The State of Israel is considered one of the most fertile countries in terms of the development of new products and processes. Every year, thousands of patent applications are filed in Israel and from Israel.
In this article we will present a basic guide that explains what a patent is and details the steps that the inventor must take from the moment the idea came to his mind until the invention is registered as a patent in Israel and around the world.
What is a patent?
A registered patent is an intellectual property right on an invention that provides legal protection to its owner. The patent is a legal document issued by the state and gives its owner an exclusive (monopolistic) right to use the invention for a period of 20 years and allows him to prevent others from using it. The patent gives its owner a monopoly only in the country where it is registered.
Patent protection will be possible for any invention, whether it is a product or a process, in any technological field, provided that it is a new, useful invention that can be used industrially and has inventive progress.
Patent protection refers to the invention itself, which is the result of the inventor’s thought effort, and not to the physical object that was made based on that invention.
Why should you register a patent?
Registering a patent allows the inventor to protect his invention. A registered patent allows its owner to receive compensation from competitors who use the invention and provides strategic protection against competition in the same field. In addition, registering the invention as a patent is helpful in marketing the product and is critical for attracting investors.
The main conditions for registering a patent
Condition A – Novelty
An invention that is not new will not receive the validity of a patent. An invention is “new” if it has not been published publicly, either in Israel or abroad, before the date of the application for patent registration.
In order to check whether an invention is new, it must be compared with the previous publication. Prior publication is any description, written, oral or otherwise, which was presented before the date of filing the patent application. It is not required that a particularly broad public knew about the existence of the previous publication, nor is actual knowledge about the publication required. It is enough to show that a certain group of people had potential access to that publication before.
An invention is not considered new if there is at least one previous publication that fully describes it. That is, the previous publication should contain a complete description of all the components of the invention, so that a professional in the field can perform the invention. It is not possible to rely on a number of separate previous publications that create an overall picture of the invention in order to determine that an invention is not new.
In the case where the inventor tells about his invention to other people, before submitting an application for patent registration, it is a publication of the invention. Therefore, the confidentiality of the invention must be maintained until the date of filing the patent application.
Condition B – Inventive step
Inventive step is progress that does not seem like a matter of course to an average professional in the field based on the news that was published before the date of filing the application.
There are several tests for examining the inventive progress of the invention. The “persistent deficiency” test, which examines whether the invention presented a solution to a problem that has not been answered for a long time; The “commercial success” test, which examines how the invention was received in the market, considering the advantages of the invention itself; and the “reaction” or “surprise” test of the experts in the field, which deals with the reaction the invention provoked in real time among the community of professionals in the relevant field. These tests are not final and help to decide on the existence of inventive progress. “Average professional” is a person who has professional skill in the relevant field, but lacks imagination and inventiveness.
The steps to register a patent
Step 1 – Search
The first step is to check if the idea already exists. The search work should be comprehensive and thorough.
The purpose of the search is first and foremost to locate prior knowledge that was published and was available to the public before the application submission date, which may negate the innovation and/or the inventive progress of the invention. In the case where the invention already exists, it cannot be registered as a patent.
Also, the search may help the owner of the invention to determine whether his invention meets the criteria necessary for patent registration; Does the invention infringe someone else’s patent; What is the existing competition in the market in the relevant field; Is there any entity that has a registered patent in relation to the invention requested for registration, etc.
The initial search can be performed independently using search words and classifications in free databases such as the Ministry of Justice’s Patent Authority database, ESPACENE, USPTO, Google Patents, WIPO, etc.
If no registered patent with characteristics similar to the invention is found during the initial search, it is recommended to contact a professional patent search company and use its services.
Step 2 – Drafting
A patent application consists of two parts: the first part of the application is the verbal part which is called “SPECIFICATION”. The second part of the application is the blueprints. The purpose of the drawings is to clarify the description of the invention or the prior knowledge. There is no obligation to attach drawings.
Specification – The specification of the application consists of three parts:
BACKGROUND OF THE INVENTION – an introduction explaining the purpose of the invention and a concise description of the state of knowledge in the professional field to which the invention belongs.
This chapter aims to explain the problem that the invention came to solve; The currently existing solutions to the problem – the previous knowledge, existing in the field of the invention at the time of the submission of the application; and the shortcomings of the currently existing solutions to the problem.
This chapter helps to describe to the patent examiner the progress of the invention from a technological point of view in relation to the existing solutions to the problem that the patent seeks to solve.
DESCRIPTION OF THE INVENTION – In this chapter it is required to describe and explain the invention in detail as well as the methods of its execution and application.
One of the considerations for granting a patent is the expansion of existing knowledge in the field. Therefore, it is required to describe the invention in a complete, accurate and detailed manner, so that an average professional in the field can understand the invention and know how to apply and perform it, based on the description of the invention alone and without investing special efforts. There is no obligation to describe in detail components of the invention which are known and self-evident to an average professional in the field and it is sufficient to mention them in general.
The patent registrar may refuse to grant a patent in the event that the invention is not sufficiently detailed. Also, in the event that a patent is granted despite insufficient description, it is possible to request the cancellation of the patent retroactively.
CLAIMS – The claims part, which is the most important part of the patent, defines the patent monopoly. The claims reasonably arise from the description in the detail. The purpose of the claim is to define the field of protection requested regarding the invention, by defining its technical features, therefore, the claims must define the invention in a concise and clear manner. The innovation and the inventive progress of the invention are examined with reference to the invention as it is defined in the claims chapter.
