effective and efficient search and examination of patent applications in small and medium size ip...

Effective and Efficient Effective and Efficient Search and Examination of Search and Examination of

Patent Applications in Small Patent Applications in Small and Medium Size IP Offices and Medium Size IP Offices

Presenting: Dr. Meir Noam Commissioner of Patents Trademarks and Designs

Head of the Israeli Patent Authority

The State of IsraelMinistry of Justice

Israeli Patent Authority

Second Global Symposium of IP AuthoritiesSecond Global Symposium of IP Authorities

Search & Examination of Patent Applications

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NUMBER OF PATENT APPLICATIONS IN ISRAEL OVER THE LAST DECADE

0

1000

2000

3000

4000

5000

6000

7000

8000

9000

YEAR

APPLICATIONS 2886 5056 5957 6802 6769 6308 5898 6414 6842 7426 7989 7704 6900

1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009

Almost 100 examiners in all technological fields

More than 7000 patent applications per year, 75% of which are PCT national phase applications

Israeli patent law mandates substantive examination of applications Enormous workload

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The Israeli Patent Authority was approved as an ISA/IPEA on Sept. 2009

greater workload

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Israeli Patent Law 1967Israeli Patent Law 1967 Article Article 18 (“Due Diligence”):18 (“Due Diligence”):

access to work done by other IP officesaccess to work done by other IP offices

““The examiner shall use at least one of the following additional means of examination:

(1) the list of documents used by patent authorities in any foreign state in the examination of a patent application on the same patent application, submitted in a foreign country by the applicant or by his predecessor in title to the invention;

(2) a list of documents published before the application date, known to the applicant and directly connected with the invention;”

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Israeli Patent Law 1967Israeli Patent Law 1967 Article 18(5) Article 18(5)

(“Cooperation with Foreign IP Offices”):(“Cooperation with Foreign IP Offices”):

““TTransmission of the specifications of the application-in order to search for material that will enable the Office make the examination to an institution in Israel or abroad, with which the Office contracted under any Law by an agreement drawn up by the Registrar, including a section on keeping any patent application confidential and on nondisclosure under section 165; “

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SUGGESTION

Creation of a source containing all pertinent

prior art documentation cited by different IP

offices against the same application, along with

search & examination reports

Such a source will be accessible to all IP

offices, free of charge


Search Resources

Prior Art Databases (STN, THOMSON Innovation, Derwent, PatentScope, Google, Esp@cenet, SCIRUS, Chemical Spider, Pubmed (BLAST)).

Cooperation with IP Offices (EPO – Epoque).

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Israeli Patent Law 1967Israeli Patent Law 1967 Article 17(c)Article 17(c)

“If the conditions specified below are met by an application, then it shall be deemed to have complied with the provisions of section 4 (novelty), 5 (inventive step), 8 (unity of invention), 12 (specification) and 13 (claims):(a) a patent in a country from the list(b) a priority claim(c) applicant request in writing(d) identical claims

(e) identical description and drawings or according to Israeli Law.”

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Israeli Patents Law 1967 –Israeli Patents Law 1967 – Article 17(c)Article 17(c)

List of the Countries:

Austria , Australia , USA,

UK Germany Denmark, Russian Federation , Japan EPO

Norway Canada Sweden

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Israeli Patent Law 1967 -Israeli Patent Law 1967 - Article Article 17(d)17(d)

Discretion of the Israeli Patent Authority:“The Registrar and also the Superintendent of Examiners or his deputy may refrain from accepting an application, if they determined on the basis of the material at their disposal or submitted to them in the course of the examination that the application does not comply with one of the provisions specified in subsection (c) or that there is some other special reason why the application should not be accepted"

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Circular MN. 70 regarding modified Circular MN. 70 regarding modified examination based on foreign patents examination based on foreign patents (expansion of 17(c)):(expansion of 17(c)):

“1. An application containing claims pertaining to methods of therapeutic treatment on the human body accepted in another country and rephrased, by examiner's request, to comply with the definitions of use claims, is deemed applicable to the present circular, as long as said application adheres to the remaining terms set forth in the present circular, (identical to 17(c)).

2. When the Israeli a application and the foreign patent are both national phase applications of the same PCT application, the Israeli application is entitled to a modified examination according to the circular if the other terms of 17(c) are met.”

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Circular MN. 71 regarding modified Circular MN. 71 regarding modified examination based on a Favourable Search examination based on a Favourable Search Report and Written Opinion or a Favourable Report and Written Opinion or a Favourable Preliminary Examination Report:Preliminary Examination Report:

“An application having met all the conditions specified below shall be deemed to have complied with the provisions of sections 4 (novelty), 5 (inventive step) and 8 (unity of invention) of the Israeli Patent Law 1967:

(a) National phase application in Israel or an Israeli application and later submitted through the PCT ;(b) Favourable International Search and Examination report (novelty, inventive step, and unity of invention);(c) applicant request in writing;(d) identical claims.”

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HOWEVER:

Modified examinations in accordance with

section 17(c), as well as Commissioner’s

Circulars M.N. 70 and M.N. 71 are requested for

less than 20% of all applications submitted.

Our applicants require substantive examinations.


Israel excels in hi-tech and biotech

The ILPO has very experienced specialist teams in these fields

This expertise is available for contracting search and

examination services in accordance with international standards, to other IP offices

The ILPO provides training in these fields to officials

from other IP offices

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effective and efficient search and examination of patent applications in small and medium size ip...

Documents

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search examination reports

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efficient search

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