing fee: NIS2,030;
  • extra claim fee: NIS521 (for each additional claim over 50);
  • extra page fee: NIS254 (for each additional page over 50, not including sequence listing);
  • extension fee/month: NIS203; and
  • acceptance/publication fee: NIS711

Q: Is expedited examination available?

Expedited examination is available in Israel. There are four different available routes:

  • acceleration under Section 19(a);
  • patent prosecution highway;
  • green-technology inventions;
  • modified examination; and
  • response to the combined international search report and written opinion .

Acceleration under Section 19(a)

A petition for accelerated examination may be filed at the IPO in accordance with Section 19(a) of the Patents Law based on the following:

  • likelihood of infringement;
  • advanced age or applicant’s medical condition;
  • public interest; and
  • unreasonably long delay in initiating examination by the IPO.

If the registrar is satisfied that the petition is well grounded, the examination of the application will commence as soon as possible after the filing of the petition, subject to the payment of the prescribed fee.

Global patent prosecution highway

A request for an accelerated examination under the patent prosecution highway programme may be filed with the IPO before substantive examination commences.

Green technology inventions

Applications that relate to ‘green’ technologies can be given a preferential status. Therefore, if the invention contributes to the environment by, for example, preventing global warming or decreasing contamination of air or water, the applicant may apply for preferential status that will lead to a special, expedited examination route.

Modified examination

Modified examination under Section 17(c) can be based on a corresponding patent that has been granted in one of the following jurisdictions:

  • Australia;
  • Austria;
  • Canada;
  • Denmark;
  • the EPO;
  • Germany;
  • Japan;
  • Norway;
  • Russia;
  • Sweden;
  • the United Kingdom; and
  • the United States.

Response to the international search report of written opinion

An applicant may accelerate examination by filing a response to the international search report, written opinion or international preliminary examination report, as long as it is done before the issuance of the standard official notification prior to examination.

Q: Are reduced fees available for certain applicants?

A 40% small-entity discount on the official filing fee and on the acceptance fee are available to individuals and to companies and partnerships with a turnover of under NIS10 million in the preceding year.

The small-entity discount is not available for national phase of a Patent Cooperation Treaty application or for patent applications filed under the Paris Convention.

Q: What are any specific requirements that a patent specification must meet in your jurisdiction?

The patent specification should include:

  • a title by which the invention can be identified;
  • a description of the manner in which the invention can be performed, including, when necessary for the understanding of the invention, drawings, examples and sequences; and
  • a claim or claims that defines the invention in a clear and concise manner, provided that each claim is supported by (reasonably arises out of) the description

When the invention includes biological material that is not available to the public or the invention involves the use of a biological material that has been deposited in a deposit institute, reference to the deposit details must be included.

Where amino acid or nucleic acid sequences are recited in the specification, a list of the sequences should be submitted in a computer-readable form (txt file).

Q: What rules govern the filing of provisional applications, continuations or continuations-in-part, divisionals or any other special type of application?

The Patents Law allows for the filing of a divisional patent application. As long as the application has not been accepted, the applicant is entitled to request that it be divided into one or more patent application. Similarly, if the application includes more than one invention, then the registrar may, as long as the application has not been accepted, direct the applicant to divide the application.

Divisional applications can be further divided out of a pending divisional application before the pending divisional application is accepted. The date of each divisional patent application should be the same as that of the application from which it was divided and it will enjoy same priority claims.

Q: What do applicants need to know about office actions and patent examiner interviews? 

A response to an official notification should be filed within four months of the date of issue of the notification. An applicant is entitled to request up to a four-month extension for each round of examination. The total extensions available for the entire process of examination are limited to 12 months.

It is possible to conduct an interview with the examiner. During the interview it is possible to discuss various aspects of the invention, defects and possible corrections to overcome any defects. Scheduling an interview is conducted directly with the examiner and should be accompanied by a written notification of the interview initiative, including details of the issues to be discussed. A request for an interview does not replace the duty to respond to a pending official notification.

Are there any recent examination trends that patent applicants need to be aware of?     

