Israeli Patent System

History:
 

The Israeli patent office was established in early 1917, prior to the establishment of the state of Israel, by United Nations General Assembly Resolution 181 on November 29, 1947, under the British Mandate of Palestine. The first application was filed on 13/04/1917.
 

Since 1917 and until the establishment of the modern state of Israel 1947 the patent office was active under the authority of the British Mandate. Since 1947 and hitherto the patent office has been active under the authority of the sovereign state of Israel.
 

Until 1968 the main legislation was the Patent and Designs Ordinance. Since 1968 the main legislation is the Patent Law 1967; whereas the Ordinance since 1968 is applicable solely for industrial designs.
 

The text of the original Patent Law 1967 was in essence the text of the old British patent law translated into Hebrew. Although the original text of the Patent Law 1967 was amended on numerous occasions (as indicated below), some of the characteristics of the British system remain, as will be elaborated below.

 
 

International Aspects:
 

Israel is a signatory of all main international treaties and conventions, namely the Paris Convention, PCT, Budapest Treaty and Patent Law Treaty.
 

On July 14, 1967 Israel became a signatory of the Paris Convention (Stockholm 1967), which was ratified on July 30, 1969 and entered into force on April 26, 1970.

On June 19, 1970 Israel became a signatory of the PCT, which was ratified on 10/8/1995 and entered into force on March 1, 1996. The applicable time limit to the national phase entry is 30 months from the priority date. A later entry into national phase may be approved upon the proof of “due care” criterion (circular mn45).

The later entry provisions may also be granted for priority claims made after 12 months from the priority date of a priority application, preceding an international phase PCT application entering national phase in Israel, within 2 months from the time limit and upon the proof of “due care” (circular mn53, article 26bis under the Regulations of the PCT).

The later entry provisions may also be granted for direct priority claims under Paris Convention made after 12 months from a priority date of application preceding an Israeli application within 2 months from the time limit and upon the proof of “due care” (circular mn57).

It is noted, however, that “due care” is construed rather narrowly in Israel, somewhat similarly to the “unavoidably abandoned” criterion of the USPTO, and the applicant is required to prove that he has acted on all reasonable measures to perform the filing duly.

Budapest Treaty was ratified on January 26, 1996 and entered into force on April 26, 1996.

The Patent Law Treaty has not been officially ratified but has been adopted in the administrative routine of the Patent Office.

Characteristics of the Israeli patent system:

The contemporary Israeli patent system is rather modern, internationally harmonized, flexible and convenient, retaining some hereditary characteristics of the British system.

The Israeli patent system is a first-to-file one. The term of patents is 20 years from the priority date.

Israel grants patent term extensions. The term of an extension is somewhat complex and it is advised to seek the counsel of an Israeli patent attorney to determine the exact term of an extension on given conditions.

Presently, the substantive merits for granting patents are similar to the ones of the EPO, in relation to patentability of computer software, biological material, therapeutic/diagnostic methods and methods of doing business.

Hereditary characteristics of the British system:

 The specifications and claims can be filed in English.

 Preliminary publications, shortly after filing of the title, filing date, applicant’s identity and address, correspondence address and priority claims if made; similar to preliminary publications in Britain, South Africa, Finland, etc. (article 16 to the Patent Law).

 Israel grants patents of addition, as in old British Law, in which no inventiveness is required, similar to the American CIP applications.

 Omnibus claims until recently were allowable in Israeli patents, limited to dependent claims (circular mn63).

Enforceability:

Provisional protection is available in Israel, however, effectively limited by the language of the Patent Law to the term from the publication under article 26. Prior to this there was no precedent in the Israeli case law extending the term of the provisional protection to a period commencing from the publication of a preceding international or a related application, contradistinctively to US and Europe.

Israel acknowledges prior-usage and intervening rights defenses in infringement suits.

There are compulsory licenses in the Israeli patent system but their grant is limited to abuse or misuse of monopoly since the joining of Israel to the TRIPS agreement.

The doctrine of equivalence is applicable in Israel and incorporated in the Patent Law (article 49) for the determining of non-literal infringements of patent claims alongside the wrapper estoppel doctrine for the interpretation thereof.

Doubled penal damages are acknowledged by the Patent Law in willful infringements (article 183(3)) but have never been granted under the case law.

Extended protection is available for processes; setting a presumption according to which if the product is essentially similar to the product of a patented process, the burden of proof shifts to the alleged infringer to prove that his product is not made by the means of the patented process. Injunctions are granted in Israel. 

Anton Piller orders and Mareva injunctions are obtainable in certain cases.

 

Below is a list of the main laws and amendments that deal with patenting and rights on inventions in Israel:

 

Patent Law 1967, the substantive patent law, enacted in 1967 and amended on: 1/11/1989; 10/8/1995; 26/2/1998; 30/12/1999; 23/11/2000; 13/6/2002. English translation of the Patent Law 1967 is available from WIPO at http://www.wipo.int/clea/en/details.jsp?id=2364.

 

Patent Regulations 1968 - (fees, documents, procedures and office formalities) the formal aspects of the patent practice, enacted in 1968 and amended on numerous occasions, mainly due to the amendments to the fees schedule. English translation of the Patent Regulations 1968 is available from WIPO at http://www.wipo.int/clea/en/details.jsp?id=2365.

 

Patent Regulations 1996 - (implementation of the PCT mechanism)

 

Patent Regulations 1998 - (patent term extensions)

 

Amendment of the Intellectual Property Laws 1999 - (conformity with the TRIPS agreement) a comprehensive amendment of the Israeli IP legislation of copyright law, patent law, trademark law and industrial design law

 

Patent and Designs Ordinance, enacted prior to the establishment of the state of Israel; presently applicable merely for industrial designs