Blogging on IP – List of posts by date
March 2014 – Mechanics, Physics and Medical devices – ILPTO Workshop at Jerusalem, written by Rodik Ulman
February 2014 – Computers and Communication Systems – ILPTO Workshop at Jerusalem, written by Dr. Yaron Hefetz and Rodik Ulman
January 23, 2014 – Pharmaceutical Sciences and Chemistry - ILPTO Workshop at Jerusalem, written by Dr. Zvi Teff
Mechanics, Physics and Medical Devices
A third meeting between the ILPTO and patent attorneys took place in Jerusalem at the offices of the ILPTO. This meeting was intended to improve the working process between the examiners and the patent attorneys, and additionally with an intention of asking Israeli patent attorneys to recommend filing the first application in the ILPTO as it offers unique advantages over other authorities.
The following issues were discussed:
- Uniformity of the invention
According to Section 8 of the Israeli Patent Law, a patent shall be granted for a single invention only (corresponding to PCT Rule 13; the reader is referred to this link http://www.wipo.int/pct/en/texts/rules/r13.htm).
A manifesto prepared by the association of Israeli patent attorneys as a basis for the discussion, states that the examiners typically raise a “lack of unity” rejection without sufficient analysis of their rejection and without specifying the mutual technical feature of the claims considered by the examiner a separate invention, as required by the ILPTO guidelines (and also by the corresponding PCT Rule 13). Several exemplary official actions by the Israeli examiners were presented, where the inventions were rejected as non-patentable according to Section 8 without clearly specifying the rejection.
The manifesto further notes that ILPTO guidelines [mistakenly] require that a “lack of unity” rejection may be raised when the mutual technical feature of the claims lacks novelty and/or inventiveness (this is for example not required by the PCT Rule 13).
This discussion concluded with the agreement that all examiners shall provide a more detailed reasoning for “lack of unity” rejections in official actions, clearly stating the relevant prior art and the mutual features of the claims.
Furthermore, the ILPTO may correct the guidelines in the future, so that the requirement of checking inventiveness of the claims while checking uniformity of the invention no longer appears, as the ILPTO examiners noted that in practice only the novelty of these claims is examined.
2. Double Patenting
The manifesto states that the ILPTO guidelines require an overlap rejection to be raised when an application lacks inventiveness over an earlier application, which is a restriction not practiced in other jurisdictions. Furthermore, in Israel an applicant is limited by the number of independent claims and also limited by the number of divisional applications that must be filed prior to acceptance (since it is not possible to file a divisional of a divisional application).
The patent attorneys alleged that these limitations impede the applicant from getting full protection over the entire scope of their invention (for example when only infringing the claims of a divisional patent), which in some cases keep applicants from registering their applications in Israel.
The patent attorneys further stated that particularly in the field of Mechanics (in contrast to Life-Science for instance), a single invention may be applicable for different domains; for example, a rotor that may be applied in both household devices and in heavy machinery. Therefore an applicant cannot claim every possibility applicable to the invention, due to these limitations on independent claims and on divisional applications.
A discussion on these limitations took place (similarly to the discussion in the previous meeting), and concluded with the examiners stating that the current practice provides the possibility to claim all aspects of the invention so that applications in the field of Mechanics do not require separate guidelines. However, the Registrar affirmed that the ILPTO is open to discussion on this matter and that it may require further attention in the future.
3. Patent of addition
According to Section 44 of the Israeli Patent Law, if a patent holder is the owner of an invention which is an improvement or modification of an invention for which a patent was granted, then he may request that a patent for the second invention be granted as a patent of addition.
The examiners stated that numerous applications are filed each year at the ILPTO as “patents of addition” claiming priority from the parent application, and concurred that if a patent of addition is considered novel over the parent application then it cannot claim the priority date of the parent application.
4. General issues
- The examiners of the ILPTO will examine novelty for the full scope of each claim, and will provide sufficient explanations for lack of inventiveness rejections.
- The ILPTO Registrar emphasized the advantages of filing an application initially at the ILPTO, as there are somewhat personal working relationship between the examiners and the Israeli patent attorneys. The Registrar noted that with such personal working relationship (for instance, discussing official actions over the telephone), it is easier to overcome disagreements with the examiners and therefore expedite the examination of applications in Israel.
Written by Rodik Ulman, Scientific Adviser at Gold Patents Ltd.
Computers and Communication Systems – ILPTO Workshop at Jerusalem, Posted on February 27, 2014
A second meeting between the ILPTO and patent attorneys took place in Jerusalem at the offices of the ILPTO, intended to improve the working process between the examiners and the patent attorneys, with the next meeting scheduled for March and planned to focus on Mechanics. The workshop was attended by the current Registrar and examiners from the ILPTO and also by many patent attorneys (including the previous Registrar representing the association of Israeli patent attorneys), with Gold-Patents represented by Dr. Yaron Hefetz and Rodik Ulman.
