The Patenters - חברה לרישום פטנטים

The sad? state of oppositions in Israel


On November 14, 2016 Adv. Asa Kling, Director of the Israel Patent Office, Commissioner of Patents, Designs and Trademarks, presented: The Israeli Patent Opposition Proceedings –a Fact-based Review, at an IP event of LES Israel and IPAA.


The Israel Patent Office used to include information in its annual report about oppositions, see for example the report of 2011. However, in the 2015 report this information has not been made available.   The presentation of Asa led me to understand that the reason for the withholding was an ongoing internal discussion whether such information should be shared with the public, and statistics that may imply that the history of oppositions is nothing for the Patent Office to flaunt.


The opposition procedure is seemingly rarely used: Only about 30 oppositions are filed per year.  The majority never reach full fruition, due to either the opponent or the patentee prematurely withdrawing.  The premature withdrawal might stem from the stagnation of the procedure: the procedure includes many stages, each stage subject to generous delays by either party.  As a result, a full fledged procedure takes on average 8 years!  Indeed, an associate remarked to me that no wonder the opposition procedure is so seldom invoked.


The Commissioner did seem to be not quite his confident self, presumably humbled by the numbers, albeit he put on a brave front and exclaimed that perhaps nothing was wrong nor needed fixing, and that perhaps the public’s interest is adequately served.


While the amount of oppositions is low, one should realize that the percentage of oppositions relative to the amount of granted patents is not substantially lower than in Korea and in China.  However, about 1 in 20 patents in EPO and Japan are opposed.  5% sounds a lot more reasonable than 0.5%.  China has the excuse of a new patent system.


Of those oppositions in Israel that do reach the full extent, almost all result in rejection of the patent.  


I have always been under the impression that the Israeli Patent Office does a good job; but perhaps they are a bit too lenient in unopposed allowances – yet not lenient enough in oppositions?  


The opposition procedure is a very important control of IP monopoly rights available to the public,  not just in respect of Applicant’s competitive commercial activity, but also as an independent quality control of the Patent Office.  


Having conducted some opposition procedures, and worked in litigation, I know that although they are locally cost effective relative to litigation at court, they are still a major expense, as each round might easily cost 25,000$.


It is imperative to speed up the process to lower costs, which naturally balloon the longer the procedure continues, and thus keep an Israeli patent, which is often of modest commercial value, worth pursuing.


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