Expediting Examination of PCT-Derived National Israeli Patent Applications

Summary of the Registrar of Patent's Circular No. 14(MN)

The purpose of this circular is to reduce the growing backlog in examination of patent applications. The Registrar notified that PCT-derived national Israeli applications for which an International Preliminary Examination Report (IPER) has been issued by the International Examining Authority (IEA), may be treated as follows:

1. If the IPER determines that there are novelty and inventive step in the claims, and provided that the claims on the Israeli file are identical with those examined by the IEA, applicant may request the Examiner to determine that the claims fulfill the requirements of Section 4 (novelty) and 5 (inventive step) of the Israel Patent Law ("the Law").

2. If the IPER determines that the claims define a single invention, and provided that the claims on the Israeli file are identical with those examined by the IEA, applicant may request the Examiner to determine that the claims fulfill the requirements of Section 8 of the Law (unity of the invention).

3. If the IPER determines that the description enables the man of skill in the art to carry out the invention, and provided that the description on the Israeli file is identical with that examined by the IEA, applicant may request the Examiner to determine that the description fulfills the requirements of Section 12 of the Law (sufficiency of disclosure).

4. If the IPER determines that the claims reasonably arise from the description, and provided that the claims on the Israeli file are identical with those examined by the IEA, applicant may request the Examiner to determine that the claims fulfill the requirements of Section 13 of the Law (support for the claims).

These instructions will be in force as of September 30, 2003.

General Remarks:
(a) These instructions are guidelines for Office Procedures and should be regarded as recommendations, and are not part of the Law or the Regulations.

(b) It is to be noted that according to the Circular, applicant "may" request that novelty, inventive step, etc. be recognized. This recommendation is not mandatory. Our recommendation is to do so only if a problem arises. Since the Examiner takes into account a favorable IPER anyway, there is no point in potentially weakening the presumption of validity of a resulting patent if no substantial objections are raised (see below).

(c) According to Section 17(a) of the Law, the application should be examined for novelty, inventive step and unity of invention, as well as sufficient disclosure and adequate support for the claims. These requirements appear not to be satisfied by the Registrar's present recommendations. Therefore, the validity of patents granted under this procedure may become questionable. No definite opinion can be given until the validity of patent granted under the proposed procedure has been tried in an Israeli court.

(d) With particular regard to unity of invention, according to Section 28 of the Law, the acceptance of the application will be considered a proof to the fact that it only contains a single invention. If no substantial examination of the application for unity is carried out, the proof of unity to be concluded from acceptance may also become questionable.

(e) We take this opportunity to inform that in a separate Circular, the Registrar notified that as from September 30, 2003, unity of invention will be examined in accordance with PCT Rule 13, also for applications that are not PCT-derived.