What is a patent?
A patent is a legal document that defines an invention. The patent gives its owner a monopoly on commercial exploitation of the invention. The monopoly is limited to the same country or region where the patent was registered. Sometimes the mere registration of the patent provides a sufficient deterrent to prevent its copying and commercial exploitation by competitors, and sometimes it is necessary for the patent owner to take action to preserve the monopoly, or to receive compensation for the use by the competitor in the same area.
It is useful to constantly monitor the economic activity of competitors to check whether they are exploiting the invention commercially. Those who do not follow may finally lose their right to prevent exploitation.
From our experience, the degree of exploitation by competitors depends on several factors:
- The degree of success of the invention in the market – if the product is successful then others also want to profit from the invention.
- The quality of the editing of the patent – a poorly written patent makes enforcement difficult and circumvention easier.
- The degree of novelty and the inventive step of the invention. If these are weak then the patent may be invalidated at trial.
- The field of interest of the invention – for example, methods of doing business are inventions that the US legislature has decided to discriminate against under the new US patent law. Also, we have heard many times from inventors or patent owners that there are areas in which it is not acceptable to sue for copying and therefore the deterrence is weakened.
- The size of the company that owns the patent and the reputation of the lawyers managing the litigation, compared to the competitors and the lawyers representing them.
It is usually advisable to start the patent acquisition process by submitting a first patent application, in only one region, for example in Israel. In the next step you have to choose one of three options:
- Submit additional patent applications, in selected regions of the world, within a year from the date of submission of the first application.
- Submit a PCT application within one year from the date of submission of the first application. This is a special request that buys time and allows you to submit only this request instead of many requests at this time. The additional applications still need to be submitted, but the deadline for submitting them is delayed until two and a half years after the time of submitting the first application.
- Submit one patent application again, after more than one year has passed since the first application was submitted. In this case, the process of registering patents is actually restarted. Care must be taken that the first application and/or use of the invention and/or publication do not destroy all patent applications. A patent attorney should be consulted.
In principle, the description of the invention in the PCT application does not have to be the same as the description of the invention in the first application, but all applications submitted after the submission of the PCT application must be identical in description to the description in the PCT application. That is why it is very important that the PCT application is prepared by a patent attorney.
About patents in IL
Some highlights in filing Israeli Patent applications
The Israeli Patent Law is similar to the EPC (European Patent Convention) in several respects: for example in exclusion of medical treatment methods subject matter, and generally regarding a system/apparatus and a related method/process as one invention. Multiple dependency of the claims is allowed.
Patent applications may be filed in English.
The filing fee is low and there are no maintenance fees to pay until grant. Our experience is that the Israel Patent Office generally does a high-quality and fair examination.
Applicants are entitled to invoke Section 17c of the Israeli Patent Law, during the examination of the application. The invocation is essentially a “me too” procedure wherein the Israeli Examiner is requested to view the claims as novel and having inventive step and sufficient support from the specification, based on grant of a patent for a corresponding application in selected countries.
The Israel Patent Office has PPH (Patent Prosecution Highway) cooperation agreements with China, USA, EPO, Denmark, Japan, Finland, Canada, Singapore and Spain.
Patent terms may be extendable up to 5 years if the subject matter is medical devices or a novel pharmaceutical compound. A request for extension must be filed within 90 days of the Israeli Health Ministry issuing a local marketing permit.