The IPO has issued the Patent Examination Working Guidelines (https://www.gov.il/he/Departments/DynamicCollectors/work-procedure-db?skip=0), including guidelines relating to the examination of antibodies, polymorphs, overlap and computer-related inventions.

Antibodies (Appendix V)

Claims to antibodies should include, among other things, any one of the following:

  • the amino acid sequence of the entire antibody or the DNA segment encoding the antibody;
  • the amino acid sequence of the variable regions or the complementarity-determining regions, or the DNA segment encoding these regions;
  • the deposition number of the cell producing the antibody; or
  • the specific process for producing the antibody or reference to a standard process for producing the antibody, based on the antigen description.

A claim defining an antibody by its properties and not by its structure is considered a functional claim and would therefore be examined in accordance with Section 13(b) of the Patents Law.

Polymorphs (Appendix T)

The guidelines define, among other things, unity, novelty, inventive step and claims requirements.

With respect to the claims, it is important to highlight the requirement to characterise the polymorph by a specific number of peaks that precisely and unambiguously characterise the crystalline form (typically requiring 10 peaks having the highest intensity).

Overlap (Appendix E)

The guidelines relating to overlap concern two scenarios:

  • overlap between an examined application and an additional patent or patent application having the same effective filing date (eg, parent and divisional); and
  • overlap between an examined application and an additional patent or patent application having a different effective filing date.

In the first scenario, an overlap objection will be raised in the following cases:

  • The applications claim the same aspect, wherein the scope of the claim in the examined application is identical (even if the claim is not literally identical) to the scope of the claim of the other application or patent.
  • The applications claim different aspects, wherein the claims provide an identical scope of protection (eg, product by-process claims and claims directed to the process) are considered to overlap.

In the second scenario, an overlap objection will be raised in the following cases:

  • The applications claim the same aspect, wherein the scope of the claims in the examined application is identical to (literally or substantively); or includes or is included within the scope of the claims of the earlier application.
  • The applications claim different aspects, but the claims essentially provide identical scope of protection (eg, product by-process claims and claims directed to the process) are considered to overlap.

A substantial overlap exists between claims of the examined application and the claims of the earlier application (whether the claims are directed to different aspects or to the same aspects), in either of the following cases:

  • the difference between the claims does not constitute an essential element of the claimed invention; and
  • the element that constitutes the difference was described or exemplified (even if it is not claimed) in the other application that has not yet been accepted.

Computer-related inventions (Appendix B)

Discovery, scientific theories, mathematical formulas, rules for playing games and mental acts, as such, as well as business methods per se, will be considered as abstract ideas or processes that are devoid of technical character, irrespective of whether they are performed manually or by computer.

When examining computer implemented inventions, the working guidelines define that the invention should include a concrete technological character for the claimed product or process. A technological character may be formed by combining ideas or processes with additional technological means and the invention, as a whole, should make a contribution having a concrete expression in its technological field. This contribution of the invention, as a whole, will be examined with respect to the prior art.

Q: Is there anything else about the patent filing process that applicants should know?

Minimal requirements include the name of the applicant, specification (in Hebrew, Arabic or English, although if filed in Arabic, the IPO will obtain a translation) ending with at least one claim, address for service in Israel and payment of the prescribed fee.

Missing documents such as a power of attorney, copy of priority document and translation, among others, can be completed after filing.

Patent of addition

If a patent owner is the owner of an invention that is an improvement or modification of an invention for which a patent has already been granted (ie, the main patent), then the owner may request that a patent for the second invention be granted to them as a patent of addition. The patent of addition need not involve an inventive step beyond the main patent. The patent of addition remains in effect for as long as the main patent is in effect. There is no need to pay any renewal fee with respect to the patent of addition, in addition to the fees paid for the main patent.

Q: Is utility model or petty patent protection or an equivalent available in your jurisdiction? If so, how does the system work and under what circumstances would you advise using it?

No, there is no utility model or petty patent protection in Israel.

What are the major administrative procedures in your jurisdiction?

