FAQ - Patents

Generally, registration of a patent includes at least the following steps and their related costs:

Searches: A prior art search is performed (in order to check whether the invention has been published by other parties, and how it may be defined in view of previous publications).  At this stage (which is not mandatory, but is highly recommended, and is best done with the assistance of an Information Scientist), costs may include the services of an Information Scientist, as well as the cost involved in utilizing  data banks. 

Drafting an Application:  Costs at this stage include  patent attorney fees for drafting the application, and are dependent on the complexity of the invention.

In Addition, Applicants are required to meet local standards for filing of drawings and may need the assistance of graphical experts.

Filing an application: In each country where protection is sought (either simultaneously or at different stages), at this stage, an Applicant is required, by patent attorneys in their respective countries, to settle any debts for services related to filing the application, as well as official fees in each country.  In many countries there is also a need to translate the application into the local language.

Examination:  At this stage, examination reports (also referred to as “Office Actions” and/or “Official Notifications”) are received from the relevant authorities in each country, to which a response has to be filed within a defined period.  The cost of this phase varies between different applications and the number of prosecution rounds involved, as Examiners may (rarely) accept an application without any special demands, on the one hand, or may raise many complex arguments and cite many publications, on the other. 

Additional Official Fees:  In addition to the above, official fees need to be paid in each country (such as publication and examination fees, annuities, etc.).  In few countries, an annual fee has to be paid, from the filing date and until the end of the patent term (twenty years, unless the application or the patent is abandoned before such time), while in other countries, such fees are payable only upon grant of a patent. 

Additional Expenses: In addition to the above, there are other expenses that should be considered, depending on the country where a patent is requested, and the specific circumstances, such as choosing to file an international application (PCT), opposition proceedings, divisional and continuation applications, requests for continued examination, etc. 

In addition, in order to benefit from patent protection, an application must be filed in each and every country wherein patent protection is sought, and such costs vary between countries.

The patent examination procedure depends on the specific technological area of the invention, and according to the country where the application is filed. Generally, such a process takes several years.

In some cases, it is possible to request expedited examination. In Israel, for example, a petition may be filed for accelerated examination, based for example on the Applicant’s knowledge that some party intends to use the invention without permission. In addition, the Registrar has recently introduced a fast track for examining “green” technology patent applications.

In order to apply for a patent in Israel, one must prepare a patent application (drafted in accordance with the requirements of the Law) and file it with the Patents, Designs and Trademarks Registrar, along with official fees. To this end, the procedure is as follows:

The inventor (or the owner of the invention) may draft and file an application on his own behalf. In such cases, it is recommended to review beforehand the “Notes for Applicant from Overseas for Patents in Israel“, as published by the Patents Registrar. Such independent action may initially save certain costs, but includes the risk which results from an Applicant’s lack of knowledge and professional experience in drafting patents, and in local law.

Alternatively, one may employ a patent attorney, who would be able to contribute his experience and expertise, both in drafting the application and in formulating decisions regarding the most appropriate time to file an application, and what should (or should not) be included therein.

According to the Law in Israel, a patent application may filed in any formal language (Hebrew or Arabic) as well as in the English language.  As a matter of practice, the vast majority of applications are filed in English.  This saves the cost of translating the application from Hebrew to English or vice versa.  In many other countries, it is mandatory to translate a patent application to the local language.

This depends on factors such as whether a prior art search needs be performed to obtain a preliminary determination of whether the invention is novel, and what scope of protection it may have, the complexity of the invention (for example, the amount of close prior art from which it needs to be patently distinguishable, the number of embodiments), and how complete a disclosure, and how much useful assistance, are provided by the inventor.

It generally takes about 4-6 weeks to complete a first draft for client review, and its finalization from that point depends mainly on the inventor. Naturally, at Reinhold Cohn, we always do our utmost to accommodate clients’ needs for urgency in such matters.

No, you are not.

However, sometimes the process of designing and constructing a prototype enables an Applicant to provide details of the invention in the patent application, and to change the concept of at least some aspects of the product. This may be extremely advantageous in ensuring that the actual product is duly described in the application and eventually well protected.

A prior art search may assist an Applicant decide what aspects of the invention are novel. If the search reveals that the invention is not novel or its scope is narrow, an Applicant may decide not to proceed, saving time and costs.

In addition, knowledge of prior art can help an Applicant’s patent attorney draft the description and claims with more expertise , by helping him/her emphasize the important features which distinguish the invention from the prior art.

Note: Many inventors believe that their invention is new because they have not seen it anywhere.
This is, however, not always correct, because somebody may have thought of the invention before, attempted to obtain a patent for it, but not managed to introduce it into the relevant market for whatever reason. From this point of view, a prior art patent search may be very useful.

A good patent search takes time. If there is not much time remaining to draft and file an application (e.g. due to an upcoming marketing trip where exposure of the invention is necessary), a quick search or no search may be the only options. However, often it would be worthwhile to complete the search after having filed the application.

There is an organization in Israel called “Tnufa” which provides initial funding, but under terms that make it difficult to transfer any attained knowledge out of the country. For details and further information, please visit the Tnufa website.

In Israel, a patent attorney is not necessarily a lawyer.  

Generally, a patent attorney is a person who graduated from an institution of higher education in one of the following fields:  engineering, chemistry, physics, biology, pharmaceutical science, or computer science.  However, a patent attorney’s education in the field of law is limited mainly to the Patents Law and other Intellectual Property related laws, which he studies practically during his qualifying service period in work and for which he is examined before being granted a license.  For further details on eligibility for registration in the Register of Patent Attorneys, please see previous question in this site.

A patent attorney is permitted to work in Israel for pay in respect of patents, designs and trademark applications and prepare any document which is to be filed to the Registrar, to the Patent Office, or to an authority for the protection of industrial property in another country, and to represent clients and handle proceedings before the Registrar or the Patent Office.  In addition, a patent attorney may have, subject to permission of the Court, the right to argue before the Court on behalf of a party in proceedings under the Patents Law 5727-1967, in all matters relating to an invention or a patent which is not a point of law, and provided that the advocate of the same party is present at that time.

An advocate, on the other hand, is a member of the Israel bar association, and as such has an exclusive right to deal with legal proceedings, give opinions regarding matters of law and represent before a court of law and before official authorities, such as the Patent, Trademarks, and Design office.  Therefore, an advocate may perform all the same services as a patent attorney.  In addition, an advocate may handle any legal proceeding, including litigation relating to Intellectual Property and Intellectual Property related agreements.  Nonetheless, in legal proceedings relating to patents, an advocate would normally cooperate with a patent attorney who is knowledgeable in the technological field of the invention and its details.

RCG offers its clients the best of both worlds.  The group includes both patent attorneys and advocates who work in tandem.