Patent opposition in Israel is a pre-grant proceeding conducted before the Israel Patent Office. After a patent application has been accepted and the acceptance is published, any person may oppose the grant of the patent within three months, provided that the opposition is based on one of the statutory grounds under Israeli patent law.
This procedure differs materially from the opposition procedure before the European Patent Office, where opposition is filed after the European patent has been granted. In Israel, the opposition forms part of the process that must be completed before the patent is granted.
For foreign patent attorneys and IP litigation counsel, this distinction is important. An Israeli opposition must be considered at an early stage, during the three-month period following publication of the accepted application. The proceeding may involve patentability arguments, prior art, technical expert evidence, ownership issues and questions concerning the scope of the claims.
Where an opposition forms part of a broader patent enforcement or defense strategy, see our Patent Infringement Litigation in Israel: A Guide for Foreign Counsel.
Drori Stav IP represents both opponents and patent applicants in Israeli patent opposition proceedings and acts as Israeli counsel for foreign patent attorneys, IP firms and litigation teams handling related matters in other jurisdictions.
When Can a Patent Opposition Be Filed in Israel?
Under Section 30 of the Israeli Patents Law, an opposition may be filed within three months from publication of the accepted patent application.
The Israeli system is therefore a pre-grant opposition system. The application has already passed substantive examination and has been accepted by the Israel Patent Office, but the patent has not yet been finally granted.
The three-month opposition period is a critical deadline. Foreign counsel monitoring an Israeli patent application of a competitor should therefore review the application promptly after publication of acceptance and determine whether there is a basis for opposition.
Where no opposition is filed within the prescribed period, the patent may proceed to grant. A later challenge may still be possible, but it will generally proceed through a different mechanism, such as a request for patent cancellation or a validity challenge arising in litigation.
For post-grant challenges, see our guide to Patent Cancellation in Israel.
Grounds for Patent Opposition in Israel
Section 31 of the Israeli Patents Law establishes the grounds on which an opposition may be based.
The first ground applies where there is a reason for which the Registrar could have refused to accept the patent application. This can bring into the opposition many of the substantive issues that arise during patent examination, including questions concerning novelty, inventive step, patentable subject matter, sufficiency of disclosure and other statutory requirements.
The second ground concerns the statutory requirement that the invention be patentable under Israeli law.
The third ground applies where the opponent claims that the opponent, rather than the patent applicant, is the owner of the invention.
An opposition therefore cannot be based merely on a commercial objection to the grant of the patent. The opponent must identify a statutory basis for preventing the patent from being granted and support that position with appropriate factual and legal material.
How an Israeli Patent Opposition Proceeds
An Israeli patent opposition is an adversarial proceeding before the Israel Patent Office and can develop into a substantial patent dispute involving pleadings, evidence, expert opinions, witness examination and legal submissions.
The first step is the filing of the notice of opposition within the three-month statutory period. After the notice has been filed, the opponent must submit a detailed statement of arguments within one month. That statement should identify the grounds of opposition, the relevant facts and the relief requested.
The patent applicant then has three months from the filing of the opponent’s statement of arguments to submit a counter-statement.
The proceeding subsequently moves to the evidentiary stage. In the ordinary course, the opponent submits evidence, the applicant submits evidence in response, and the opponent may submit reply evidence. The evidentiary material may include affidavits, technical documents, prior art, expert opinions and other material relevant to the patentability or ownership issues raised in the opposition.
The Israel Patent Office may then conduct an oral hearing. Witnesses and experts may be examined and cross-examined, after which the parties normally submit written summations. The Registrar ultimately issues a reasoned decision determining whether the opposition should be accepted, rejected or accepted in part.
Representing an Opponent in Israel
For a foreign company considering an opposition to an Israeli patent application, the first task is usually to determine whether the commercial concern can be translated into a legally sustainable ground of opposition.
That analysis may require review of the Israeli claims, the specification, the prosecution history and relevant prior art. It may also be necessary to review the prosecution of corresponding applications before the USPTO, EPO or other patent offices, particularly where statements, amendments or prior art from the foreign prosecution are relevant to the Israeli application.
Where invalidity is based on prior art, the strategy should address not only whether the relevant documents pre-date the application, but also how they affect the particular claims accepted in Israel.
Technical expert evidence may be important where the dispute concerns inventive step, interpretation of technical terminology, sufficiency of disclosure or the knowledge of the person skilled in the art.
