Patent registration in Israel is a great tool for companies and individual inventors and entrepreneurs to protect their intellectual property in Israel (when applicable of course). Here are the main key points you need to know before making a decision on whether or not filing for a patent in Israel- and the advantages of doing so!
Israeli patent requirements
The requirements for the patent registration in Israel are the same as they are in most countries, meaning that in addition to the payment of necessary official fees, an invention is eligible to be registered as a patent in Israel whether it is a product or a process in any technological field, that is new, useful, can be used industrially and has an inventive step when considering the prior art.
Certain inventions cannot be registered in Israel as patent even if they do meet the above detailed requirements. These inventions include
• A process for medical treatment of the human body;
• New species of plants or animals, other than micro-biological organisms not produced from nature. (new species of plants can receive IP protection in Israel by using the Israeli Plant Breeders' Rights law. For more info please contact us here)
Advantages of registering patents in Israel
Patent registration in Israel has several advantages. Israeli tech is considered to be one of the world's most advanced tech industries in many fields e.g. Ag-tech, Foodtech, Artificial Intelligence (AI) and Machine Learning (ML), Medical Devices, Cybersecurity and many more.
Registering a patent in Israel can be used to block a 3rd party from exploiting your invention within Israel.
The overall cost of patent registration in Israel is relatively very cost affective.
The unique advantage of patent registration in Israel
If choosing to make the first filing in Israel, one can utilize a unique advantage to reduce risk and make your money smarter when looking at the patent registration process worldwide as a whole (meaning in several countries that are relevant for your invention of course).
In Israel, it is possible to file a request for an expedited examination of the patent application. This procedure has an added cost of approx. $500 USD (including official fee of 1030 NIS). However, having done that with your initial filing of the patent application in Israel, you will receive a first Office Action (an examination report issued by the Israeli patent examiner) after 3-4 months. This will enable you to know way better what your chances are in succeeding in registering the patent in other countries well before having to actually file the various patent application in various countries. This knowledge saves a lot of funds, more so in case the examiner finds prior publications that invalidate the patentability of the patent application.
Additionally, in case the prosecution process in Israel has been successful and the patent has been registered, the applicant will be eligible to accelerate the prosecution process in various other countries, including the U.S, using the PPH (Patent Prosecution Highway) program.
Cost of Israeli patent registration
Patent registration in Israel is relatively low cost. The official fees for filing the application are 2077 NIS and in most cases, the applicant (assuming not being a large corp.) is eligible for a 40% reduced fee which results in 1,246 NIS. Overall, the patent fees in Israel are low cost, whether is the acceptance fee, extension fees and others.
The professional costs of drafting and filing of responses to the patent examiner vary between firms. As a rule of thumb, it can be said that the cost of registering a patent in Israel ranges between $11,000 and up to $25,000, depending on the amount of examination reports and the specific provider of the patent registration service.
Israeli patent registration process
Similarly to most countries, the start of the patent registration in Israel can be made through 3 ways:
a. As a direct national phase application (following a Paris convention application).
b. Following a PCT application.
c. Direct initial filing.
After submitting the application, the application will go through a technical examination and a substantive examination thereafter. To each official examination report issued by the patent examiner it is possible to respond within 4 months without having to file or pay any extension fees. Once being approved by the patent examiner, the patent applications are being published for public oppositions for a period of 3 months.
After the opposition period ends, the application is registered and published as a patent.
The patent term in Israel is 20 years from the date of the application.
Opposing patent in Israel has a highly untapped potential.
Patent opposition in Israel
Statistically, although this procedure is rarely used- it is quite an effective tool in the commercial aspect. A study made by the ILPTO several years ago (published on Jan 2017) which studied the oppositions that were closed in Israel in 2013-2015 found that only 9% of oppositions were heard in full (meaning that the parties continued the litigation until receiving a final judiciary decision).
However, out of those 9%- around 80% (!!) of the oppositions were accepted ((in part or in full, which caused a respective refusal of the patent applications).
As can be seen in the below graph, most times (60%) the results are the abandonment of the opposition- it is unknown how many of those opposition abandonments are due to internal negotiations between the respective parties but one should assume that this number is not insignificant.
In 30% of cases, the opposition resulted in the abandonment of the patent application.
The remaining cases are those that represent oppositions that were heard in full and reached a judiciary decision- here the statistics in overwhelmingly in favor of the opposition.
It is also worth mentioning that the length of the litigation in this area of patent opposition in Israel is quite long. Several years long.
The fact that the patent is not granted as long as the opposition process is not over (including the appeal if submitted), causes the patent to be being delayed from its registration and enforceability for a significant time.
The obvious conclusion of the aforementioned is that filing a patent opposition in Israel can be a useful tool for companies that wish to stop a patent registration filed by their respective competitor.
The author is Omri Segal, an Israeli intellectual property attorney.
Nothing in this Article constitutes a legal advice, guidance, or opinion on the subject, and is provided as a customer service for general information only and not for any other purpose. For any specific issue, please contact our firm.