In Israel there is an arrangement that is relatively unique in the world that allows extensive amendments to the patent application before the patent is granted. This great flexibility in the patent registration procedure in Israel gives clear priority to the filing of a patent application in Israel as the first application that determines the law of priority date.
According to Section 22 of the Patents Law, a patent applicant may request to correct the specification in a patent application that has not yet been accepted for registration, and this is almost without any restriction. [1] Thus, in the Tnuva matter, [2] it was clarified that the patent applicant may, without the need to obtain permission, amend the specification (including the claims) at any stage until the application is accepted.
A different arrangement exists in the European Patent Office. This office does not approve amendments that add matters that were not included in the application as submitted, amendments that expand the scope of protection of a granted patent or amendments that create a defect in the application that did not exist before the amendment. Whereas in the United States, the US Patent Office will reject the initial amendments (amendments received at the US Patent Office on or before the date of sending the examination report) under the following conditions: (1) initial amendments that cancel all claims without introducing new or additional claims; (2) amendments Initial applications may be rejected if the initial amendment unlawfully interferes with the preparation of the first examination report for the application. In the United States, in order to add substantial new material to a patent application, a continuation-in-part application procedure must be followed, a procedure that allows the right of priority to be preserved for the material in the original application and a new Kadami law for the sake of the new knowledge.
This article will refer to the procedure for making substantial corrections in a patent application before acceptance, as distinguished from corrections in a patent after it has been registered. In the article we will review the scope of corrections that can be made in a patent application in Israel, we will explain which corrections are of a substantial nature and we will present the risk of making substantial corrections in a patent application.
What is the scope of the correction that can be made in a patent application in Israel?
Sections 22 and 23 of the Patent Law allow the patent applicant to amend his application before acceptance.
Section 22 of the law establishes the right of the applicant to amend the details of the application:
“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.”
Section 23 of the law states that the date of the application regarding sections 4, 5 and 9 will be determined according to the nature of the amendments:
“Amendments of a substantial nature have been introduced in detail, the registrar may determine with regard to sections 4, 5 and 9 –
(1) If it is possible to distinguish between those amendments and the existing detail – that the date of the amendments is the date on which they were submitted to the Authority;
(2) If it is not possible to distinguish between the amendments and the existing detail – that the date of the entire application is the date on which the amendments were submitted to the Authority.”
These sections allow the applicant to introduce into the patent application also new subjects that did not appear in the patent application as submitted and in fact to completely change his application. However, section 23 states that if the examiner believes that the amendment introduced to the application is substantial, he must determine that the date of submission of the amendment is the date in relation to which the patentability of the invention will be examined.
According to this section there are two situations in which a substantial amendment is made to a patent application which leads to a new date: one, a substantial amendment in which it is possible to distinguish between the amendments and the existing detail – in this situation, the priority date that will be set for the amendments is the date on which the amendments were submitted to the Authority, while the date of the rest of the patent application will remain intact The second, a substantial amendment where it is impossible to distinguish between the amendments and the existing detail – in this situation, the priority date that will be set for all patent applications is the date on which the amendments were submitted to the Authority. It should be emphasized that a substantial amendment of a claim in which new material has been added will cause the entire claim to receive a new date.
What are those “corrections of a substantial nature” referred to in Article 23?
In the working instructions for examining a patent application [3], the concept of “substantial amendment” was defined as an amendment that causes a change in the content of the application as first submitted. The amendment will be considered to cause a change in the content of the application as first submitted if the amendments in the content of the application (adding material, change or deletion) add new information to the application that was not explicitly, implicitly or inherent in the application as first submitted.
Also, the term “immaterial amendment” was defined as an amendment that does not change the content of the application as it was first submitted.
In the case of Banyaho Lebanon [4] it was determined that after the amendments, the detail and the claims are substantially wider in scope, compared to the original request. Under these circumstances, it was determined that “corrections of a substantial nature” were introduced in the specification of the invention, as defined in Section 23 of the Patent Law.
The exam instructions indicate highlights and examples of substantial corrections:
Amendments to claims
– If the applicant added new material to the description as a reference to the claim, the amended claim and the relevant part of the description will receive the date of submission of the new material according to Section 23 of the Patent Law (according to the examiner’s discretion).
– Adding a proviso to the claim – the examiner will examine whether the mere addition of the proviso may add a technical contribution or new meaning to the claims, compared to the invention defined in the original specification (for example, removing an element that was described or demonstrated in the specification of the application as an essential element for the invention for which a patent is requested, changes the scope of the invention compared to the description of the specification in the original).
– Late choice – A late choice of a combination of components (combination) which was not an indication to the professional exposed to the detail on the date of submission of the application to reasonably choose it compared to the other options that fall within the field defined in the detail of the application as submitted, will be considered a choice that adds a technical contribution or new meaning to the application compared to the invention that was described in the details of the original application, then the defendant’s amended scope will not be considered to reasonably derive from the original description of the invention.
– Adding a specific aspect to the details of the request – Adding a specific aspect to the details of the request will be considered a substantial amendment, when if not for the addition of the claim to that specific aspect and/or to the broader aspect, it would have been found to be unfounded. For example, in the field of organic chemistry – adding a new compound to the details of the application will be considered a substantial amendment.
– An auxiliary test for a substantial correction – the examiner must check whether the correction requires an additional search for previous knowledge? If the answer is yes – the amendment may be considered a substantial amendment.
Corrections to the request description
– Adding a way of performing the invention, which was not mentioned in the application in the first place, will be considered a substantial amendment.
– In the case where an aspect of the claim is described as originally filed, but not described in detail, the description can be amended to include this aspect as it is described in the claim. However, if the applicant adds additional explanations to the description, the amendment will receive a new date.
– Overcoming a deficiency regarding the usefulness of the invention by adding new material to the description will be considered a substantial amendment of the application.
How should a substantial correction be marked?
From a technical point of view, in a request to correct the detail that includes substantial corrections that can be distinguished from the existing detail as mentioned in section 23(1) of the law, the applicant must mark the sections in which the substantial corrections were inserted on the date they were submitted to the Authority, according to the provisions of regulation 22(c) of the regulations. The marking and date must be done as follows:
The risk of making substantial repairs
Section 23 of the Patents Law may place an obstacle before an inventor who did not prepare the patent application properly, and is forced to make a substantial correction in the details of the patent application. A substantial amendment in the detail of the patent application may result in the date for the examination according to sections 4, 5, and 9 of the law of the entire or part of the patent application being determined according to the date of submission of the amendments.
Conclusions
In conclusion, we note that, the difficulties presented above, together with the fact that this is a different arrangement from the other arrangements that exist in the countries of the world, raised the question of whether this unique arrangement is necessary? [5] We believe that this arrangement allows the patent applicant great flexibility as part of the examination procedure, flexibility to correct deficiencies in the application as submitted and increases the likelihood of patent registration, on top of that, in a situation of further development of the invention in the examination procedure, the possibility of adding new technical material that was not described in the application is allowed in the original patent without the need to submit a new patent application for these additional developments. Also, this arrangement does not harm transparency towards the public regarding the scope of the invention and its dating. Beyond that, this arrangement is essentially no different from the existing arrangement in the United States regarding a continuation-in-part request.
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)).
