IP-ISRAEL NEWSLETTER 2009 3RD QUARTER

 

Dear All,

First and foremost, we would like to wish all our colleagues, friends, clients and associates a Happy, healthy and peaceful New Year.

 

IP News items

  1. PATENTABILITY OF COMPUTER-BASED INVENTIONS IN ISRAEL AND EUROPE

 In June 2009, a seminar was provided by Patent Examiners from the European Patent Office and the Israel Patent Office relating to patentability of computer-related inventions.  Both in Europe and in Israel business methods and computer programs, as such, are not patentable.

The European examiners emphasized the requirements for a technical effect of the software in method claims and a technological feature of a product, beyond a simple computer system. Only a few percent of computer-related patent applications issue as patents in Europe, whereas roughly a third of all applications filed in other fields issue as patents.  

In Israel, a patent may be obtained for “An invention, whether a product or a process, in any technological field, which is new, useful and can be used industrially, and which involves an inventive step, is a patentable invention”. Computer programs can be patented as part of a computerized “hybrid” system, provided that the system falls within “any technological field” and the hybrid system falls largely within an eligible field of patentabilty.

Copies of the presentations can be downloaded from the following link: http://www.justice.gov.il/NR/exeres/992486AA-0744-4B3B-9EA8-5FF410F3234D.htmL

 

  1. ONLINE DATABASE AT THE ISRAEL PATENT OFFICE

Recently, the Israel Patent Office has provided a website for searching Israel Patent Applications online.
The link to the English website is: http://www.ilpatsearch.justice.gov.il/UI/mainPage.aspx
The link to the Hebrew website is: http://www.ilpatsearch.justice.gov.il/UI/mainPage.aspx

 

  1. HIGHLIGHTS OF RECENT DECISIONS/CIRCULARS OF THE ISRAEL PATENT REGISTRAR

http://www.justice.gov.il/MOJHeb/RashamHaptentim/MeidaKlali/HozreiRasham/

Circular 73 (July 2009).      Filing of an Application Abstract upon Acceptance of the patent application
Previously, in accordance with Section 26 of the Israel Patents Law, upon acceptance of an Israel patent application, a notice of acceptance was published (in the Official “Yoman Hapatentim”) including a description of the main features of the invention. The Office typically published a copy of the first claim and first figure, provided that the Examiner considered these to truly represent the invention.
This procedure was costly, slow, time-consuming and often delayed publication of the acceptance.

  1. The Registrar has therefore decided that for national phase applications based on PCT patent applications, the abstract of the PCT application will be used, except for divisional applications or cases in which the Examiner does not consider the abstract to be a true representation of the invention.
  2. For Israel patent applications (all other applications, which are not National Phase applications of the PCT applications), in a notification before acceptance, the Examiner will define the text and figure/drawing(s) which he/she considers to be the most pertinent. The applicant will then provide electronic copies thereof by email or by CD to the patent office within the required timeframe.

August 2009 Decision concerning late filing of National Phase patent application of PCT application in Israel (Israel Patent Application No. 187147 )

http://www.justice.gov.il/MOJHeb/RashamHaptentim/MeidaKlali/HachlatotRasham/HanhayotBeinyaneiPatentim-new/

As is known most countries, including Israel, require the national phase application to be filed within 30 months of the first priority date. Some jurisdictions, such as Europe and Iceland allow filing within 31 months of the first priority date.
In this case, the applicant thought that one could file the Israel national phase in the 31st month and the foreign associate did not pick up on this error in time, i.e., that the 30 month deadline had passed.
The Registrar’s decision to refuse the request for admitting this application is that neither the Applicant nor his representative bothered to check the requirements for filing in Israel, working days and hours of the Israel Patent Office and therefore did not take the required due care, as is required by the law.
Conclusions

  1. always check the requirements at the Israel Patent Office; http://www.justice.gov.il/MOJEng/RashamPatentim/GeneralInformation/
  2. Check the working days (Sunday- Thursday) and office hours (8:30-13:30pm) of the Israel Patent Office 972-2-5651666/ 02-5651666
  3. Do not confuse the PCT symbol for Iceland [IS] with the symbol for Israel (IL)

Comments

  1. A non-Hebrew speaking person who phones the Israel Patent Office will not understand the recorded message of the opening hours or directory. There is no English menu.
  2. The English version of the Israel Patent Office website is not very user-friendly. The working hours and days of the office do not appear at the Israel Patent Office English website.
  3. The requirement to file national phase patent applications of the PCT by the 30th month in Israel does not appear on either the English or Hebrew version of the website, nor explicitly in the Israel Patents Law, but can easily be found by Google search at the following link: http://www.wipo.int/pct/guide/en/gdvol2/annexes/il.pdf
  4. Since there is a requirement for a non-Israel resident to be represented by a registered Israel attorney or patent attorney, the applicant should have contacted his Israel representative long before the 30 month deadline.