Written by: Ephraim Heiliczer
Competitor patent applications may unfairly restrict competition or innovation. Several options are available to challenge such applications, depending on the challenger’s objectives and the stage of patent examination.
Acceleration of Patent Examination by Challenger
An early and impactful method is a third-party petition for accelerated examination. The petition can include relevant prior art (existing publications or patents) alongside arguments supporting immediate examination and challenging patentability. Accelerating the examination disrupts the applicant’s typical timeline, compelling the Israeli Patent Office to promptly conduct a comprehensive examination, preventing the applicant from delaying or bypassing Israeli examination through reliance on allowances from foreign jurisdictions. Furthermore, expedited examination restricts the applicant’s ability to extend deadlines, adding urgency to their response.
Third-party Observations
Third-party observations enable challengers to submit documents highlighting prior art that questions novelty and inventiveness. While direct arguments are generally not permitted, observations that include arguments submitted in other jurisdictions (such as Europe) can be filed as documents in Israel. Observations can be submitted within two months following the applicant’s response to the initial notice before examination.
Opposition
Opposition provides a robust pre-grant challenge, available within a three-month period after the application is allowed. Opposition proceedings are adversarial, allowing detailed expert testimony and cross-examination. However, oppositions typically require substantial time (often two to three years) and incur significantly higher costs.
Cancellation
Cancellation is a post-grant procedure similar to opposition but applied to patents already granted. Procedurally, cancellation actions necessitate considerable upfront preparation, including detailed statements of case and supporting evidence such as expert opinions submitted at the outset.
The choice among these methods depends on the challenger’s strategic preferences, considering factors such as speed, cost-effectiveness, or the depth of challenge desired.
