Patents of Invention

– The Patents Law, 5727-1967, substantial amendments were made in 1995, 1998, 2000, 2002, 2006 and 2012.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 26, 1970.
– Strasbourg Agreement of March 24, 1971 Concerning the International Patent Classification, since October 7, 1975.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since August 14, 1978.
– WTO’s TRIPS Agreement, since April 21, 1995.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedures, since April 26, 1996.
– Patent Cooperation Treaty (PCT), since June 1, 1996.

Filing

Applicant: the owner of the invention, which may be the inventor or an assignee. 

Types of patents: utility patents, patents of addition.

Novelty: universal novelty.

Exceptions to protection: methods of therapeutic treatment of the human body; new varieties of plants or animals other than microorganisms not derived from nature; inventions that are not technological in nature or are not susceptible for industrial use. 

Publication: first publication of an application eighteen months from priority date for regular national applications or forty-five days from filing of a national stage application of a PCT application; and a second publication of the application after acceptance.

Opposition: pre-grant opposition; can be filed within three months from the publication of acceptance. Appeal to the Jerusalem or Tel Aviv District Court.

Reinstatement of abandoned applications: in the case of an application abandoned following a rejection, the applicant may apply for reconsideration of the rejection within twelve months. There are no provisions for applications that became abandoned for other reasons.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney, which for ex parte proceedings, does not need to be legalized. However, if in inter partes proceedings (opposition, revocation, compulsory license), authenticity of the signature on the power of a foreign party is questioned, the Patent Office may require the submission of a new power with Israel Consular or Apostille legalization. A scanned copy of the signed form is sufficient, no original is required;
2. 1 copy of specification, including claims, in English. Where time is short, it is possible to file provisionally a specification in another language and to substitute it by a verified formal English language specification, provided that this is done within three months from the date of receipt of a notification of defects. If the application is submitted in a language other than English, the application must provide an English title upon filing;
3. 1 set of drawings;
4. For a national phase application, if changes in the applicant(s) name and address were made during the international (PCT) stage, updates are required. 92bis request or IB/306 form will be required;
5. For Convention applications: scanned copies of the certified copies of foreign applications (priority documents) or DAS number if the priority document was deposited at the WIPO DAS. English translation of the priority document, if the priority document is in a language other than English; verified English translation of the priority document may be requested by the Examiner during the substantive examination. No such priority document is needed for PCT national phase applications.

Minimum requirements for filing: specification with claims, set of drawings, if any, receipt of deposit of biological materials, and sequence listing, if any. Missing documents must be supplemented within three months from the date of issuance of a notification by the Patent Office requesting the missing documents with the exception of priority documents, which can be filed within twelve months (time can be extended by six months against payment of a fee).  

Electronic filing: available and mandatory.

PCT applications: time limit for entering the national phase under both chapters I and II: 30 months.

For a change of name:
1. An official certificate confirming the change of name, issued by the relevant authority in the country of incorporation, or an official publication of the change, or a notarial confirmation regarding the implementation of the change, confirming that the change was recorded by the appropriate authorities in the country of incorporation (no legalization required and a scanned copy is sufficient);
2. Power of attorney in the new name, simply signed and a scanned copy is sufficient.

For a change of address: no documents are required.

Examination, Protection

Examination: as to formalities, description and patentability. There is a four-month term to respond to Office actions, which is usually extendible. After the third round of examination, or when the Examiner believes that the examination has reached a dead end, the Examiner is entitled to issue a notification prior to refusal of the application. If the applicant fails to overcome the rejections raised in the notification prior to refusal, the application will be refused. Third parties may submit publications for consideration during examination within a limited two-month term from the applicant's response to the notification prior to examination.

Modified examination: the applicant has the option to request that his application be based on the claims of a patent granted in one of a number of specified jurisdictions including the U.S., EPO, Japan and others. 

Divisional applications: can be filed at any time as long as the parent application or its divisional application is pending.

Duty to disclose: the applicant has a duty to disclose to the Patent Office all relevant art known to him including art cited by or submitted to a foreign patent examining authority. This duty is ongoing until the acceptance of the patent. Failure to meet this requirement is sanctioned and can lead up to the invalidation of the patent.

Delivery of document: the patent certificate is issued in both electronic and paper format.

Duration: twenty years from the date of application.

Patent term extension: an extension order of up to five years for medicinal products for human or veterinary use and for medical devices is available to compensate for time to obtain regulatory approval.

Renewal fees: at the end of the 6th, 10th, 14th and 18th year from the date of application; no fees to be paid before grant when all accumulated renewal fees are to be paid within three months from grant date. The term for payment of renewal fees may be extended by up to six months.

Cancellation of granted patents: any interested party can apply for cancellation of a patent on any grounds that can serve as a basis for an opposition.

Restoration of lapsed patents: where a patent has become void, owing to the unintentional failure of the patentee to pay a renewal fee within the prescribed time, the patentee may apply for an order for the restoration of the patent.

Marking of patented goods: not provided for.

Working: not compulsory (see however “Compulsory license” below).

Rights of the patentee: prevents others from exploiting the invention subject of the patent. “Exploitation” means, where the patent concerns a product: any use of the invention including production, use, offer for sale, sale or import for the purpose of any of these acts; where the patent concerns a process: use of the process; and with respect to the direct product of the patented process: any of the aforementioned acts.

Exclusion to the patent monopoly: permitted are acts not of a commercial scale and not of a commercial character. Also permitted is any experimental act, which is part of an effort to obtain a license to market a product, either in Israel or in a country, in which an experimental act on a patent-protected invention, for the purpose of obtaining a marketing license, is permitted during the life of the patent.

Compulsory license: only in the event of abuse of monopoly, where the product is not supplied under reasonable terms in Israel. Provision of the product, by way of importation only, is considered appropriate and not an abuse of monopoly. A compulsory license, if granted, is mainly for the purpose of fulfilling demands of the local market.

Remedy against infringement: injunction and damages.

Assignment, licenses and mortgages: may be recorded in the Register of Patents; must be recorded to have an effect in rem.