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Unique Sections of Israel Patent Law

23 Oct, 2023

The article briefly summarizes some unique sections of the Israel Patent Law.

Modified Examination

In comparison to other patent laws a significant difference in Israel expedited examination and allowance of a patent based on a corresponding foreign patent in major jurisdictions, such as the US, Europe, Japan, Canada, and Australia (Section 17c of the Patent Law). Petitioning for allowance based on a foreign patent streamlines examination, reduces costs, and ensures the Israeli patent’s claims will correspond to those in a main jurisdiction. The Israeli Patent Office has instituted a policy which encourages applicants to petition for allowance by providing office actions in English and heavily relying on foreign examination even when applicant’s do not petition for allowance based on a foreign application. Petitions for allowance can be combined with deferral of examination to appropriately time the Israeli examination to allow an applicant to petition for allowance. 

Information disclosure requirements

The information disclosure requirements under Section 18 of the Patent Law are also relatively unique. The only other major patent jurisdiction with similar requirements is the US. According to this provision, applicants are required to disclose all relevant publications they are aware of, as well as references cited in corresponding applications, throughout the examination process until the application is allowed. Applicants that do not comply with this section can incur penalties including refusal or cancelation of a patent application. Further, a recent Supreme Court decision ruled (under appeal) that damages can be awarded for violating this provision. 

Exclusion from patent protection 

Israeli law also limits the patentability of inventions relating to the human body (section 7(1) of the Patent Law), outlawing inventions such as non-aesthetic surgical techniques. Pharmaceutical patent applications are usually not impacted by this prohibition and their claims can be formulated to comply with this section of the law. Section 7(2) also excludes patents directed to plants and animals. These exclusions (human body, plants) are similar to European patent law, but dissimilar to US patent law. 

Patent Term Extension

Israeli patent law allows for Patent Term Extensions (PTE) for pharmaceuticals and medical devices that require Ministry of Health (MOH) approval. The petition for an Israeli PTE must be filed within 90 days of registration by the MOH (not extendable). The duration of an Israeli PTE is calculated based on the duration of extension orders granted in the US, UK, France, Germany, Spain and Italy. The maximal duration of a PTE is 5 years or 14 years after marketing authorization is granted in the US, UK, France, Germany, Spain and Italy.

Patent Opposition

Israel offers third parties the opportunity to oppose patent applications prior to grant (i.e. pre-grant oppositions). This means that the patent is not granted until the conclusion of the opposition. This is unique and in most other jurisdictions third parties can only oppose patents after grant. The deadline for filing an opposition is three-months after allowance of the application is published. Thereafter, other options are available to third parties including a petition to cancel a patent application (a similar but more difficult proceeding for the third-party).  

Israeli oppositions begin with statements of case filed by both parties. The parties then submit evidence, typically in the form of expert opinions. Then hearings are held before the Patent or Deputy Patent Commissioner in which the parties cross-examine the opposing party’s expert. The parties then submit summations, and a decision is issued. The parties can appeal the decision to the District Court. 

The live cross-examination aspect of Israeli oppositions is different than typical European oppositions or US Inter Partes Review (depositions). The timeline for oppositions is usually much longer than their US and European counterparts and, if no settlement is reached, can take several years. 

Filing a First Patent Application in Israel

A key advantage to filing first in Israel, is the ability to obtain an office action within about three months after filing. This accelerated process allows inventors to have their applications evaluated by the Israeli Patent Office before putting the invention into the public domain (publication). In certain cases, such as green applications related to sustainability, the IL Patent Office will accelerate applications at no cost. Further, a written opinion from the IL Patent Office allows an applicant to petition for accelerated examination at multiple patent offices, including the US, EPO, Japan, China, and Canada.

The content provided by:
Ephraim Zachary Heiliczer, Partner
Pearl Cohen