This chapter consists of independent claims and dependent claims. The wording of the claims determines the extent of the monopoly granted to the patent owner. Therefore, on the one hand, the invention must be defined as broadly as possible, and on the other hand, an overly inclusive definition must be avoided so that the patent registrar or the court does not determine that the invention is not new or does not have inventive progress. Therefore, it is advisable to register several claims. The first claim will be an independent claim that defines the invention in the most inclusive and broadest way, and the other claims will be dependent claims that will define the invention in a narrower way.
The claim should be formulated concisely and clearly. The first (independent) claim should define the central parts of the product, or the central steps of the process subject to the invention. Dependent claims will be upgrades to the independent claim.
A claim should include only one sentence (even a very long one), and it should not include a reference to a description or drawing.
Step 3 – Filing in Israel
The patent gives its owner a monopoly only in the country where it is registered. That is, a patent registered in Israel gives its owner a monopoly only in the territory of the State of Israel.
The patent registration procedure in Israel is relatively cheap compared to other countries, such as the United States, China and certain countries in the European Union.
Filing a patent in Israel is possible for Israeli applicants or applicants from outside the country, who have an address for correspondence in Israel or who are represented by Israeli lawyers.
Step 4 – Examination
An application for patent registration is submitted to the Patent Authority and is examined by patent examiners who check whether it meets all the conditions for obtaining a patent. The examiners check whether the application is prepared as required and whether it is described satisfactorily.
The examiners perform a substantive examination of the application in order to check whether the invention meets the requirements regarding usefulness, industrial use and technological field. Also, the examiners conduct a search for prior knowledge taking into account the date of the application in global databases in order to check the existence of overlapping applications and in order to examine novelty and inventive progress regarding all the claims.
The examiners then draft a first notice of deficiencies detailing the deficiencies in the patent application, accompanied by appropriate explanations. In the notice of deficiencies, the examiners must refer to the merits of all the claims. If, after checking all the claims, only some of the claims are found to be ineligible, the examiners must also indicate in the notice the eligible claims. The examiners forward the received search results to the applicant. If previous patents that overlap the invention are found during the search, the applicant is required to explain why, despite these publications, the invention is new and has inventive progress.
The patent application is examined in relation to the publications that the examiner found in the search he conducted in the global databases, in relation to the publications found in the search conducted by examiners in other patent offices in the world where the applicant filed a patent application, as well as in relation to the publications known to the applicant. The applicant is required to update the Patent Authority regarding all publications that have been brought to his or his attorney’s attention.
The examination of the application lasts several years, but there is a possibility to submit a request to speed up the examination. After completing the review of the application and making the corrections to it, the examiner can approve the application or reject it. If the application is rejected, the applicant is entitled to file an appeal with the patent registrar. If the patent registrar also rejected the application, the applicant can appeal to the court.
Step 5 – acceptance and publication
The decision of the examiner or the patent registrar to approve the patent application is called “acceptance of the application”. After accepting the application, the Patent Authority publishes the summary of the application in the Patent Journal, and any person may submit an objection to the grant of the patent within three months from the date of publication. If no objection is filed, the patent is granted.
A person who believes that the patent should not be granted, may submit his objection to the registrar of patents, according to any of the reasons for which the registrar of patents is authorized to refuse to accept the patent application, such as: the invention is not new or does not have inventive progress, the invention is not sufficiently detailed or the objector, And not the applicant, is the owner of the invention.
The opposition procedure is administered as a judicial procedure before the patent registrar, which includes the submission of pleadings, evidence and summaries, and at the end the registrar decides whether to grant the patent or reject the application.
Step 6 – Patent certificate and patent renewal
When a patent is granted in Israel, it is valid for three months only. During this period of time the patent owner is required to pay a renewal fee. If the patent owner does not pay renewal fees, he may lose the patent. In order to reinstate a patent that has expired due to non-payment of renewal fees, special circumstances must exist.
Every country in the world has different renewal dates. As mentioned, in Israel the payment of the first renewal fee is within three months from the date of the grant of the patent. The renewal fee gives the patent a validity of 6 years from the date of filing the application for the patent (and not from the date of its receipt). After that, the patent must be renewed every 4 years by paying an appropriate fee. You can also pay an increased fee that will be valid for the entire 20-year period from the date of filing the patent application.
Step 7 – International application – PCT
Filing an international application in accordance with the PCT Convention allows the applicant to simultaneously submit applications for registering a patent for the invention in all member states of the Convention by submitting a single international application, instead of several separate national applications. The phase in which the patent is submitted in each country is called the “national phase” and the national patent offices have the unique authority to grant the patent.
The PCT application must be submitted within 12 months from the date of submission of the first application. Filing an application in the PCT route allows the applicant to submit patent applications in additional countries up to 30 months from the date of submission of the first application, while submitting an application in the normal route, allows the applicant to submit applications in additional countries within 12 months from the date of the first submission (ie, an additional 18 months postponement).
Also, in the PCT procedure, an international opinion and an international search report are received, and there is also the possibility to respond and make changes that will allow entering the national phase in a better condition, thus saving costs later in each of the countries. In some cases, the local examiners will adopt the position of the international examiner, And so the examination procedure in these countries will be shortened.
In some countries, when a positive international report is issued, it is possible to request an expedited procedure at the entrance to the national stage (PPH – Patent Prosecution Highway).
Step 8 – Submitting an application abroad – National phase
According to the Paris Convention, the date of filing the first application for a patent (priority date) in one of the countries that are signatories to the convention, will automatically be considered as the date of filing the application in all the countries that are signatories to it, provided that the application is filed in the other country within 12 months after the application is submitted in the first country. That is, from the date of filing the application for a patent in Israel, the applicant has 12 months to submit patent applications outside of Israel.