The following issues were discussed:
1. Software related inventions
According to Section 3 of the Israeli Patent Law, an invention in any field of technology, which is new and useful, can be used industrially and involves an inventive step, constitutes a patentable invention.
A typical problem with software related inventions is that unlike common practice in other jurisdictions, it is difficult to determine the “patentability” of software related inventions in Israel as without clear guidelines it is sometimes hard to differentiate between a technological invention and a “mental act” (this distinction being clearer for example at the EPO).
According to a manifesto prepared by the association of Israeli patent attorneys as a basis for the discussion, the examiners sometimes reject applications for lacking a “technological field” while [mistakenly] combining the patentability requirement (according to Section 3 of the law) with the inventiveness requirement (according to Section 5 of the law), by stating that the invention can be considered as a “mental act” software and cannot be a technological invention. Several exemplary official actions by the Israeli examiners were presented, where the inventions were rejected as non-patentable according to Section 3 without specifying the rejection (as customary in the USPTO for instance).
The manifesto further notes that these requirements must be examined separately, and that the full specification and claims must be taken into account when determining patentability according to Section 3 of the law. Moreover, the manifesto states that while the Israeli examiners require the invention having a physical change in the hardware [contrary to recent provisions by the current Registrar]; the examiners further require relationships between hardware modules and reject relationships between software modules or software performance improvements.
The discussion on the patentability of software related invention was very long, without reaching any significant conclusions. It was my impression that for software inventions, the question of technological field (according to Section 3 of the law) is very subjective as all examiners present in the meeting could not reach an agreement whether some exemplary inventions may be considered patentable or not. The Registrar [correctly] noted that the examination of software related inventions must include the “technological field” requirement as it appears in the Israeli patent law, and these inventions cannot be examined only for novelty and inventiveness.
This discussion concluded with the agreement that all examiners shall examine the full scope of the specification and claims before determining whether the invention may be considered in the “technological field”, and provide a more detailed reasoning for their rejections in official actions. Furthermore, the ILPTO may provide more definitive guidelines in the future, so that Israeli patent attorneys may have a better understanding of acceptable ways to be considered as a “technological field” invention.
2. Divisional applications
The manifesto states that Israeli restriction on divisional applications creates limitations that hinder planning an efficient IP strategy since these restrictions are not present in other jurisdictions. In Israel, an applicant is limited by the number of independent claims and also limited by the number of divisional applications that must be filed prior to acceptance (since it is not possible to file a divisional of a divisional application).
The patent attorneys alleged that these limitations impede the applicant from getting full protection over the entire scope of the invention, which in some cases keep applicants from registering their applications in Israel. Moreover, in some cases applications that were accepted in Israel following corresponding applications granted in another country (according to Section 17(c) of the law) are accepted in Israel with more independent claims than allowable by Israeli practice, thus causing a clear contradiction. The examiners stated that these limitations are reasonable [without giving a clear reason], and should not be changed.
Some of the Israeli patent attorneys suggested that the ILPTO should at the least remove the limitation on the number of independent claims, with a supplementary fee for each additional independent claim (similarly to the practice in the EPO for instance).
However, the Registrar concluded that the ILPTO remains open for discussion on this and other issues raised at the meeting and will continue the discussion in further meetings.
3. General issues
- The ILPTO will launch an online filing service in the near future. Finally, there will no longer be a need to file a physical copy of documents to the ILPTO offices in Jerusalem.
- The examiners of the ILPTO will examine the full scope of the claims at the beginning of the examination, and not only the independent claims.
- The patent attorneys asked to be informed when a third party submits documents to the ILPTO regarding examinations of their clients. The Registrar stated that there may be notification in cases where the submitted documents are found to be relevant to the examinations.
I think that giving an email notification in all cases where documents are submitted by a third party would not require extra effort from the examiners, and hope that this will be the practice in the future.
- “Any of” -> “Any one of”
The manifesto states that the requirement to amend all claims with the term “any of” to the term “any one of” is unnecessary since it creates redundant work for Israeli patent attorneys (I have seen several ILPTO official actions where the only objection was to amend this term).
The patent attorneys noted that in USPTO practice these terms are equivalent, as stated in MPEP 608.01 (n), and a similar circular by the Registrar may make them equivalent in Israel as well, thus reducing the formal claim amendments required in Israel. (The reader is referred to this link: http://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e45256).
While some patent attorneys gave examples where Israeli applications accepted following a granting of a corresponding application, needed to amend the claims in the opposite manner (i.e. “any one of” -> “any of”) in order to be identical to the granted application thus creating a sort of contradiction; the examiners refused to dismiss this requirement and stated that this requirement is necessary in order to prevent a state of multiple dependencies in the claims. I could not understand the persistence of the examiners, as issuing a circular that may settle this matter is possible and would not require any major changes in the practice of the ILPTO; and hope that this will change in the future.
