In Israel there is an arrangement that is relatively unique in the world, which allows extensive amendments to a patent application before the patent is accepted. This considerable flexibility in the Israeli patent registration process creates a clear advantage in filing a patent application in Israel as the first application establishing the priority date.
Under Section 22 of the Patents Law, a patent applicant may request to amend the specification of a patent application that has not yet been accepted for registration, almost without limitation.[1] Thus, in the Tnuva case,[2] it was clarified that a patent applicant may, without the need to obtain permission, amend the specification (including the claims) at any stage prior to acceptance of the application.
A different arrangement exists at the European Patent Office. The EPO does not allow amendments that add subject matter not included in the application as originally filed, amendments that broaden the scope of protection of a granted patent, or amendments that introduce a defect into the application that did not exist prior to the amendment. In the United States, the United States Patent and Trademark Office may refuse preliminary amendments (amendments received by the USPTO at or before the mailing date of the first Office Action) under the following circumstances: (1) preliminary amendments that cancel all claims without presenting new or substitute claims; (2) preliminary amendments that unduly interfere with the preparation of the first Office Action on the application. In the United States, in order to add substantive new matter to a patent application, it is necessary to proceed through a Continuation-in-Part procedure, which allows the applicant to preserve the priority date for the material contained in the original application while establishing a new priority date for the newly added subject matter.
This article addresses the procedure for making substantive amendments to a patent application before acceptance, as distinct from amendments to a patent after it has been granted. The article reviews the scope of amendments that may be made to a patent application in Israel, explains what constitutes amendments of a substantive nature, and presents the risks involved in making substantive amendments to a patent application.
What is the scope of amendments that may be made to a patent application in Israel?
Sections 22 and 23 of the Patents Law allow a patent applicant to amend the application before it is accepted.
Section 22 of the Law establishes the applicant’s right to amend the specification of the application:
“The applicant may at any time before acceptance of the application, whether following a notice under section 20 or on his own initiative, amend the specification of his application.”
Section 23 of the Law provides that the application date for the purposes of Sections 4, 5 and 9 will be determined according to the nature of the amendments:
“If amendments of a substantive nature were introduced into the specification, the Registrar may determine for the purposes of sections 4, 5 and 9 –
(1) where the amendments can be distinguished from the existing specification – that the date of the amendments shall be the date on which they were submitted to the Office;
(2) where the amendments cannot be distinguished from the existing specification – that the date of the entire application shall be the date on which the amendments were submitted to the Office.”
These provisions allow the applicant to introduce into the patent application even subject matter that did not appear in the application as originally filed, and effectively to change the application entirely. However, Section 23 provides that if the examiner considers that the amendment introduced into the application is substantive, he must determine that the date of filing of the amendment is the date against which the patentability of the invention will be examined.
Under this section, there are two situations in which a substantive amendment to a patent application results in a new date: first, a substantive amendment that can be distinguished from the existing specification – in this case, the priority date assigned to the amendments will be the date on which the amendments were submitted to the Office, while the date of the remainder of the application will remain unchanged. Second, a substantive amendment that cannot be distinguished from the existing specification – in this case, the priority date assigned to the entire patent application will be the date on which the amendments were submitted to the Office. It should be emphasized that a substantive amendment to a claim in which new matter is added will cause the entire claim to receive a new date.
What are those “amendments of a substantive nature” referred to in Section 23?
In the Patent Office Examination Guidelines,[3] the term “substantive amendment” is defined as an amendment that changes the content of the application as originally filed. An amendment will be considered to change the content of the application as originally filed if the amendments to the content of the application (addition of material, modification, or deletion) introduce new information into the application that did not exist explicitly, implicitly, or inherently in the application as originally filed.
Similarly, the term “non-substantive amendment” is defined as an amendment that does not change the content of the application as originally filed.
In Binyahu Lebanon,[4] it was determined that after the amendments, the specification and claims were substantially broader in scope than the original application. Under these circumstances, it was held that “amendments of a substantive nature” had been introduced into the specification of the invention within the meaning of Section 23 of the Patents Law.
The Examination Guidelines provide several examples and considerations regarding substantive amendments.
Amendments to claims
If the applicant adds new material to the description as support for a claim, the amended claim and the relevant portion of the description will receive the filing date of the new material under Section 23 of the Patents Law (subject to the examiner’s discretion).
