Israeli patent law allows not only the patent applicant, but in certain circumstances also a third party, to request expedited examination of a pending Israeli patent application.
This mechanism is materially different from an applicant’s request for accelerated examination. It is intended for situations in which the continued pendency of another party’s patent application creates commercial, technological or public-interest uncertainty for a third party.
Applicant-initiated routes, including On-the-Spot examination, PPH/GPPH and Green Patent Applications, are discussed separately in our guide to Expedited Patent Examination in Israel.
A third-party request may also form part of a broader patent litigation strategy where a pending application creates commercial uncertainty and an earlier refusal or acceptance may affect the parties’ positions. See Patent Infringement Litigation in Israel: A Guide for Foreign Counsel.
Who May Request Expedited Examination as a Third Party?
Section 19A(c) of the Israeli Patents Law permits a person who is not the applicant, is not related to the applicant and is not acting on the applicant’s behalf to file a reasoned request, supported by an affidavit, for expedited examination of a patent application that has been published under Section 16A.
This route is therefore aimed at an independent third party, such as a competitor, another inventor or another market participant whose activities may be affected by the continued pendency of the patent application.
Grounds for a Third-Party Request
A third-party request may be considered where one of the statutory grounds is established. These include:
- a substantiated concern that examination in the ordinary queue will cause the third party, acting in the field of the invention, to postpone development or manufacture of a product or process claimed in the application;
- an unreasonable period of time since the application was filed or entered the national phase, including a delay that is significantly longer than the time taken to begin examination of similar applications;
- public interest; or
- special circumstances justifying expedited examination.
Why Would a Competitor Seek Earlier Examination?
A pending patent application can create significant commercial uncertainty. A competitor may need to decide whether to proceed with development, manufacturing or commercialization while the scope and validity of the pending claims remain unresolved.
If the competitor proceeds and the application is later accepted and granted, the activity may create patent infringement exposure. If the competitor refrains from entering the market and the application is ultimately refused, the competitor may have unnecessarily delayed development or lost commercial opportunities.
For that reason, a third party may prefer an earlier substantive examination and earlier resolution of the pending application rather than prolonged uncertainty.
Procedure for Filing a Third-Party Request
The request should be reasoned and supported by an affidavit establishing the relevant facts. A third-party request under Section 19A(c) is considered through the Israel Patent Office’s preliminary examination process and is brought for decision by the Registrar.
If examination is expedited at the request of a third party, the patent applicant may not receive an extension or stay unless it is required for reasons beyond the applicant’s or representative’s control or ability to prevent.
Relationship to Patent Opposition Proceedings
A third-party request for expedited examination is not itself a patent opposition. Its purpose is to advance examination of the pending application. If the application is ultimately accepted and the acceptance is published, a third party may then consider whether to file a formal patent opposition in Israel.
This makes the mechanism particularly relevant to potential opponents who prefer the validity and scope of the pending application to be resolved sooner rather than remain uncertain for an extended period.
Strategic Considerations
Before filing a third-party request, it is important to assess whether the statutory ground can be supported with concrete evidence and whether accelerating examination is commercially advantageous. Earlier examination may lead to refusal of the application, but it may also lead to earlier acceptance and an earlier need to decide whether to oppose the patent application.
Drori-Stav IP advises clients on expedited examination, third-party requests and related proceedings before the Israel Patent Office as part of its broader patent services in Israel.
For further discussion, see Y. Drori, Patent Law, Perlstein Ginosar Publishing, pp. 603-618 (2023) (Hebrew).
