On July 12, 2012 an amendment to the Patents Act 1967—5727 entered into force incorporating the 18 months period for publication of patent applications and regulating the expedited examination of patent application in Israel.
Before the amendment, patent applications were published only after the application was allowed by the Patent Office. This state of affairs prejudiced applicants in Israel such that the previous law did not afford any protection from the period their applications were published internationally until the date of publication in Israel, which was after allowance.
Newly added section 16A provides that the Israeli Patents Registrar shall publish, as soon as practically possible, after 18 months from the first filing date, that the application documents are available for public review. Nevertheless, the Registrar will not publish applications that were withdrawn or refused prior to the publication date or applications that were allowed and published before that date.
The amendment also relates to compensation for infringement and provides that the court in an infringement case may award compensation for the period between the 18 month publication date and the date on which the allowance is published.
Amended Section 179 of the Patents Act provides that the compensations for that period would be limited to reasonable royalties that the infringer would have paid had he obtained a license for the patent in the extent the infringer actually exploited the invention. However, compensation will be awarded only where the patent as granted was infringed and where the invention claimed in the patent is practically identical to the invention claimed in the 18 months publication.
Please note that the amendment does not refer to pre grant oppositions that are still available in Israel.
Another issue covered by the amendment is expediting examination proceedings. Newly enacted section 19A states that an applicant of a patent having reasonable grounds may file an application to expedite the examination process. The application will be supported by an affidavit supporting the facts of the application.
Reasonable grounds, include, but is not limited to: (1) the applicant’s advanced age or his medical condition; (2) patent prosecution highways approved by the Registrar; (3) unauthorized exploitation by a third party of the invention as claimed, or the reasonable suspicion that such unauthorized exploitation will take place; (4) unreasonable delay in prosecution of a national or a national phase application, and (5) public interest or other justifying circumstances.
The process of expedited prosecution of the application will be cancelled if the applicant files a request for extension of time or to suspend the prosecution of the application, unless the Registrar is convinced that the extension is required from a reason that the applicant had no control over or could not prevent.
Newly added section 19A(c) provides for a third party requester to apply for an expedited examination of an application that was published after 18 months where: (1) the requester has a reasonable suspicion that the regular examination of the application will cause the requester who is engaged in a business in the field of invention, delay development or manufacturing of a product or a process claimed in the application; (2) unreasonable delay in prosecution of a national or a national phase application, and (3) public interest or other justifying circumstances.
Expedited examination will not apply to national phase patent applications younger than 30 months from the first filing date. Unlike the previous practice, that fact that an application for patent was expedited will now be published upon allowance. This will allow potential opposers to identify expedited prosecution applications without obtaining a copy of the file wrapper.
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