What is the difference between a patent attorney and a lawyer?
In Israel, patent attorneys are not necessarily lawyers.
Israeli patent attorneys must be registered in the Register of Patent Attorneys and hold a patent attorney licence. To qualify for this, a patent attorney must:
- be an Israeli citizen;
- be registered as an engineer in the Register of Engineers and Architects (under the Engineers and Architects Law 5718–1958) or have graduated from a higher education institution in one of the following fields:
- engineering;
- chemistry;
- physics;
- biology;
- pharmaceutical science; or
- computer science;
- complete at least two years of qualifying service in Israel, in either an experienced patent attorney's office or an industrial enterprise's patent department; and
- pass the Israeli Patent Bar exams (unless they are exempt).
Patent attorneys must maintain their licence by paying an annual fee.
Accordingly, a patent attorney's legal education is primarily limited to the practical study of the Patents Law 5727–1967 and other laws relating to intellectual property during their qualifying service period. They are examined on these laws before being granted a licence.
Patent attorneys may:
- carry out paid work in Israel relating to patent, design and trademark applications;
- prepare documents which are to be filed with:
- the Registrar of Patents;
- the Patent Office; or
- an authority that protects intellectual property in another country; and
- represent clients and handle proceedings before the Registrar of Patents or the Patent Office.
Patent attorneys may also, subject to the court's permission, argue before the court on behalf of a party in proceedings under the Patents Law in any matter relating to an invention or patent which is not a point of law, provided that the party's lawyer is present.
Lawyers are members of the Israeli Bar Association and therefore have exclusive rights to:
- deal with legal proceedings;
- opine on matters of law; and
- represent parties before the court and official authorities (eg, the Patent Office).
Therefore, lawyers may perform the same services as a patent attorney. They may also handle any legal proceedings, including litigation relating to intellectual property and related agreements. Lawyers may have technical knowledge in the particular field of an invention, but this is not required by law and lawyers can represent applicants before the Registrar of Patents regardless of their technical background. Accordingly, in proceedings relating to patents, a lawyer normally works alongside a patent attorney who is knowledgeable in the invention's technological field.
What is the process for filing a patent application in Israel?
To apply for a patent in Israel, applicants must prepare a patent application (drafted in accordance with the Patents Law) and file it with the Registrar of Patents, along with the required fees.
The inventor (or the invention's owner) may draft and file an application on its own behalf. Acting independently may initially save costs. However, applicants may lack knowledge about patent law and practice and professional expertise in drafting patent applications that provide a meaningful description and scope of protection.
Alternatively, applicants may employ a patent attorney, who will have experience and expertise in drafting applications and be able to decide on the most appropriate time to file an application and what should be included therein.
Which rights are conferred by filing a patent application in Israel?
If a patent is granted, the patentee may prevent others from exploiting the invention (with several exceptions, as detailed in the Patents Law).
Applicants may not sue potential infringers until after a patent is granted. Even then, it may be possible to collect damages only for infringing activities which occurred after the publication of the patent application's acceptance.
Until a patent has been registered, applicants are advised to mark their products as 'patent pending', which may act as a warning to competitors.
In which languages can parties file patent applications?
Parties may file patent applications in:
- Hebrew;
- Arabic; or
- English.
Most applications are filed in English to save on translation costs when filing in other jurisdictions. In many other countries, it is mandatory to translate patent applications to the local language.
What is the novelty requirement in Israel?
The Patents Law states that an invention is deemed new if it has not been published, either in Israel or abroad, before the application date. Such publication may be written, visual or audible, comprise any other description of the invention, or result from the invention's exploitation or exhibition. A prior publication is considered as such if it enables a person skilled in the art to reproduce or utilise the invention based on the description.
Accordingly, not every disclosure of a general nature that relates to the invention is considered a prior publication. However, applicants are recommended to think carefully before exposing their inventions to avoid such disclosure from being considered a prior publication.
Can inventions be protected without substantive examination?
In some countries, inventors or applicants may file for a utility model patent. Utility model patents provide shortened protection without examination, which makes them much quicker to register than patents for inventions. However, when a dispute associated with a utility model arises, the novelty and inventiveness requirements are examined.
