New Procedures for Prosecuting Israel Patent Applications

The Israel patent office has issued new procedures for patent prosecution. Notice Prior to Examination In response to the Notice Prior to Examination, applicants are required to provide a list of relevant prior art including details of citations in corresponding applications in other jurisdictions. Non-patent literature should be supplied in full. Patents cited in the […]

The Israel patent office has issued new procedures for patent prosecution.

Notice Prior to Examination

In response to the Notice Prior to Examination, applicants are required to provide a list of relevant prior art including details of citations in corresponding applications in other jurisdictions. Non-patent literature should be supplied in full. Patents cited in the background of the specification do not need to be listed again.

Applicants are also required to provide a full list of corresponding patents and applications in other jurisdictions.

Where there are more than 50 claims, the claim set must be amended or excess claim fees must be paid.

Finally, the first publication of the invention must be reported and failure to do so will be considered as a requirement not met and may invalidate the patent.

Amendments

It is now no longer necessary to submit marked up and clean copies of amended pages during prosecution. Claim amendments should be made by submitting a full set of marked up claims, whereas only amended pages to the specification need be submitted. These amended pages should be marked as {application number}/2, {application number}/3, etc.

On allowance, a complete, clean copy of the patent as allowed should be submitted together with the issue fees.

Comment of the author

I see the logic and approve of the new procedure for making amendments.
Apparently, the new procedures follow a meeting with representatives of the professional organizations. The head of the association of patent attorneys, Dr Meir Noam, is the previous commissioner and does not practice opposite the patent office and hasn’t done so for about a decade. The head of the AIPPI Israel Chapter is a litigator. I therefore wonder to what extent the changes take into account the professionals that prosecute opposite the patent office.

 
michael-factor-photoAuthor: Dr Michael Factor, Patent and Trademark Attorney
IP FA©TOR – Israel’s International Patent and Trademark Attorneys
Israel
http://blog.ipfactor.co.il

    • January 2019
      Mon Tue Wed Thu Fri Sat Sun
      « Dec    
       123456
      78910111213
      14151617181920
      21222324252627
      28293031  
  • IP4all Weekly Bulletin

    You can subscribe to the weekly IP4ALL Bulletin.

  • Recommended videoView all | 

    The new EU trade mark Regulation enters into force on March 23rd. As a result, the Office for Harmonization in the Internal Market (OHIM) will change its name to the European Intellectual Property Office (EUIPO).

    The amending Regulation also revises the fees payable to the Office, including an overall reduction in their amounts, particularly in the case of trade mark renewal fees. On 23.3. 2016, the Office’s online application forms and fee calculator will be automatically updated to reflect the new system.
    From its base in Alicante, Spain, OHIM has processed more than 1.3 million Community trade mark applications in 23 EU languages, from nearly every country and region in the world, since 1996.

    The Amending Regulation was published on 24 December 2015 and is part of the EU trade mark reform legislative package that also includes the replacement of the existing EU Trade Mark Directive (Directive 2008/95/EC of the European Parliament and the Council).

    OHIM is the EU’s largest decentralised agency. It is entirely self-financed, receiving no funding from the EU Budget. As well as managing the Community trade mark and the registered Community design (RCD), it works in collaboration with the EU national and regional IP offices to build a stronger IP system across the EU for the benefit of users.

  • IP Consulting Ltd. - Intellectual Property Consulting Agency
  • Landmark-TP
  • Ivan Georgiev - Rembrand
  • Global IP Attorneys - The world's leading address guide for patent,  trademark, copyright, intellectual property and IP attorneys. In just a few steps you can find your agency for registration and protection of your intellectual property, patent, design, copyright or trademark.
  • The Professional Sector Network is a referral and networking group that caters exclusively to leading firms with a history of excellence in the business, advisory and investment sectors.
  • IP Basis®

  • IP Guide®

  • Become our partners