By Howard Teff, Ph.D. November 29th 2018
The Meeting of the Israel Patent Office 2018: mechanics and medical devices
The Meeting between the Patent Office staff and the public took place on November 20th 2018. We had been forewarned that not many issues had been raised by the public. However, actually the meeting was quite good. I attended the meeting with chemistry/life sciences the month before. The former meeting had more issues but seemed less interesting.
Specialization in mechanics and medical devices
The Israel Patent Office explained that the examiners each need to deal with applications from a wide range of fields. The Office is not large enough to assign each examiner to more specific fields.
Obviousness and inventive step issues
One of us practitioners raised the topic of using hindsight in obviousness rejections. We were advised that dragging out the examination might lead to the examiner over-delving into the application. Such “over involvement” favours the use of hindsight. In such cases the examination team leaders may help since they randomly access cases and examine them. Although at present there are no specifically QA personnel in the Israel Patent Office, there are expected to be during 2019.
Regarding combining references, there were complaints that sometimes these are drawn from fields that are not really from the field of the invention. The Patent Office divulged that motivation of a skilled in the art to combine references is a major tool in citing against inventive step. Often applications are examined by interns. However, as a safeguard the interns need to verbally make their case in front of their supervisor and convince them.
Positive examination results followed by negative results by the same office
Regarding early publication of the patent: apparently, when an application is examined by an expedited prosecution, a patent may be granted much earlier than the 18-months’ ordinary publication date. In such cases, the patent may be published much before the18 months. Delay of publication can be deferred to the 18 months by requesting and paying for a deferment. There have been cases where an Israeli patent has been granted but the examination of the PCT application finds a “killer”. That killer may require withdrawal of the priority application before publication.
There can be a large lapse between the time of answering the Notice before Examination and the first communication regarding the examination. Apparently this lapse is caused by work overload and computer-related problems. The Patent Office intends to add 20 examiners in 2019 to help address this problem.
Changes in the website of the Israeli Patent Office for the Israeli patent attorney and the public
The website of the Israeli Patent Office is constantly undergoing changes. I will add that many of the changes are unannounced, so that you never know whether what you planned to do will work the way it used to. The Office plans to add features useful to the public, such as allowing set-up of automatic alerts of events in competitors’ applications and access to our own applications’ file wrapper, currently unavailable until publication of the application.