The Patenters - חברה לרישום פטנטים

Arranging the patent application claims in Israel


Arranging the patent application claims: Proper ordering of patent application claims is very important in Israel.  In particular when there are multiple independent claims.

In many jurisdictions requesting examination is required to allow the substantial examination to commence.

In Israel the comparable procedure is the Israel Patent Office sending out a Notice Before Examination.  This is typically done about two years after the application is filed.  The Notice invites the Applicant to amend the application.  The amendment may include amendment of the claims.  The amendment may  include arranging the patent application claims in a new order, and even amending the Description.

Recent Notices have added a warning.  If the claims are found contain multiple inventions, only claim 1 and its dependent claims will be examined.

This procedure is alike the procedure in the Japan Patent Office.

I am gratified to see this warning added.  I had argued with the former Israel Patent Office Commissioner on this point.  At the time of filing the application the Applicant may wish to have as the first independent claim a not-so-broad claim.  Part of a strategy to convince the examiner may be to put first a relatively narrow claim that is more likely to be accepted.  For example, in software related inventions, a broader claim might raise an objection of unpatentable subject matter.  A narrow independent claim may incorporate physical features that impress the reader that the invention has “something more”.   See our article about software-based applications.

After some time the Applicant might receive an Office Action requiring selection of species (as the USPTO will refer to perceiving multiple inventions in the claims).  Or find that a particular aspect of the invention is most important or most patentable, for example.  Consequently he/she may wish to change the order of the claims so that the right claim is examined in Israel.

The reply to the Notice is the last opportunity for the Applicant to amend the claims so that the most suitable independent claim is certainly examined.

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