January 1, 2012

Israeli Patent Office will become PCT Searching Authority

Dr. Hava Caner Ercegovic, Patent Attorney
Dr. Hava Caner Ercegovic

Patent Attorney

Reinhold Cohn & Partners
Dr. Ilan Cohn, Senior Partner
Dr. Ilan Cohn

Senior Partner

Reinhold Cohn & Partners

On 5 December 2011 the Israeli Parliament (the “Knesset“) enacted an amendment to the Patents Law (officially published on 8 December 2011), whereby the Israeli Patent Office1(IPO) will become an International Preliminary Search and Examining Authority for PCT applications. The IPO is expected to start operating in this capacity within the next few months.

In September 2009, the World Intellectual Property Organization (WIPO) decided to designate the IPO as an International Preliminary Search and Examining Authority (IPEA)2 for patent applications filed within the framework of the Patent Cooperation Treaty (PCT); and an agreement to this effect was signed between the Government of Israel and WIPO. The IPO now joins a reputable list of 16 patent offices, already serving in this capacity.

WIPO’s appointment of the IPO as an IPEA reflects recognition of Israel’s role as a technology powerhouse and concomitantly of the IPO’s ability to provide effective searching and examining services to PCT applicants worldwide.

Initially, the IPO in its capacity as an IPEA will serve only Israeli applicants; later, also opening up its services to applicants from other countries. While the search and examination fees have not yet been published, it is expected that these fees will be more cost effective compared to other International Preliminary Search and Examining Authorities, such as the EPO and the USPTO.

Israel is one of the world’s leaders in per capita filings of PCT applications. It is likely that many Israeli applicants will opt to select the IPO as the IPEA of their PCT applications, given the high examination standards, on the one hand, and the expected lower fees, on the other hand. Furthermore, it is also likely that some applicants, from countries outside Israel, will choose the IPO as their IPEA for PCT applications, for the same reasons as well as for reasons of relative speed of searching and examining PCT applications that the IPO strives to achieve.

It should be noted that, similarly as in the case of other International Preliminary Search and Examining Authorities, the IPO may excuse itself from performing a search in those cases, where the invention is in a field for which no meaningful search can be conducted or where the description, claims and drawings are so vague that no meaningful search can be conducted.

One of the amendments is a change the term “Patent Chamber”, hitherto the official name of the IPO, to “Patent Authority”, which has in fact been in use now for a few years.
All PCT applications undergo a patentability search by an IPEA that is designated by the applicant. Upon request (and payment of an examination fee) the IPEA also conducts a patentability examination following which an International Preliminary Examination Report (IPER) will be issued. The IPER is not binding on the national patent office that will examine national applications stemming out of the PCT application but the IPER often serves as guidance in the national examination.  In addition, it permits applicants to gauge their chances of receiving patents on the national applications based on the PCT application; and, accordingly, make their decisions on national filings (which can be very costly).
As most inventions are patentable under Israeli Patents law, in one claim format or the other, these should be relatively rare cases. One notable exception concerns therapeutic methods for treating the human body that are unpalatable under Section 7(1) of the Law and accordingly there is no search discipline for such inventions. However, as new pharmaceutical indications of known active ingredients (for which therapeutic method claims may be relevant in the US) are patentable in the form of purpose-bound pharmaceutical composition or “Swiss Type” use claims, this limitation may be obviated. Abstract computer-implemented inventions and business methods inventions may be another possible exception.  

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