In Israel, as well as in various other countries, there is no utility model protection.
However, an Israeli patent application may be examined through a modified examination procedure (ie, an examination under Section 17(c) of the Patents Law) based on a corresponding patent granted in another country. In a modified examination procedure, an Israeli patent may be granted based on the grant of a corresponding patent that has the same claims and has a shared priority application. The modified examination route is generally direct and entails no substantive examination. The patent examiner typically verifies that there are no specific objections that were not considered in the examination of the granted foreign patent which may disqualify an application from the modified examination route.
Is it compulsory to prepare a prototype of an invention to obtain a patent?
For a patent to be granted, an invention must have utility (or be industrially applicable). This means that the invention should at least seem to be operating as described in the application, and thus be useful. However, applicants need not prepare a prototype to obtain a patent for most inventions. For inventions relating to biological materials, applicants may need to deposit a sample of the material in a recognised deposit institution.
Typically, during the processes of designing and constructing a prototype and research and development (R&D), the invention's details become clearer. These processes enable applicants to provide details of the invention in the patent application and change any necessary aspects of the product. Therefore, when a patent application is prepared alongside an R&D process, the invention may better cover the technology being developed and the applicant may be able to provide a more accurate description. This ensures that the actual product is duly described in the application and thus will eventually be well protected.
Is it possible to obtain a patent in Israel based on a counterpart patent in another country?
An Israeli patent application based on counterpart patents in other countries may be examined in two ways.
A modified examination under Section 17(c) of the Patents Law enables applicants to obtain an almost direct allowance, based on a patent granted in another country.
There are no deadlines for requesting a modified examination – applicants may apply at any time during the prosecution of an application, but should consider any office actions (ie, examination reports) that have already been issued against the application. If an applicant has requested a modified examination, it may revert to the regular (ie, non-modified) examination procedure at any time until the application is accepted.
The patent prosecution highway is an alternative route to achieve accelerated examination of a patent application based on a counterpart patent application in other country. It can be used where at least one claim in the counterpart application was allowed by a respective patent examiner. Israeli patent examiners may still conduct substantive examination, but the timeline is shorter, often resulting in expedited acceptance.
Is there a duty to disclose to the Patent Office any documents that are cited in patent applications for the same invention in other countries?
There is an obligation to update the Patent Office on any documents that are cited in applications which correspond to an application that is being examined in Israel. This obligation is applicable in Israel and the United States but does not apply to all countries. The applicant must also update the Patent Office concerning any known prior art that directly relates to the invention.
This obligation differs between patent and non-patent publications. For patent publications, there is generally no need to file copies of such documents, unless the examiner specifically requests them, or they have been cited in the other country as being of particular relevance to the invention (ie, they have been designated under category X or Y). However, when updating the Patent Office on relevant non-patent publications, applicants must submit copies of the documents. Patent examiners may request the submission of English translations if documents are in a language other than Hebrew or English.
Post-patent application acceptance
Can a party assign rights to a patent?
In Israel, patents are assets which parties can assign, both by agreement and by law (eg, as part of an inheritance).
Assignment of patent rights (or rights to an invention) must be made in writing. An assignment will have no effect on any third party unless it is registered in the Patents Register, as prescribed by law.
Patentees or patent application owners may also grant licences to exercise their inventions. A licence will similarly have no effect on any third party unless it is registered in the Patents Register, as prescribed by law.
Can patents be placed under a lien?
Yes, patents may be placed under a lien. Patentees may use the patent, any revenue gained from it, or both, as a guarantee. The lien must be made in writing.
According to Section 90 of the Patents Law, a lien on a patent will have no effect on other creditors, the patent holder, a liquidator, or a trustee (in case of bankruptcy) unless it has been registered in the Patents Register within 21 days of its creation.
The lien is subject to any other right in the patent that was granted before it was created and registered.
However, if the patent is part of a set of assets that are charged with a floating lien by a corporation, the floating lien need not be registered according to Section 90 of the Patents Law.
