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Israel as a Secondary Patent Office: Strongly Encouraging Applicants to Petition for Allowance Based on a Foreign Patent

Israel Updates / Jun 24, 2024

The Israeli Patent Office has continued encouraging Applicants to petition for allowance based on a foreign patent. However, the most recent figures did not indicate a rise in petitions for allowance based on foreign patents (Section 17c of the law). Petitions remained stagnant at about 20% (2023 IL Patent Office Annual Report).

To combat stagnation, the Israeli Patent Office has issued guidance that strongly encourages Examiners to base Israeli office actions on foreign office actions. This means that even when Applicants do not petition for allowance based on a foreign application, the Israeli Patent Office effectively does it for them by issuing office actions identical to those issued in a foreign jurisdiction (e.g., a USPTO or EPO office action).

The Israeli Patent Office has now taken this effort further by encouraging Applicants to expressly provide information on which corresponding foreign applications have a claim set similar to the pending Israeli claim set. This is intended to give Examiners the information necessary to issue office actions identical to those found in corresponding foreign patent prosecution. This means that even if an Applicant does not petition for allowance based on a foreign patent, the IL Patent Office now has all the necessary information to effectively link the Israeli application to a foreign application (e.g. US, EP). This complements the IL Patent Office’s initiative to issue office actions in English.

These changes add further weight to Pearl Cohen’s usual recommendation to petition for allowance based on a foreign patent prior to the start of substantive examination (i.e. the first office action). Doing so allows the Applicant to streamline examination by selecting the most desirable foreign claims for allowance in Israel. This strategic approach can significantly reduce the risk of Examiners issuing avoidable office actions, thereby minimizing the cost and time of Israeli patent prosecution.

Correspondingly, the Israeli Patent Office also changed its procedures to allow the Applicant to better understand the timing of examination. The Israeli Patent Office now allows an Applicant to petition to defer examination up to three months prior to the expected start of substantive examination. While the Israeli Patent Office previously provided information on the expected start of examination by allowing Applicants to defer examination up to three months prior to the expected start date, the Israeli Patent Office has now offered a firm commitment to the date. This commitment provides Applicants with a clear and predictable schedule, enhancing their ability to plan and prepare for the examination process.

The recent changes cement the IL Patent Office’s position as a Secondary Patent Office (see 2023 IL Patent Office Annual Report). Applicants should acknowledge the change and alter their present practice by timing examination (e.g., using deferrals) to petition for allowance based on a granted foreign patent before the start of the substantive examination.

 

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