Foreign applicants may seek patent protection in Israel by filing a national patent application directly with the Israel Patent Office and claiming priority from an earlier foreign patent application under the Paris Convention.
For foreign patent attorneys and IP counsel, the main issues are the 12-month priority deadline, the priority claim, the documents required for filing, language requirements and Israeli filing formalities.
This guide focuses on direct patent filings in Israel that claim priority from an earlier foreign application.
The 12-Month Deadline for Filing in Israel
An applicant who wishes to claim priority from an earlier patent application must generally file the Israeli application within 12 months from the filing date of the earlier application.
Where several earlier applications concern the same subject matter, the earliest relevant application may determine the priority period.
Foreign counsel should therefore verify the 12-month deadline as soon as they receive instructions for an Israeli filing.
If the final day of the statutory period falls on a day that is not a working day in Israel, the deadline moves to the next working day.
Israeli law provides relief from a missed 12-month deadline only in limited circumstances. Foreign counsel should therefore send filing instructions sufficiently in advance whenever possible.
Claiming Paris Convention Priority in Israel
Foreign counsel should normally include the priority claim when filing the Israeli patent application.
Israeli law allows an applicant to add the priority claim within two months after the Israeli filing date. Nevertheless, providing complete priority information at the outset is preferable and avoids unnecessary formalities.
Foreign counsel should provide:
- the priority application number;
- the filing date of the priority application;
- the country or patent office in which the earlier application was filed; and
- details of any additional priority applications.
Israeli law allows both multiple priority claims and partial priority claims. Different parts of an application may therefore benefit from different priority dates where the statutory requirements are met.
The priority claim protects only subject matter that the relevant earlier application sufficiently supports. If the Israeli application contains additional subject matter, that new material may not benefit from the earlier priority date.
Documents and Information Required for Direct Filing in Israel
To prepare a direct Israeli patent filing, foreign counsel should normally provide:
- the applicant’s full legal name and address;
- inventor information;
- the title of the invention;
- the patent specification;
- the claims;
- drawings, where applicable;
- full details of all priority applications;
- information about any change in the applicant’s name or ownership;
- the foreign associate’s file reference; and
- any specific filing instructions.
An Israeli patent application must identify the applicant and include a patent specification. The applicant must also provide an address for service in Israel.
The specification should describe the invention and explain how it can be performed. The claims define the scope of protection sought.
Where the applicant is not the inventor, the filing should also identify the basis on which the applicant became entitled to the invention.
Filing a Patent Application in Israel in English
Foreign applicants can file patent applications in Israel in English.
In practice, most patent applications filed with the Israel Patent Office are in English. An application that was originally prepared in English can therefore generally serve as the basis for the Israeli filing without a Hebrew translation of the specification.
This can significantly simplify the Israeli filing process for foreign applicants.
If the underlying application or supporting documents are available only in another language, foreign counsel should identify this issue early. Israeli counsel can then determine whether a translation is required and arrange it before the relevant deadline.
Priority Document Requirements
The applicant must support the priority claim with a certified copy of the earlier foreign application, including the specification and accompanying drawings.
Israeli patent practice generally allows the applicant to submit the certified priority document within 12 months after filing the Israeli application.
As a result, foreign counsel does not normally need to delay the Israeli filing merely because the certified priority document is not yet available.
Foreign counsel should nevertheless provide the priority document as soon as reasonably possible.
If the applicant requests expedited examination before the deadline for filing the priority document, the applicant must provide the certified priority document together with the expedited examination request.
Where the priority document is not in Hebrew, Arabic or English, the Israel Patent Office may require a translation.
Address for Service and Representation in Israel
Every Israeli patent application must include an address for service in Israel.
Foreign applicants normally satisfy this requirement by appointing an Israeli patent attorney or attorney. The Israeli representative can receive official communications and act before the Israel Patent Office on the applicant’s behalf.
Foreign counsel should provide the applicant’s complete legal details when sending filing instructions. This allows Israeli counsel to prepare the required representation documents without delaying the filing.
Official Filing Fees
The Israel Patent Office charges an official filing fee for a new patent application.
Additional official fees may apply to particularly long applications. The Israel Patent Office currently charges an additional fee for each additional block of 50 pages beginning with page 101.
Certain applicants may qualify for reduced filing fees.
Official fees change from time to time. Foreign patent firms may therefore contact us before filing to obtain the current official fees and our Israeli associate filing fee.
What Happens After Filing?
After filing, the Israel Patent Office assigns an Israeli patent application number. The application then proceeds through the Israeli patent examination process.
For a detailed explanation of examination, Office Actions, acceptance and the opposition period, see Patents Prosecution Process in Israel.
Israeli law also gives applicants significant flexibility to amend a pending patent application before acceptance. For further information, see Substantial Amendments to a Patent Application Before Acceptance in Israel.
Where faster examination may be commercially important, see Expedited Patent Examination in Israel.
Direct Patent Filing in Israel: Checklist for Foreign Counsel
To instruct us to file a direct Israeli patent application claiming priority from an earlier foreign application, please provide:
- Applicant’s full legal name and address
- Inventor information
- Patent specification and claims
- Drawings, if applicable
- Priority application number
- Priority filing date
- Priority country or patent office
- Details of any additional priority applications
- Details of any change in the applicant’s name or ownership
- The 12-month filing deadline
- Your file reference
- Any specific filing instructions
If the certified priority document is already available, foreign counsel may provide it with the initial filing instructions.
Frequently Asked Questions
What is the deadline for filing a Paris Convention patent application in Israel?
An applicant who wishes to claim priority from an earlier foreign application must generally file the Israeli patent application within 12 months from the filing date of the relevant earlier application.
Can a direct Israeli patent application be filed in English?
Yes. Applicants commonly file patent applications in Israel in English. Most applications filed with the Israel Patent Office are in English.
When must priority be claimed?
Foreign counsel should preferably claim priority when filing the Israeli application. Israeli law also allows the applicant to add the priority claim within two months after the Israeli filing date.
When must the certified priority document be filed?
The applicant may generally submit the certified priority document within 12 months after filing the Israeli patent application.
Can an Israeli patent application claim more than one priority?
Yes. Israeli law permits multiple and partial priority claims when the relevant statutory requirements are satisfied.
What is the difference between direct filing and PCT national phase entry in Israel?
A direct filing is an Israeli national patent application filed directly with the Israel Patent Office. Where the applicant claims Paris Convention priority, the filing normally takes place within the 12-month priority period.
A PCT national phase application follows a different route. The applicant first files an international application under the Patent Cooperation Treaty and later enters the Israeli national phase under the applicable PCT timetable.
Israeli Patent Counsel for Foreign Associates
Drori-Stav & Co. represents foreign patent attorneys, law firms, companies and corporate IP departments in patent filings and proceedings before the Israel Patent Office.
Foreign associates wishing to file a direct Israeli patent application may send us the priority application details, filing deadline, specification and filing instructions for review and filing.
For filing instructions, an estimate of official fees or our current Israeli associate fee schedule, please contact our patent team.
