Israel Patent Office promotes deferring examination

Israeli Patent Office promotes deferral of examination

Israel Patent Office promoting deferral of examination

Deferring examination of patent applications in Israel allows considerably extending times until substantive examination.  The extension can prevent premature examination in cases wherein the client prefers first certainty elsewhere.  

Update of website

The ILPTO is updating their website.  They are modifying the procedure of requesting deferring examination of an Israeli patent application.

The current status

Submitting a request for deferring examination for patent applications in Israel to the Israel Patent Office is done either together with the response of the applicant to the notification of the ILPTO under section 18, or thereafter.  Delaying the response is possible as long as it is done at least three months before the examination begins.  This sequence will not change. 

See here about the notification under section 18 of the Law.  See here for a more general description of the patent application examination in Israel.

Providing basis in the regulations

The circular 35/2017 correction that was circulated in June 2024  gave notice of a few changes. 

One change is that sending the notification under section 18 will now be 12 months before the estimated examination date.  This is instead of that up until now sending about 10 months after filing.  Thus when receiving notification under section 18 the applicant will know when the estimated date of the examination will be.  The applicant will henceforth be making an informed decision regarding the request to postpone the examination.

The other change is that applicant can 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 automatic on the website. 

Leaving points of exit open

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.  

Filing special requests 

Requests of deferral of examination for patent applications in Israel of more than two years should include a valid reason for the request and the ILPTO may authorize such request after evaluation.  Israel patent office will send the response to the applicant who can then pay in cases where the patent office allows the request.

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

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

Summary of slide about the changes

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. Sending notification according to section 18: 10 months from submitting 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: Israel Patent Office sends a message according to section 18.
  4. Close to the exam date, reminding the applicant 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. Israeli Patent Office confirming deferral.
  7. ILPTO Confirming end of deferral i.e., new date for examination

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

Outline of the procedure

Postponing the exam after the amendment of ILPTO circular 35/2017

Deferring applications submitted after 05/06/2024

  1. The applicant will submit a response to Section 18 [Notice before Examination].
  2. Applicant submits the request for deferring of examination directly on the website and pays for it.
    It is the applicant’s responsibility to ensure submitting the request no later than three months from the estimated date of the examination.

    In order to check until when requesting 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 expected date of examination.
    In a divisional request, submitting the request must be together with the answer to section 18.

  3. Deferring confirmation by ILPTO will include the end of the deferring. i.e., the new date of examination

Comments:

ILPTO  should be sending confirmation within 5 working days.

The ILPTO will continue sending the section 18 notifications.

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

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

When the examination is impending, the ILPTO will:

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

The ILPTO automatically grants deferring up to 2 years examination.  The deferring may be for 6 months, 1 year, or 18 months.

If the applicant requests deferring and pays at the time of response to section 18 the applicant may then decide not to defer the examination prior to 3 months of the start of examination.  In this case, the ILPTO will refund the fee for deferring.

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

Filing the deferring request may be done up to 3 months prior to this date. 

Deferring online

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

Sending Notice according to section 18:

  1. The applicant will enter the date of the end of the deferral of the examination in their application directly on the website.
  2. The website will automatically check the duration of deferring examination of the application.
  3. When the duration of the deferring examination is less than two years: the applicant pays.
  4. Confirming the date of the end of the deferral.

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

  1. Submit a request to be checked for the reasons for the deferral
  2. If the request is granted, the applicant pays the Israel Patent Office sends confirmation with the date of the end of the deferring.
  3. If ILPTO does not grant the request, Israeli Patent Office will send a rejection with details of the reason for the rejection.

Comments:

ILPTO will limit extentions to responding to section 18 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.

Deferring 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, submitting the deferring of the examination can be done part of an answer to section 18 or an independent application on the website only when submitting on the same day of submitting the answer to section 18.
  3. The website of ILPTO will automatically check the duration of deferring 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.

A presentation of the changes is available here [in Hebrew].

Jennifer Teff

Patent attorney

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