Contributed By Gilat, Bareket & Co., Reinhold Cohn Group
The Israeli legal system provides protection for inventions by way of patents and trade secrets. In addition, protection may also be provided by way of unjust enrichment (unfair competition).
Unlike some countries, there is no protection for utility models. Other forms of intellectual property (such as copyright, layout/design (topography) of integrated circuits, trade marks, industrial designs, plant breeders' rights) exist.
Since the Israeli legal system is a common law system, intellectual property law is primarily governed by legislation and regulations therein, and by case law laid down by the courts.
Patent applications are filed with the Israeli Patent Office (ILPTO). The requirements of patentability are set forth in the Patents Act and are clarified in court judgments and in the Practice Guidelines for Patent Examination, published by the ILPTO.
After filing the patent application, it usually takes a few years until examination commences. There is no need to request examination. Under certain circumstances, the applicant may request an expedited examination (eg, in cases of elderly inventors, 'green applications', or where a third party began exploiting the invention).
A third party may also submit a request for an expedited examination, accompanied by an affidavit, in the following circumstances:
Companies may use this option against competitors and to reduce the period of uncertainty in the market.
There are also modified examinations, whereby a patent is granted based on a corresponding foreign patent, without undergoing substantive examination in Israel. Patent Prosecution Highway examination is also available for some countries.
Shortly after a local application is filed, the Registrar of Patents will publish the name of the applicant, the application date and information regarding priority (if claimed).
The patent application remains confidential for 18 months from the date of filing or, if priority is claimed, 18 months from the date of the earliest priority document. Shortly after the expiry of the 18 months, the fact that the application is laid open for inspection is published again by the Registrar of Patents. Until 2012, patent applications would have remained confidential until acceptance of the application (see below) by the Patent Office.
International (PCT) applications are also published under the same principles, but since these applications are usually filed shortly before the 30-month deadline for filing the national phase expires, they become available to the public shortly after filing.
Third party observations may also be submitted; see 1.7 Third-Party Rights to Participate in Grant Proceedings.
After the examination is concluded and the patent examiner accepts the application, the acceptance of the application is published online.
During a period of three months following such publication, third parties may lodge a pre-grant opposition to the grant of the patent. If no opposition is filed during this period, the patent is granted, and a patent certificate will be issued. If an opposition is filed, the Patent will be granted only after the opposition is dismissed and if appealed, after the appeal is dismissed).
Representation is not mandatory, but highly recommended.
The period varies significantly between different technological fields. The period also changes over time (in recent years examination has been shortened in duration due to an increase in the number of patent examiners).
Based on the ILPTO Annual Report of 2017, the average prosecution period has shortened in the last few years. According to the Patent Office, this is due to re-organisation and more efficient examination procedures. Their report shows that recent prosecutions have lasted (in months):
For the national phase in Israel, from filing to grant, including professional fees and official fees (also varies between technological fields and the amount of work required from the local patent attorney):
Please note that the duration and average costs relate only to the examination period and do not include opposition proceedings, which can significantly increase the cost and duration until the grant of the patent.
Patents are granted for a period of 20 years from the date of the application.
It is possible to obtain a Patent Term Extension (PTE) for up to five years for applications dealing with medicines, certain medical devices and veterinary products registered with the Ministry of Health. PTEs are not available for agrochemical inventions.
A successful patentee in an infringement action is entitled to the remedies prescribed in the Patents Act, namely an injunction and damages, plus any other remedy the court may determine.
When ruling on damages, the court may take into consideration the acts of the infringer, the scale and magnitude of the infringing acts, profits made by the infringer, reasonable royalties that the infringer had to pay, if he or she was given a licence to exploit the patent. The foregoing list is not exhaustive.
The court may also rule for punitive damages for an amount that does not exceed the actual damages ruled (namely, double damages) where the infringement was committed after the patentee or the exclusive licence owner warned the infringer prior to the infringing act. As such, under some circumstances it is advisable to send warning letters to the alleged infringer prior to filing a suit.
As to the obligations of the patentee, he or she has to pay renewal fees only after the patent is granted. The fees payable and the periods of renewal are as follows:
It is also possible to pay the renewal fees in advance for the entire 20-year period with a slightly cumulative discount (USD3,325).
Note: All official fees are charged in Israeli new shekels (ILS). USD rates appearing in this review are approximate and calculated based on an exchange rate of ILS3.68 to USD1. Thus, adjustments may need to be made to reflect currency fluctuations. In addition, these fees are linked to the consumer price index.
As noted above, it is possible to receive a PTE (see Patents Act, Section 64D) for up to five years for applications dealing with medicines and medical devices. There is no PTE for agrochemical inventions. The PTE Order must be granted before the basic patent lapses.
Third parties may participate during grant procedures via the following procedures:
The grounds for filing an opposition include:
The patentee may apply for an amendment during revocation proceedings only for the purpose of clarification, removing an error in the specification, or restricting the claims. The Registrar will permit the amendment if he is convinced that the amendment will not broaden the scope of the claims and will not add anything to the specification not already included from the start.
Lastly, it is always possible to challenge the validity of the patent as a defence during an infringement trial.
Patent examiner decisions, including a decision not to grant a patent, are subject to an administrative appeal before the Registrar of Patents. The applicant may appeal the Registrar's final decision to the district court. The judgment of the district court sitting as a court of appeal may be appealed to the Supreme Court only with leave.
There is a six-month grace period for the payment of renewal fees. The fee is approximately USD60 for each month the patent renewal fee was not paid (plus the regular renewal fee as detailed above). If all fees are paid during the grace period, the patent is deemed to have never lapsed.
After this grace period, it is still possible to restore the patent, but it would require filing an appropriate application, supported by affidavit (and payment of additional fees of approximately USD200) and it is at the Patent Registrar's discretion whether to allow for the restoration of the patent.
To succeed with restoration, the Registrar must be convinced that the renewal fee was not paid due to reasonable cause and that the patentee did not wish the patent to lapse. The patentee must have asked for the restoration as soon as possible after the patentee (or the one responsible on his or her behalf) learned that the renewal fees had not been timely paid.
If the Registrar of Patents accepts the application for restoration, it will be published for a three-month pre-grant opposition period. Anyone may oppose the application for restoration within three months of the application being published, on the grounds that the Registrar had no basis for allowing the restoration of the application.
If no opposition is filed (or if the opposition filed was dismissed), the Registrar will order restoration, but it may make the restoration subject to conditions.
Prior user rights: anyone who began exploiting the invention after publication of expiry of the patent due to non-payment (namely, after the six-month grace period) shall be entitled to continue to exploit the invention only for the sake of his/her own business, even after the patent is restored. This right cannot be transferred, except together with the business in which that invention was used.