Israeli Patent Office promotes deferral of examination

Israeli Patent Office promotes deferral of examination

The ILPTO is updating their website which will affect the procedure of requesting deferral of examination of a patent application.

The request for deferral of examination is submitted to the ILPTO either together with the response of the applicant to the notification of the ILPTO under section 18, or thereafter, as long as it is at least three months before the examination begins.  This sequence will not change. 

The circular 35/2017 correction that was circulated in June 2024  gave notice of a few changes.  One is that the notification under section 18 that up until now was sent about 10 months after filing, will now be sent 12 months before the estimated examination date.  Thus when the applicant receives the notification under section 18 they will then know when the estimated date of the examination will be and therefore will be able to make an informed decision regarding the request to postpone the examination.

The other change is that applicant will be able request deferral and pay on the website for the time the applicants responds to the notification under section 18. A rule of thumb is that the ILPTO will usually grant requests for deferral of examination of up to 2 years and this will be automated on the website. 

Should the applicant however change their mind prior to the deadline of 3 months prior to the original date of examination, the ILPTO will refund the fee for requesting deferral and update the date of examination after receiving notification from the applicant.   

Requests of deferral of examination of more than two years should include a valid reason for the request and the ILPTO may authorize such request after evaluation.  The response will be sent to the applicant who will then be able to pay in cases where the request was allowed.

There will be an interim period for requests for deferral submitted by June 5.  The ILPTO will continue to send notifications to the applicant regarding requests for deferral as has been done up until now.

We expect that the deferral of the examination will not be  available for Israeli applications that are on the PPH.

The explanation above contains all of the essential information.  Nevertheless the reader may find the explanation below to be of further use, which is a translation of a slide by the Israeli Patent Office [ILPTO].

Before the registrar’s revision

1. A notification is sent according to section 18: 10 months from the submission of the application
2. Applicant submits a request for the postponement of the exam as part of a response to section 18 or after the original deadline
3. Confirmation: A message is sent according to section 18
4. Close to the exam date, the applicant is reminded that if they are still interested in delaying the exam, they can pay on the website.  Please note: Israel Patent Office will continue to send reminders regarding deadlines for requests for delay that were submitted and approved before 05/06
5. The  applicant submits an application and pays for the postponement of the exam
6. Deferral confirmed
7. Confirmation from ILPTO with end of deferral i.e. new date for examination

If the application does not pay, for the deferral of the examination, then the examination begins on schedule.

The postponement of the exam after the amendment of ILPTO circular 35/2017

Deferral applications submitted after 05/06/2024

1. The applicant will submit a response to section 18
2. The applicant will submit the request for the deferral of examination directly on the website and pay for it.
   It is the applicant’s responsibility to ensure that the request for the deferral is submitted no later than three months from the estimated date of the examination.

   In order to check until when the request for the deferral can be submitted, search for the application by number, click on the title of the application and bibliographic data of the application appears  -including the date of examination, the expected date of examination.
   In a divisional request, the request must be submitted together with the answer to section 18.

3. Deferral confirmation by ILPTO will include the end of the deferral. i.e. the new date of examination

Comments:

Confirmation should be sent by ILPTO within 5 working days

The ILPTO will continue to send the section 18 notifications.

After responding to section 18, the applicant may request AND PAY ONLINE for deferral of examination. 

If payment isn’t made – the ILPTO will send a notification and a new request must be filed with payment.

When the examination is supposed to start, the ILPTO will:

1. update the start of examination and
2. send the application a notification of the new examination date

Up to 2 years of deferral of examination is automatically granted by the ILPTO. The deferral may be for 6 months, 1 year, 18 months

If the applicant requests the deferral and pays at the time of response to section 18, and then decides not to defer the examination prior to 3 months of the start of examination, the ILPTO will refund the fee for deferral.

The ILPTO is interested in letting the applicant make the examination deferral request close to the 3 months prior to examination.

The deferral request may be filed up to 3 months prior to this date. 

Deferral of Examination – on the new updated website, (after the transition period)

Notice according to section 18 will be sent

1. The applicant will enter the date of the end of the deferral of the examination in their application directly on the website.
2. There will be an automatic check on the website of the duration of the deferral of examination of the application
3. When the duration of the deferral of examination is less than two years: the applicant pays,
4. confirmation with the date of the end of the deferral

If the duration of the delay in the case is more than two years,

1. A request is submitted to be checked for the reasons for the deferral
2. If the request is granted, the applicant pays and receives confirmation with the date of the end of the deferral
3. If the request is not granted, the application will receive a rejection with details of the reason for the rejection

Comments:

Extentions to responding to section18 will be limited to 4 months (down from current 6 months)  so that the final extension date is before the deadline for filing request for deferral

When the examination of applications in other countries has started, the ILPTO will not grant extentions beyond 2 years

Deferral of examination of Divisional Applications on the new website

1. The applicant will enter the date of the end of the deferral of the examination on the website
2. If there is no opposition proceedings filed in the patent family, the deferral of the examination can be submitted as part of an answer to section 18 or an independent application on the website only when it is submitted on the same day that the answer to section 18 was submitted
3. There will be an automatic check on the website of the duration of the deferral in the examination of the application and the procedure will be similar to that described above, i.e. if the request of deferral is for less than 2 years or for more than 2 years.

Jennifer Teff

Patent attorney