Last Updated October 14, 2019

Law and Practice

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Gilat, Bareket & Co., Reinhold Cohn Group is the leading intellectual property consulting firm in Israel and offers a broad range of related services and expertise, including protection, asset management, due diligence, litigation and legal services. The firm operates in all areas of IP, such as patents, trade marks, designs, copyrights, open source, plant breeders' rights, etc. The group includes the patent attorneys firm Reinhold Cohn & Partners and the law firm Gilat, Bareket & Co., which specialises in litigation and the legal protection of intellectual property rights in patents, technology, brands, designs, creative works and inventions. Gilat, Bareket & Co. employs 24 attorneys at law, several of whom also hold academic degrees in sciences. Key practice areas include filing suits for patent infringement in courts, representing clients before the Patents Registrar, rendering opinions regarding infringement and freedom to operate, and counselling on service intentions. The author would like to thank Keren Lindenfeld and Tomer Rosenfeld, present and past associate attorneys of Gilat, Bareket & Co., Reinhold Cohn Group, for their assistance.

Third parties may participate during grant procedures via the following procedures: 

  • Opposition: after the examination procedure has been concluded, the acceptance of the application is published in the Official Monthly Gazette (available online). Any third party can oppose the patent’s grant within three months from the date of publication.

The grounds for filing an opposition include:

    1. there is reason for which the Patent Registrar was authorised not to accept the application;
    2. the application does not withstand the requirement set forth in section 4(2) (ie, novelty by public use, which the Patent Office is not required to examine); or
    3. if the opponent is the true owner of the invention rather than the applicant.

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.

  • Post-grant revocation (cancellation): any person may file an application to revoke a granted patent with the Patent Office, without need to show locus standi. An application for revocation may be filed at any time and the statute of limitation does not apply. The grounds for filing a revocation application are identical to the grounds for filing a pre-grant opposition. The Registrar may accept the application (and revoke the patent), deny the application or accept the application partially (eg, by deleting/narrowing some of the claims).
  • Third party observations: according to the statutory provisions of the Patents Act, during the course of examination any third party is entitled to submit copies of relevant prior art publications to the PTO. The examiner may use them during the examination as long as they were sent within two months from the due date for the applicant's response to the request under section 18 (demand to send any cited publications and other pertinent prior art publications known to the applicant).
  • Third party request to initiate examination: in addition, third parties are allowed to file an application, supported by an affidavit, for immediate examination, for one of the following reasons:
    1. there is reason to believe that examination based on the order in which the applications were filed will cause the applicant (of the request for immediate examination) to postpone the development/manufacture of the process/product that is claimed in the patent application;
    2. the amount of time that has passed from the date the application was filed is unreasonably long and is significantly longer than any other application of the same kind; public interest or any other special circumstances.

Lastly, it is always possible to challenge the validity of the patent as a defence during an infringement trial.

Gilat, Bareket & Co., Reinhold Cohn Group

26A Habarzel Street
PO Box 13136
Tel-Aviv
Israel
6113101

+972 3 567 2000

+972 3 567 2030

info@gilatadv.co.il www.rcip.co.il/en/gilat-bareket/
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Author



Gilat, Bareket & Co., Reinhold Cohn Group is the leading intellectual property consulting firm in Israel and offers a broad range of related services and expertise, including protection, asset management, due diligence, litigation and legal services. The firm operates in all areas of IP, such as patents, trade marks, designs, copyrights, open source, plant breeders' rights, etc. The group includes the patent attorneys firm Reinhold Cohn & Partners and the law firm Gilat, Bareket & Co., which specialises in litigation and the legal protection of intellectual property rights in patents, technology, brands, designs, creative works and inventions. Gilat, Bareket & Co. employs 24 attorneys at law, several of whom also hold academic degrees in sciences. Key practice areas include filing suits for patent infringement in courts, representing clients before the Patents Registrar, rendering opinions regarding infringement and freedom to operate, and counselling on service intentions. The author would like to thank Keren Lindenfeld and Tomer Rosenfeld, present and past associate attorneys of Gilat, Bareket & Co., Reinhold Cohn Group, for their assistance.

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