Q: How can applicants appeal patent office decision?

An examiner’s decision may be appealed to the registrar of patents, while a registrar’s decision may be appealed to the court.

Q: Are oppositions available pre-grant or post-grant? 

Israel has a pre-grant opposition procedure.

Q: What rules govern standing to oppose a patent and the opposition process?

The Patents Law provides that any person may, within three months of the date of the publication of acceptance of the application, oppose the grant of the patent by filing a written notice to the registrar of patents along with the prescribed fees.

The grounds for opposition can include any one of the following:

  • the reason for which the registrar had the authority to refuse the patent application;
  • the invention is not novel under Section 4(2); or
  • the opponent, not the applicant, is the owner of the invention.

Q: What are the processes for re-examination of a patent?

There is no formal procedure of re-examination after grant. Re-examination may occur if applicant requests amendment of the granted patent, or if an application for revocation of the patent is filed by a third party.

Q: What is the process for invalidation or revocation of a patent? Who has standing to request invalidation? How long do inter partes invalidation cases take?

An applicant may request cancellation of a patent in its name. If granted, a third party may oppose the cancellation.

Any person other than the patentee may apply for revocation or cancellation of the patent.

Q: How can opposition, re-examination or invalidation decisions be appealed?

Decisions may be appealed to the court.

Q: Is administrative enforcement of patents possible? 

The Patents Law deals with the state’s right to exploit inventions.

Section 104 of the law prescribes that the minister may permit the exploitation of an invention by government departments or by an enterprise or agency of the state, whether a patent for it has or has not already been granted or has or has not already been applied for, if he or she finds that that is necessary in the interests of national security or of the maintenance of essential supplies and services.

Further, Section 105 prescribes that the minister may, if he or she finds that it is necessary for the purposes enumerated in Section 104, grant a permit to a person who operates under contract with the state, in order to ensure or facilitate the implementation of that contract and for the requirements of the state only.

On 18 March 2020, Israel’s minister of health issued a permit to the state to exploit an invention pursuant to these sections of the law, for the importation of Kaletra (lopinavir 200mg/ritonavir 50mg) for the sole purpose of medicinal treatment of covid-19 patients. This authorisation was the first time that Israel invoked Sections 104 and 105 of the Patent Law for public non-commercial use.

Q: Does your jurisdiction grant patent term extensions?

Yes. A patent for a pharmaceutical (substance) product or a medical device that requires marketing authorisation may be eligible for a patent term extension if it includes claims directed to any of the following:

  • a substance;
  • a process for manufacture of a substance;
  • use of a substance;
  • a pharmaceutical preparation containing a substance;
  • a process of manufacture of a pharmaceutical preparation containing a substance; or
  • a medical device that requires marketing authorisation in Israel.

Q: Is there anything else about patent administrative procedures that patent owners and challengers should know?

The IPO issued the Patent Examination Working Guidelines with the following appendices:

  • Appendix A – general guidelines for examining a patent application;
  • Appendix B – Section 3, patent eligible inventions;
  • Appendix C – Section 7, restrictions on the granting of patents;
  • Appendix D – Section 8, unity of an invention (English version available);
  • Appendix E – Sections 2, 9 and 19, overlap;
  • Appendix F – Section 4, novelty (English version available);
  • Appendix G – Section 5, inventive step;
  • Appendix H – principles for patent classification;
  • Appendix I – guidelines for prior art search;
  • Appendix J – Section 10, priority claims;
  • Appendix K – Section 13, the claims;
  • Appendix L – Section 12, the description;
  • Appendix M – Section 17(c), examination and acceptance based on a corresponding patent;
  • Appendix N – use of disclaimers in claims;
  • Appendix T– examination guidelines for polymorphs and salts (English version available);
  • Appendix U – Section 23, specification amendments;
  • Appendix V– examination of applications on antibodies; and
  • interview with the examiner.

The author would like to thank her colleagues, Michal Hackmey, partner and patent attorney, and Dalia Rivenzon-Segal, partner and patent attorney, for their assistance in the writing of this chapter.