Changes in Practice at the Israeli Patent Office

The Israeli Patent Office[1] (ILPO) recently announced some new guidelines relating, among others, to Uniformity of Invention, medical use claims, “green” applications and extensions. These new guidelines are discussed in this article.

Uniformity of Invention

Hitherto, whenever an objection of non-unity was raised by the examiner, the applicant was able to substitute the set of claims with a new set relating to a single invention, whether based on the set of claims examined by the examiner or not.

If the examiner considers the claims to include more than one invention, he will search and examine the first set of claims. In accordance with the new guidelines it is no longer possible to overcome the Examiner’s objections by replacing the examined claims by a set of claims referring to a different invention[2], even to one originally claimed (as was hitherto possible). Any non-examined invention can be subject of a divisional application, or applications, respectively.

New Medical Use Claims

New medical indications for known pharmaceutical active ingredients are patentable in Israel. Hitherto, permissible claims for such inventions included Swiss-type claims (Use of X in the preparation of a pharmaceutical composition for the treatment of Y), in the format of claims as allowed by the European Patent Office (EPO) under EPC 2000 (Product X for use as a medicament in the treatment of Y or Product X for use in the treatment of Y); as well as in the form of purpose-bound pharmaceutical compositions (pharmaceutical compositions for the treatment of Y comprising X as an active ingredient)[3].

Under the new guidelines, Swiss-type claims are no longer permissible, but the other claim formats are still applicable.

“Green” Applications

Like in many other patent offices, “Green applications” are eligible for accelerated examination that begins within 3 months from the date on which an application was classified in the “green” category.

According to the new guidelines, an applicant wishing his application to be classified as “green” has to submit a letter explaining how the invention promotes the environment.

Extensions of Term for Responding to Office Actions

There is a 4-months term for responding to an Office Action. In the past, the ILPO was relatively liberal in granting extensions, permitting up to a 6-month extension[3] of term for submitting a response with the total number of extensions during prosecution not exceeding 15 months.

Under the new guidelines, the extensions have been limited to a maximum of 4-months for response to an office action with the total extensions permissible during the course being limited to 12 months.

[1] Formally known as the Patent Authority.

[2] Possible to file a divisional application.

[3] The patentability of such claims stems out of an old Supreme Court case.