effective and efficient search and examination of patent applications in small and medium size ip...
TRANSCRIPT
Effective and Efficient Effective and Efficient Search and Examination of Search and Examination of
Patent Applications in Small Patent Applications in Small and Medium Size IP Offices and Medium Size IP Offices
Presenting: Dr. Meir Noam Commissioner of Patents Trademarks and Designs
Head of the Israeli Patent Authority
The State of IsraelMinistry of Justice
Israeli Patent Authority
Second Global Symposium of IP AuthoritiesSecond Global Symposium of IP Authorities
Search & Examination of Patent Applications
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NUMBER OF PATENT APPLICATIONS IN ISRAEL OVER THE LAST DECADE
0
1000
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3000
4000
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7000
8000
9000
YEAR
APPLICATIONS 2886 5056 5957 6802 6769 6308 5898 6414 6842 7426 7989 7704 6900
1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009
Almost 100 examiners in all technological fields
More than 7000 patent applications per year, 75% of which are PCT national phase applications
Israeli patent law mandates substantive examination of applications Enormous workload
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Search & Examination of Patent Applications
The Israeli Patent Authority was approved as an ISA/IPEA on Sept. 2009
greater workload
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Search & Examination of Patent Applications
Israeli Patent Law 1967Israeli Patent Law 1967 Article Article 18 (“Due Diligence”):18 (“Due Diligence”):
access to work done by other IP officesaccess to work done by other IP offices
““The examiner shall use at least one of the following additional means of examination:
(1) the list of documents used by patent authorities in any foreign state in the examination of a patent application on the same patent application, submitted in a foreign country by the applicant or by his predecessor in title to the invention;
(2) a list of documents published before the application date, known to the applicant and directly connected with the invention;”
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Search & Examination of Patent Applications
Israeli Patent Law 1967Israeli Patent Law 1967 Article 18(5) Article 18(5)
(“Cooperation with Foreign IP Offices”):(“Cooperation with Foreign IP Offices”):
““TTransmission of the specifications of the application-in order to search for material that will enable the Office make the examination to an institution in Israel or abroad, with which the Office contracted under any Law by an agreement drawn up by the Registrar, including a section on keeping any patent application confidential and on nondisclosure under section 165; “
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Search & Examination of Patent Applications
SUGGESTION
Creation of a source containing all pertinent
prior art documentation cited by different IP
offices against the same application, along with
search & examination reports
Such a source will be accessible to all IP
offices, free of charge
Search & Examination of Patent Applications
Search Resources
Prior Art Databases (STN, THOMSON Innovation, Derwent, PatentScope, Google, Esp@cenet, SCIRUS, Chemical Spider, Pubmed (BLAST)).
Cooperation with IP Offices (EPO – Epoque).
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Search & Examination of Patent Applications
Israeli Patent Law 1967Israeli Patent Law 1967 Article 17(c)Article 17(c)
“If the conditions specified below are met by an application, then it shall be deemed to have complied with the provisions of section 4 (novelty), 5 (inventive step), 8 (unity of invention), 12 (specification) and 13 (claims):(a) a patent in a country from the list(b) a priority claim(c) applicant request in writing(d) identical claims
(e) identical description and drawings or according to Israeli Law.”
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Search & Examination of Patent Applications
Israeli Patents Law 1967 –Israeli Patents Law 1967 – Article 17(c)Article 17(c)
List of the Countries:
Austria , Australia , USA,
UK Germany Denmark, Russian Federation , Japan EPO
Norway Canada Sweden
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Search & Examination of Patent Applications
Israeli Patent Law 1967 -Israeli Patent Law 1967 - Article Article 17(d)17(d)
Discretion of the Israeli Patent Authority:“The Registrar and also the Superintendent of Examiners or his deputy may refrain from accepting an application, if they determined on the basis of the material at their disposal or submitted to them in the course of the examination that the application does not comply with one of the provisions specified in subsection (c) or that there is some other special reason why the application should not be accepted"
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Search & Examination of Patent Applications
Circular MN. 70 regarding modified Circular MN. 70 regarding modified examination based on foreign patents examination based on foreign patents (expansion of 17(c)):(expansion of 17(c)):
“1. An application containing claims pertaining to methods of therapeutic treatment on the human body accepted in another country and rephrased, by examiner's request, to comply with the definitions of use claims, is deemed applicable to the present circular, as long as said application adheres to the remaining terms set forth in the present circular, (identical to 17(c)).
2. When the Israeli a application and the foreign patent are both national phase applications of the same PCT application, the Israeli application is entitled to a modified examination according to the circular if the other terms of 17(c) are met.”
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Search & Examination of Patent Applications
Circular MN. 71 regarding modified Circular MN. 71 regarding modified examination based on a Favourable Search examination based on a Favourable Search Report and Written Opinion or a Favourable Report and Written Opinion or a Favourable Preliminary Examination Report:Preliminary Examination Report:
“An application having met all the conditions specified below shall be deemed to have complied with the provisions of sections 4 (novelty), 5 (inventive step) and 8 (unity of invention) of the Israeli Patent Law 1967:
(a) National phase application in Israel or an Israeli application and later submitted through the PCT ;(b) Favourable International Search and Examination report (novelty, inventive step, and unity of invention);(c) applicant request in writing;(d) identical claims.”
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Search & Examination of Patent Applications
HOWEVER:
Modified examinations in accordance with
section 17(c), as well as Commissioner’s
Circulars M.N. 70 and M.N. 71 are requested for
less than 20% of all applications submitted.
Our applicants require substantive examinations.
Search & Examination of Patent Applications
Israel excels in hi-tech and biotech
The ILPO has very experienced specialist teams in these fields
This expertise is available for contracting search and
examination services in accordance with international standards, to other IP offices
The ILPO provides training in these fields to officials
from other IP offices
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Search & Examination of Patent Applications
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