Israel - Changes to patent practice
1st July 2010
The Israel Patent Office has recently announced some important changes to policy.
A divisional application, in which an application is divided into more than one application, can be filed either voluntarily or in response to an objection of lack of unity of invention. Previously, provided the application to be divided was still pending, a divisional could be filed at any time. However, this is no longer the case. Instead, for applications published after 15 July 2010, only the parent application can be divided. This means that once the parent application has been accepted and published no more divisional applications can be filed for that family. If a lack of unity objection is raised against a still-pending divisional, the applicant will be required to select one invention to pursue and the other(s) will have to be abandoned. In general, this means that if a parent application is held to cover more than one invention, and it is desired to protect two or more of those inventions, then an appropriate number of divisionals will have to be filed straightaway.
The number of independent claims will be limited such that an application may contain only a maximum of two independent claims of each type:
• product claims
• method of manufacture
• apparatus for manufacture
• Swiss-type use claims
There is some concern that this limitation is somewhat arbitrary, artificially restricting the application where other patent offices merely require there to be unity of invention (albeit with some charging fees for excess independent claims).
Extensions of time
Under Israel patent law, an applicant can request an extension to the four month period for replying to each office action. Under changes affecting applications where the first office action was issued after 20 March 2010, the extension will be limited to six months for each office action, and capped at a total of fifteen months throughout prosecution.
It is worth noting that Israeli patent applications are only published on grant and so patent rights are not enforceable until this time. It is therefore not generally in the applicant’s interest to delay prosecution. However, if proposed amendments introducing automatic publication at 18 months from the earliest priority date come into force then this may change.
Excess Claims Fees
The Israel Patent Office have announced the introduction of an excess claims fee of NIS 500 (approx £90) for the 51st and each subsequent claim in an application, though it is not yet clear at what point these fees will have to be paid.
Information Disclosure Requirements
Another proposal that was announced, but which has now thankfully been suspended indefinitely, concerned the obligation to disclose prior art information to the Israel Patent Office. Currently, applicants are required to submit all citations made in corresponding applications abroad. It was proposed that, from 30 June 2010, applicants would also be required to submit the observations on novelty and inventive step made in response to these citations. Applicants were also to be required to submit a list of all prior art documents known to themwhich may be relevant to the application. For the time being, however, this change has not been implemented.
These changes are similar to changes in practice introduced recently by other patent offices around the world, as they attempt to increase the throughput of patent applications and to tackle the backlog of pending applications that they face. Whilst there may well be benefits for users of the patent system, there will undoubtedly be instances in which applicants’ interests are adversely affected by these changes.
We will advise clients on a case-by-case basis as to the impact of these developments.
1 July 2010
Stay of proceedings at UK courts - Coloplast A/S v Salts Healthcare Limited
24th February 2020
Although a stay of national proceedings is the ‘default’ position in the UK, the stay was refused in this instance because of the combination of an absolute right of appeal, a minimum of two years to appeal and the potential of the ping pong effect before the EPO.