Drori Stav IP assists foreign counsel in evaluating the available grounds, preparing the Israeli opposition, developing the evidentiary record and conducting the proceeding before the Israel Patent Office.
Defending a Patent Application against Opposition
A patent applicant facing an opposition should treat the proceeding as a substantive patent dispute rather than as an extension of routine prosecution.
The first step is to analyze the grounds asserted by the opponent and determine whether they are supported by the law, the prior art and the factual evidence. The applicant should also consider whether materials from corresponding foreign patent proceedings may assist in defending the application.
Claim amendments may sometimes form part of the response strategy, but any amendment should be considered carefully. The objective is not merely to overcome the immediate objection. The applicant should preserve claim scope that remains commercially meaningful and should consider the effect of the amendment on related patent proceedings and the international patent family.
The evidentiary strategy is equally important. Depending on the issues, the applicant may need technical experts, evidence concerning the development of the invention, prosecution records or other material supporting patentability or ownership.
Where foreign counsel is managing the wider patent family, coordination between the Israeli opposition and related proceedings abroad can be important to avoid inconsistent positions.
Burden of Proof in Israeli Patent Opposition Proceedings
The pre-grant nature of the Israeli opposition procedure has an important consequence.
The patent application has been accepted, but the patent has not yet completed the process required for grant. An opposition therefore represents an additional stage that the applicant must overcome before obtaining the patent.
Israeli case law has addressed the allocation of the burden of proof in opposition proceedings. Once an opponent establishes a sufficient basis for questioning the patentability of the invention, the applicant may be required to establish that the invention satisfies the requirements for patent protection.
This differs from the position after a patent has already been granted, where the existence of the granted patent affects the evidentiary framework applicable to a later cancellation proceeding.
For foreign counsel familiar with post-grant opposition systems, this distinction can be significant when planning the evidentiary and litigation strategy in Israel.
Patent Opposition versus Patent Cancellation in Israel
Patent opposition and patent cancellation both provide mechanisms for challenging patent rights, but they operate at different stages.
An opposition is filed after acceptance of the application but before grant. A cancellation proceeding challenges a patent that has already been granted.
This distinction affects the procedural position of the parties and can affect the burden of proof. It may therefore be preferable for a potential challenger to act during the opposition period rather than wait until after the patent has been granted, where the relevant grounds and evidence are already available.
Missing the opposition deadline does not necessarily prevent a later challenge to the patent, but the legal mechanism and procedural position will be different.
For more information, see Patent Cancellation in Israel.
Working with Foreign Counsel in Israeli Patent Oppositions
Foreign patent attorneys and IP litigation firms may instruct Drori Stav IP to act as Israeli counsel in an opposition proceeding.
At the outset, foreign counsel can provide the Israeli patent application number, the relevant opposition deadline, the corresponding international patent family, potentially relevant prior art and information concerning related proceedings in other jurisdictions.
Where the matter involves an existing international dispute, foreign counsel may also provide pleadings, expert reports, claim construction materials and prosecution records from related US, European or other proceedings.
We review the Israeli legal and procedural position, advise on the opposition strategy, prepare the required pleadings and evidence and conduct the proceeding before the Israel Patent Office. We coordinate with instructing counsel where the Israeli opposition forms part of a wider litigation, licensing or patent enforcement strategy.
Patent Opposition, Litigation and Commercial Strategy
An opposition may be only one element of a broader patent dispute.
For a competitor, the existence of an accepted Israeli patent application may affect market entry, product development, freedom to operate, licensing discussions or settlement negotiations. The decision whether to oppose should therefore be considered together with the client’s broader commercial position.
Likewise, a patent applicant defending an opposition should consider how the Israeli proceeding interacts with enforcement strategy, licensing discussions and related patent disputes in other jurisdictions.
Where the matter extends beyond the opposition proceeding itself, see our Patent Litigation in Israel page.
Israeli Patent Law Expertise
Our lawyers have authored publications on Israeli patent and intellectual property law, including the English-language book Intellectual Property Law in Israel and the book Patent Law. These publications address Israeli intellectual property law, patent procedure and patent disputes in greater depth.
See our books and publications.
For broader assistance with patent filing and examination, see our Patent Prosecution in Israel page.
For instructions concerning a patent opposition in Israel, contact our patent team at office@dwo.co.il.
