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Patent Examination Guidelines Update 2020

Patent Examination Guidelines Update 2020

Patent Examination Guidelines 2020: The Israel Patent Office has issued their now-annual Guidelines for Examination document (in Hebrew) on December 29th 2019.  Patent Examination Guidelines Update 2020 is open to comments by the public for a month.

The following summarizes the main changes and our comments.

Criteria for determination of eligible subject matter in software-based inventions

A number of examples have been added to the current examples, to help illustrate what the Israeli Patent Office’s standards are.  Israel’s standards are fairly close to those of EPO.  While I agree with the conclusions in each of the examples, I don’t agree that the test should be whether the “something more” (in my free interpretation of what is focused upon) is obvious, but rather should be as currently applied in USPTO, namely well-understood, routine, and conventional, as is discussed in a recent article of Patent Docs.

Method of Treatment

The new Guidelines also adds many examples of inventions that include some element of treatment of a human.  The main thrust of the examples is that the inventions are allowed to have such element, as long as it is a minor aspect of the treatment.  For example, in EP2687184:

A computer implemented tool tracking method comprising: determining a computer model of a
tool; receiving a captured image including a view of the tool; determining an estimated position
and orientation of the tool from the captured image, and positioning and orienting the computer
model at that estimated position and orientation in reference to the captured image; and modifying the estimated position and orientation of the computer model with respect to an image of the tool in the captured image until the computer model approximately overlays the image so as to correct the estimated position and orientation of the tool for the captured image.

The Patent Office reasons that although the tool navigation method is inseparable from the surgery itself, the navigation is not performed on the patient but rather outside the body.  Therefore, the claims are not method of treatment claims.

Similarly, in US7198630:

A method of controlling a surgical instrument connected to a surgical robot comprising the steps
of: locating a controller robot between a handle and a surgical instrument; sensing incident force
components present on the handle generated by a surgeon’s hand; modulating the incident force
components in the controller robot; and outputting through the controller robot a modulated force
on the surgical instrument.

Control of the instrument is performed outside the patient.

Interviews with the examiners

The Guidelines now add that prior to the interview a Notice will specify what are the major issues that will be discussed at the interview.

I propose to remove the word “major” since this is a word open to interpretation and abuse.  Indeed I have been present at an interview requested by the Israel Patent Office, in which issues were first raised that should have been discussed before the interview, or at least a fair warning should have been provided.  These included the examiners asserting what the invention and novelty are without appropriate consideration to my arguments.

I also suggest that the Patent Office allow video conferences that allow the applicant to join, and that the interview be conducted in English if the applicant is foreign.

You are welcome to send us your comments regarding the Patent Examination Guidelines Update 2020.

Howard Teff, Ph.D.,

Patent attorney

Addendum February 15th 2020:

Following mine and other’s comments the obviousness test  is not employed during the examination of the eligibility of subject matter.  However, empoying said USPTO test guideline was not accepted, since apparently this issue was generally already discussed at the Israeli Patent Office and the decision was not to adopt the US approach.

The patent office did not accept the suggestion to strictly stick to the issues that were specified in a notice prior to the interview.  However, they did accept my suggestion to notify in advance who will be present at the interview.

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