Addition of a limitation to a claim – the examiner will examine whether the addition of the limitation itself introduces a technical contribution or new meaning to the claims compared to the invention defined in the original specification. For example, the removal of an element described or demonstrated in the specification as an essential element of the invention for which a patent was sought may change the scope of the invention compared with the original description.
Late selection – a late selection of a combination of components for which there was no indication to a skilled person reading the specification on the filing date to reasonably select that combination over other possibilities falling within the scope defined in the specification as originally filed will be considered as adding a technical contribution or new meaning to the invention described in the original specification. In such a case, the amended claimed scope will not be considered to reasonably derive from the original description of the invention.
Addition of a specific embodiment to the specification – adding a specific embodiment to the specification will be considered a substantive amendment when, without the addition of a claim to that specific embodiment and/or the broader aspect, the claim would have been found to lack support. For example, in the field of organic chemistry, adding a new compound to the specification would be considered a substantive amendment.
Auxiliary test for identifying a substantive amendment – the examiner should consider whether the amendment requires an additional prior art search. If the answer is yes, the amendment may be considered substantive.
Amendments to the description
Adding a mode of carrying out the invention that was not originally mentioned in the application will be considered a substantive amendment.
Where an aspect is described in a claim as originally filed but not described in the specification, the description may be amended to include that aspect as described in the claim. However, if the applicant adds additional explanations to the description, the amendment will receive a new date.
Overcoming a defect regarding the usefulness of the invention by adding new material to the description will be considered a substantive amendment to the application.
How should a substantive amendment be marked?
From a technical standpoint, in a request to amend the specification that includes substantive amendments distinguishable from the existing specification under Section 23(1) of the Law, the applicant must mark the passages in which substantive amendments were introduced with the date on which they were filed with the Office, in accordance with Regulation 22(c) of the Regulations. The marking and indication of the date should be performed as follows:
The risk involved in making substantive amendments
Section 23 of the Patents Law may present an obstacle to an inventor who did not properly prepare the patent application and is forced to make a substantive amendment to the specification of the application. A substantive amendment to the specification of the patent application may result in the relevant date for examination under Sections 4, 5 and 9 of the Law for the entire application or part thereof being determined according to the date on which the amendments were filed.
Concluding remarks
In conclusion, it should be noted that the difficulties described above, together with the fact that this arrangement differs from those existing in other jurisdictions around the world, have raised the question of whether this unique arrangement is necessary.[5] In our view, this arrangement provides patent applicants with significant flexibility as part of the examination process, enabling the correction of deficiencies in the application as originally filed and increasing the likelihood that a patent will ultimately be granted. In addition, in cases where further development of the invention occurs during the examination process, this arrangement allows the addition of new technical subject matter that was not described in the original patent application without the need to file a new patent application for those additional developments. Furthermore, this arrangement does not impair transparency toward the public with respect to the scope of the invention and its dating. Moreover, this arrangement is not fundamentally different from the system existing in the United States regarding a Continuation-in-Part application.
For more detail, see my book: Patent Laws, Perlstein Ginosar Publishing, pp. 637-643 – the book was published in 2023.
References:
[1] S. 22 of the Patents Law, instructs: “The applicant may at any time before the application is accepted, either following a notification according to section 20 or on his own initiative, correct the details in his application.”
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[2] RA 1092/18 Tnuva Cooperative Center for Marketing Agricultural Produce in Israel Ltd. v. Strauss Health Ltd. 4 (Nevo 25.12.2018).
[3] Ministry of Justice – Patents Authority Work Order No. 10-19/23.1 “Patent Application Examination, 2 (1st edition, 12.13.2017).
[4] Tel Aviv (Tel Aviv-Jaffa) 1075-99 Bneiho Levanon v. Yosef Gorkevitz (Nevo, 2001)
[5] In a call published by the Ministry of Justice at the end of 2020, the question arose whether it is appropriate to limit the amendments to the detail of the request to amendments that are not of a substantial nature? If so, how will the permitted amendments be defined, among other things against the background of the existing section 23 and sections 65 and 66 of the law? (Ministry of Justice, call for comments from the public as part of examining amendments to the Patent Law on a variety of issues (11/30/2020)).
