A Call for Action: In view of the intent of the Israeli Ministry of Justice to overhaul the statutory scheme of pre-grant oppositions

The Ministry of Justice just published a notification, announcing that its intention to re-examine the legislative scheme underlying the Israeli Pre-Grant Opposition system and invited the public to pass comments and suggestions in connection therewith.

It is highly important that the innovation industries and institutions be involved in the process.

The Ministry of Justice just published a notification, announcing that it intends to re-examine the legislative scheme underlying the Israeli Pre-Grant Opposition system. The MoJ further invited the public to pass comments and suggestions regarding the rules of procedure of opposition. The deadline for submission of comments is 15 November 2016.

The MoJ also published a non-exhaustive list of topics for comments, as follows: 

1. The stages of the opposition proceedings the process (notice of opposition, pleadings, evidence, written summaries);
2. The distinction between legal arguments, facts and evidence, and proper stage for submission of prior art publications;
3. The statutory deadlines and the possibility for extension or lack thereof;
4. Amendment of the specification during oppositions:
   4.1 The possibility of submitting alternative versions of the claims by the applicant and/the opponent;
   4.2 The criteria for examining an amendment request;
   4.3 The fate of opposition proceedings following an amendment request (suspension, a parallel adjudication, consolidation).
5. Preliminary proceedings – a request for better particulars, discovery, security for costs;
6. Procedures for determining award of attorney fees, including a possibility of using a pre-determined fixed table;
7. Preliminary hearings / Pre-trial;
8. The possibility of referring the parties to arbitration and mediation;
9. Criteria for approval of a settlement agreements reached between the parties to opposition proceedings, the Registrar authority to invoke section 34 of the Patents Law (continued examination post withdrawal of opposition) and the publication of such settlement agreements.

Notable ideas that immediately come to mind are the possibility of allowing auxiliary requests by applicants and permitting opponents to initiate claim amendment [4.1], regulating discovery requests (which until recently were allowed in rare cases only) [5] and establishing criteria for approving settlement agreements and the possibility of mandatory publication of settlement agreements [9]. An additional novel proposal is that of a flat fee table [6]¹. Many more issues hide in this list.

Although of particular importance to the pharmaceutical industry, the issues are not limited thereto. It is therefore highly important that the innovative industries and institutions be involved in the process, initially by submitting position papers and once the legislative process commences, by way of appearance before the judiciary committee of the Israeli Parliament, the Knesset.

Upon first blush of the notice, one cannot escape the concern that, like before, the MoJ may be inclined to adopt policies that are not favorable to the public interest of granting patent rights for innovations. This of course underscores the need for a loud voice of the innovation industries and institutions.