In brief: patent prosecution in Israel

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

According to the Patents Law, 1967 (the Patents Law), patents will not be granted to protect computer programs as such, methods for the therapeutic treatment of the human body or new varieties of plants or animals, save for microbiological organisms not deriving from nature. Business methods are similarly not patentable as such, since they fall within the field of commerce and, therefore, are not considered susceptible of industrial application.

The Patent Examination Guidelines published by the Israel Patent Office (ILPO) provide that to be patentable, an invention must fall within a technological field, namely, it must involve a concrete technological process. Hence, if a computer program has the effect of changing any physical properties, or causes the computer to work in a new way, or establishes connections between system components that did not previously exist, then it may be construed as falling within a technological field and, thus, patentable.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

According to the Patents Law, the owner of the invention is the inventor (or multiple inventors) or whomever is entitled to the invention in accordance with law, by assignment or by agreement. In addition, the person filing a patent application is deemed the owner of the invention, unless proven otherwise.

An invention by an employee, arrived at in consequence of his or her employment and during the period of the employment (‘a service invention’) shall, in the absence of an agreement to the contrary between the employee and the employer, become the property of the employer. An invention arrived at by an independent contractor is generally owned by the inventor. However, in one case, the district court held that an independent contractor should be considered an employee for the purposes of the Patents Law, hence construing inventions conceived by the independent contractor, in the course of providing the relevant services, as service inventions and conferring the ownership rights therein on the company ordering the work.

The assignment of ownership rights in patents or inventions may be done in writing or according by virtue of law. The assignment agreement must be recorded with the ILPO. A joint owner may assign his or her rights without the consent of the co-owners, unless agreed otherwise and subject to the co-ownership agreement having been recorded with the ILPO.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

Patent applications are filed with the Israel Patent Office (ILPO). According to the annual report published by the ILPO for 2019 (the Annual Report), after the patent application is filed, it usually takes a few years (roughly 24 to 35 months) until examination commences. The actual examination period has significantly shortened over the years, and, according to the Annual Report, varies between 13 and 22 months on average (depending on the field of the invention). The costs for obtaining a patent may range between US$3,000 and US$9,000 (depending on the professional fees and the complexity of the matter).

The above time frames and costs do not take into account the length of time for conducting opposition proceedings as well as the associated costs, which can be substantial.

Are there any procedures to expedite patent prosecution?

It is possible to request abbreviated examination, eg, based on a corresponding foreign patent granted in certain jurisdictions (eg, the European Patent Office or the US Patent Office). Several bilateral Patent Prosecution Highway (PPH) and PCT-PPH agreements with different national offices were signed by the ILPO, which permit usage, under certain circumstances, of the search and examination results maintained by such offices.

In addition, expedited examination may be sought, for example, on the basis of the age or medical condition of the applicant or inventor, the public good or if there are other reasons justifying it. A third party may also request expedited examination under certain circumstances.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The specification of a patent application must include the title of the invention, enabling its identification; an introduction explaining the designation of the invention together with a concise description of the state of the art in the professional field of the invention; and a description (with drawings) of the manner in which the invention can be performed, enabling a person skilled in the art to perform it.

Must an inventor disclose prior art to the patent office examiner?

The patent applicant is under a duty to act in good faith and thus must provide the ILPO with full disclosure. Specifically, the patent applicant must provide the examiner with a list of references relied upon by patent offices in other jurisdictions during the examination of corresponding patent applications, as well as a list of publications known to the applicant that were published prior to the application date and directly relate to the invention. The applicant may be required to supply additional information upon the examiner’s request. In addition, until the patent is permitted, the applicant must keep the ILPO informed of any changes in such a list of references upon becoming aware thereof.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

A patent applicant may file a divisional patent application, which should be filed prior to allowance (or otherwise abandonment or refusal) of the original patent application, and claim the same priority date as the original application. In addition, an owner of a second invention, which constitutes an improvement or modification of an invention for which a patent has already been granted (the main patent), may request that a patent for the second invention be granted as a patent of addition (provided that the application for a patent of addition was filed after the filing of the application for the main patent). The second invention need not involve inventive step beyond the invention covered under the main patent. The patent of addition remains in effect for so long as the main patent is in effect, and may remain in force even after its revocation.

Is it possible to appeal an adverse decision by the patent office in a court of law?

The district courts of Jerusalem and Tel Aviv hear appeals on decisions given by the Registrar of Patents (the Registrar) (eg, decisions in opposition and revocation proceedings). Appeals may be filed either by way of right (where the decision of the Registrar concludes the dispute brought before him or her) or by requesting special leave with respect to other decisions (eg, decisions in interim proceedings).

In addition, it is possible to object to any decision or conduct of an examiner and request that the matter be brought before the Registrar. The Registrar’s decision in this regard can similarly be appealed to the district court.

Does the patent office provide any mechanism for opposing the grant of a patent?

The existence of a pre-grant opposition regime in Israel permits anyone to challenge grant of the requested patent by filing an opposition to a patent application within three months of publication of its allowance. Opposition proceedings comprise the following stages: the submission of statements of arguments by both the opponent and the applicant, the submission of evidence (usually in the form of written affidavits and expert opinions), holding a cross-examination hearing and the submission of summations (which are usually submitted in writing, but in some cases are presented orally). The burden to prove the validity of the patent during opposition proceedings rests upon the patent applicant.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

In cases where more than one applicant is seeking patent protection for the same invention, the patent shall be granted to the applicant who is ‘first to file’. In addition, it is possible to oppose a patent application, or request the revocation of a patent, on the ground that the opponent or revocation applicant is the true owner of the invention and not the patent applicant or owner of the patent on record.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

Once examined and accepted, the Registrar (or, the court in a case before him or her) may permit an amendment of the claims of the patent application or patent only for clarification purposes; for correcting an error in the specification; or for restricting the claims. The amendment may be allowed only if it does not broaden the scope of the claims or add anything to the specification that was not already included from the outset. In addition, an amendment may be allowed or ordered upon conclusion of the proceedings by the Registrar or the court to ensure that the true invention as claimed in the patent (or patent application) is duly protected. 

Revocation proceedings are available and may be initiated by any person, at any time while the patent is in force. Revocation proceedings are conducted before the Registrar and are essentially similar to opposition proceedings, except that in the former case, the parties are required to submit their arguments together with supporting evidence (usually by way of affidavits and expert opinions). In addition, the burden of proof in revocation proceedings lies with the revocation applicant.

Re-examination proceedings are not available in Israel.

How is the duration of patent protection determined?

Patents in Israel are granted for a period of 20 years from the date of filing. Patent term extension may be granted to patents protecting either a pharmaceutical product, a substance (being an active ingredient in a pharmaceutical product), a process for the manufacture or use of such product or substance, or a medical device for which marketing authorisation is required in Israel.

Law stated date

Give the date on which the information above is accurate.

1 January 2021.