Written by: Ph.D. Yaron Hefetz, Patent Attorney and Rodik Ulman, Scientific Adviser at Gold Patents Ltd.
Pharmaceutical Sciences and Chemistry – ILPTO Workshop January 2014 at Jerusalem, posted on January 23, 2014
A meeting between the ILPTO (governmental Israeli Patent, Design and Trademark Office) and patent attorneys took place in Jerusalem at the offices of the ILPTO. It was the first meeting ever of its kind. I was surprised at the high attendance: I saw over 50 people each from the ILPTO examiners and the Israeli patent attorneys that specialize in biology/chemistry.
The following issues were discussed:
1. Overlap between inventions
According to Section 2 of the Israeli Patent Law, the owner of a patentable invention is entitled to request a patent for the invention.
A problem may occur when the examiners find that separate owners apply for a patent pertaining to similar inventions. This problem occurs most frequently in the pharma industry since there are often high-value projects that lead to inventions that have multiple ownerships. Of course, generally one company may file multiple applications directed to essentially one invention as well.
The starting point of the discussion was the allegation that in many cases the examiners find overlap [between the subject matter of claims] even though there is no literal overlap, and that the overlap rejection is based on the [allegedly mistakenly applied] principle of lack of inventive step. Furthermore, according to the Association of Israel Patent Attorneys, which prepared a manifesto for the meeting as a basis for the discussion, the examiners sometimes reject claims in divisional applications on the basis of overlap.
I note that actually Section 24 of the Law seems to be more relevant here, since 24b states that the ILPTO Registrar is entitled to require cancellation of claims in an application in the case of the claimed invention being found unpatentable in view of another pending application.
In response the lawyers in the ILPTO explained that the standards for determination of overlap are determined according to the practices of the USPTO.
Inventive-step overlapping is named at the USPTO as “obviousness-type double patenting” (ODP) rejection, and the reader is referred to this link for further details: http://www.uspto.gov/web/offices/pac/mpep/s804.html
I find it hard to support rejecting an application that is a divisional, on the basis of lack of inventive step over the parent application (especially when the examiner states that the claims in the parent application were directed to more than one invention) but can see the logic in preventing a company (or a number of companies where for example the rights to essentially the same invention are sold multiple times) from filing a string of related inventions that add nothing to progress of technology or to the benefit of the public.
At any rate, the ILPTO remains open for discussion on this and other issues raised at the meeting and will inform us of the decisions.
2. Support and enablement
The manifesto claims the examiners occasionally get confused between the two issues, and have recently become stricter in their examination standards in these issues as well as having excessive expectations to rely on the examples alone, thereby overly restricting the scope of the claims. Another argument was that the rejections/objections in this matter (as in others) must be expressed in well reasoned arguments, substantiated by publications, and that the examiners must give due weight to the accumulated knowledge of the inventor regarding enablement.
I have found the ILPTO to be very reasonable in this respect, as the examiners are somewhat more lax than the EPO in respect of literal support for the claims, and are nowhere as difficult as the USPTO can be regarding enablement.
My position is supported by the comments of the examiner department heads on this issue, who stated that a declaration from an inventor would serve to allay doubts regarding enablement.
3. Inventive step (obviousness)
The manifesto alleged that an examiner is not “an average person skilled in the art” and thus cannot make rejections in the form of “an average…would”. Other allegations were made against the reasonableness and the presentation detail of the rejections.
In regard of support, enablement and inventive step, the Registrar (an aeronautical engineer, patent attorney and lawyer) made it quite clear that indeed all of the examiners’ rejections must be well reasoned and detailed. However, sometimes the rejections will not rely upon references, as this can be excessive burden on the examiner, when the claims are for example Markush with a great number of subtituents claimed. In a follow up conversation with an associate, he and I argued whether the office actions issued by the ILPTO are well reasoned, and I decided to examine the ILPTO office actions that I had dealt with in the previous year. In all cases of inventive step rejections, I found that the rejections were reasoned, although such reasoning usually consisted of stating which elements of the invention were found in which publication. Only in some cases, the examiner did relate to supporting statements, such as the motivation the skilled in art would have in modifying (what is described in referenced publication D1 with features described in D2 etc) or to state that such features are commonly known to the skilled in the art etc. However, again I have found the Israeli examiners to be about as reasonable as the examiners in EPO (and to apply similar standards and reasoning), and much better on average than the American Examiner.
Written by: Ph.D. Zvi Teff, Patent Attorney at Gold Patents Ltd., can be contacted at email@example.com, tel: 04-8110007
(Blogging on IP)