The Patenters - חברה לרישום פטנטים

A breath of fresh air: Current general state of oppositions to patent grants in Israel

Fresh-and-make-up-air-strategy

General state of oppositions to patent grants in Israel

I reported almost two years ago about the state of oppositions to patent grants in Israel, see here.

This is an update on oppositions to patent grants in Israel.  The present case may be viewed as a breath of fresh air in the lethargic system.

There are several opposition cases per year.

Opposition in a recent case

Grant of Israeli patent application IL209734 was opposed on August 30th 2016, almost two years ago.  The opposition process is available here

In the June 2018, the most recent report of decisions by the Israeli Patent Office was published.   In the report a decision was made on IL209734.  This decision appears to adroitly cut through red tape previously miring Israel patent grant oppositions.

The main objective of the invention is to provide a system of indicating and non-indicating devices.  The devices can be for monitoring materials and processes such as time, temperature, thaw, freeze, etc., and electronic devices.  The monitoring and indication is based on significant etching of a thin layer and/or fine particles of metallic materials.  The materials are such as a metal, semimetal, semiconductor or an alloy.

Lessons from the current Decision

The Decision deals with an appeal brief by the Opponent.  The Opponent argued that the original opposition brief should be amended in light of Applicant’s reply to the opposition brief.  In particular the Applicant provided new data, made certain statements and amended the specification during several rounds of the process.  Israel is one of the few jurisdictions in the world that allows amendment of the patent up to grant.

Amongst the Opponent’s arguments is the need to fine tune the arguments.  The former case law indicates that considerable latitude is allowed in amendment of opposition briefs.  Such latitude may be a major cause for the incredible length of the average opposition procedure in Israel.

The appeal, if approved, might have seriously disrupted the process.  In April 2018 dates were already set forth for the next round, presentation of counter-evidence by the Opponent.  Moreover, the Opponent’s arguments would have required allowing the Applicant to amend his arguments as well.  The diversions risked totally derailing the process as laid out.

The decision states that in contrast to many former oppositions, the amendment of the appeal brief was not in light of discovery of additional prior art.   Prior art might have direct implications on the validity of a patent.  It remains to be seen if the presumed approach of the current decision (to prevent undue delays) is an exception.

In the proposed amended appeal brief the Opponent raised two new issues.

1) The invention is not useful.  During the rounds the Applicant referred to Figure 3 that illustrates the barrier layer.  Opponent now argues that such layer would not allow measurement of the induction period.

2) The application is now viewed as a mere discovery of an inherent property.  According to examination regulations discovery of an inherent property does not entitle determination of novelty.

These issues, it is alleged, could not have been raised at the time of submitting the appeal brief.  They are the only issues in the Opponent’s arguments that “raise to discussion [open] questions under the dispute” (freely translated).

The bottom line in the decision

The severely limited appeal brief amendment was allowed and was to be submitted within 7 days of the Decision date.  The Applicant was allowed to file a request to lodge counter-arguments specific to the amendment issues, within one month of the amendment submission.

Perhaps most telling in the Decision regarding preventing procrastination is the final statement.  The stipulated periods would not be extended due to the side’s workloads, holidays in Israel and elsewhere, and coordination between various parties.

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