We recently argued with a client over payment for work on a Notice before examination. We thought it would be best to clarify several things about the prosecution of patent applications in Israel. In particular regarding the examination process in comparison to other jurisdictions, and how our firm works.
Office action = Notice before exam??
Strictly formally speaking, the Notice isn’t written by an examiner. It is a standard letter that is the same for all patent applicants. However, it certainly requires a substantial response from the applicant. In my opinion it thus is indeed an office action.
Request for exam?
Essentially the Notice is most similar to a request for examination that is common in other jurisdictions. A response to the Notice in effect initiates the examination process.
Minimal response to Notice before exam
At a minimum, the Applicant must provide as part of the response a list of publications that are relevant to the invention. This feature is akin to an IDS in US patent applications. In addition a list of corresponding patent applications from the same family, i.e., in other jursidictions, must be provided. This feature is similar to the procedure in Indian patent applications.
Timing the Notice before examination in Israel patent applications
Request for examination is not possible in Israel. The option is not available. Instead, the applicant must wait for the Israeli Patent Office to issue the Notice before Examination. The Israeli Patent Office is very eager to expedite the examination process. Nevertheless, a Notice might issue only after three years or more since the filing date of national phase into Israel. Moreover, several additional years might pass after responding to the Notice and until the first office action of merits issues (“Notice of deficiencies”).
To greatly expedite the process, and indeed in our opinion improve the chances of obtaining a patent, a request for PPH prosecution may be filed. Even together with the filing of the application. If the request is approved then a Notice automatically ensues a short time afterwards. Alternatively, a request for PPH prosecution may be filed as part of the response to the Notice before examination whenever this issues.
Charges for handling a Notice before examination
Whatever route the applicant chooses, the request for PPH prosecution is one procedure we charge for. The response to the Notice is another, separate one.
That being said, we are very cost-concious. We are aware that many firms charge an arm and a leg for requesting examination (even without doing any “extra” tasks). We charge a low fee for requesting PPH prosecution. This is because we believe that it is in the best interest of the client, although purely optional. We want to encourage its usage as the client’s success is our own. Similar considerations apply to our response to the Notice. That is largely a paralegal’s work we can charge by the hour. For most responses the resultant cost is a few hundred US dollars.
See this article