After a patent application in Israel is examined and accepted, it is published in the Patent Gazette, in its upcoming monthly issue, as well as on its website, allowing any interested person to file a notice of opposition against the registration of the patent.
If no one opposes the registration of the patent, the patent will be registered and a Certificate of Registration will be granted.
Time limit for filing an opposition
Notices of opposition against the registration of the patent may be filed by anyone for any reason, within first three months from the date of the patent’s acceptance publication in the Israeli Patent Gazette. This three-month period is not extendable.
Who can file an opposition?
Any person who has previous rights and/or who has reasons to believe that he would be damaged by the registration of a pending patent may file an opposition.
Grounds for Opposition
Section 31 of the Patent Act lists three main grounds for opposition to grant a patent:
(1) There is due cause thereof the Registrar is empowered to refuse the acceptance of the patent application;
(2) The invention is not patentable within the terms of section 4 (2);
(3) The opponent claims to be the owner of the invention.
The opposition
the opposition must contain a statement showing how the opponent would be damaged by the registration of the pending patent, as well as a statement of the grounds for opposition.
What are the stages of an Opposition proceeding?
The process of opposition is quite similar to a “mini-trial”:
1. Filing a Notice of Opposition – In order to file an opposition, the opponent is required to file a “Notice of Opposition” stating the grounds for opposition.
2. Filing a Counter-Statement – The applicant may respond to Notice of Opposition (“Counter-Statement”). Failure to do so will result in the application’s dismissal. There is no official fee for filing a counter-statement.
3. Filing of Evidence – Each party will then need to present its supporting evidence (affidavits, consumer testimonies, surveys, expert opinions, advertisements, and so forth).
4. Hearing – After both parties file their evidence, an oral hearing is scheduled, during which Both parties and witnesses will testify and will probably be cross-examined.
5. Summation – At the end of the hearing, each party is required to present their written summations.
6. Decision – After both parties have presented or submitted their summations, the Registrar issues a decision concerning the registration of the opposed patent.
7. Appeal – In case any of the parties is interested in challenging the Registrar’s decision, they may file an appeal to the District Court within 30 days.
If you have any questions about patent oppositions in Israel, please contact us at office@dwo.co.il.
