Once a patent application has been filed in Israel, it proceeds through examination before the Israel Patent Office.
For foreign patent attorneys and IP counsel, patent prosecution in Israel includes several local requirements that may differ from practice before the USPTO, EPO and other patent offices. Particular attention should be given to prior art disclosure obligations under Section 18 of the Israeli Patents Law, Office Action deadlines, amendments during examination and the opposition period following acceptance.
This guide explains the main stages of Israeli patent prosecution and the practical issues foreign counsel should consider when managing an Israeli patent application.
When Does Patent Examination Begin in Israel?
The Israel Patent Office examines patent applications according to their place in the examination queue.
There is no fixed period after filing at which substantive examination must begin. Waiting times may vary according to the technological field, workload and current Patent Office practice.
Once examination begins, the examiner reviews the application for compliance with the substantive and formal requirements of Israeli patent law.
Applicants who need earlier examination may, in appropriate circumstances, request accelerated examination. Several routes may be available depending on the circumstances of the application.
For a detailed explanation of these options, see Expedited Patent Examination in Israel.
Substantive Examination before the Israel Patent Office
During substantive examination, the examiner considers whether the claimed invention satisfies the requirements for patent protection in Israel.
The examination may address:
- novelty;
- inventive step;
- utility and industrial applicability;
- patentable subject matter;
- clarity of the claims;
- support for the claims in the specification;
- sufficiency of disclosure;
- unity of invention;
- formal requirements; and
- relevant prior art.
The examiner may conduct an independent prior art search. The examiner may also consider information from corresponding patent applications in other jurisdictions.
For international patent families, prosecution in Israel should therefore be coordinated with developments before foreign patent offices.
Section 18: Prior Art and Foreign Prosecution Disclosures
A particularly important feature of patent prosecution in Israel is the applicant’s disclosure obligations under Section 18 of the Israeli Patents Law.
During examination, the Israel Patent Office may require the applicant to provide information concerning prior art and documents identified during examination of corresponding applications abroad.
Relevant information may include:
- prior art cited by foreign patent offices;
- search and examination results from corresponding applications;
- references known to the applicant that directly relate to the invention; and
- copies of relevant documents where requested by the examiner.
The applicant must also update the Israel Patent Office when relevant information changes before acceptance of the application.
Foreign counsel should therefore keep Israeli counsel informed of material developments in corresponding applications before the USPTO, EPO and other patent offices.
This is especially important when new prior art appears during foreign prosecution.
Foreign examination results may also assist prosecution in Israel. For example, an allowed foreign claim set or persuasive response to a similar objection may help formulate an Israeli prosecution strategy.
However, the Israeli application remains subject to Israeli law. A claim allowed abroad will not necessarily be accepted in Israel.
Israeli Patent Office Actions and Responses
If the examiner identifies objections, the Israel Patent Office issues an examination report or Office Action.
An Office Action may raise issues concerning:
- novelty;
- inventive step;
- patentable subject matter;
- clarity;
- support in the specification;
- unity of invention;
- claim scope;
- formal requirements; or
- prior art and foreign prosecution information.
The applicant may respond with legal arguments, technical explanations, claim amendments or a combination of these measures.
Foreign counsel should provide Israeli counsel with relevant foreign prosecution materials when preparing the response. These may include:
- foreign Office Actions;
- search reports;
- amended claims;
- prior art analyses;
- arguments submitted to other patent offices; and
- notices of allowance or granted claims.
The Israeli response does not have to mirror the approach taken abroad. Differences in Israeli law and examination practice may justify different arguments or a different claim set.
Response Deadlines
Each Patent Office communication should be reviewed promptly to identify the applicable response deadline.
Foreign counsel should not assume that a deadline used before the USPTO, EPO or another patent office also applies in Israel.
Extensions may be available in appropriate circumstances, usually subject to the applicable requirements and official fees.
When an Israeli Office Action is reported to foreign counsel, the Israeli deadline and any available extension options should therefore be identified at the outset.
Amending a Patent Application during Prosecution
Israeli law gives applicants significant flexibility to amend a pending patent application before acceptance.
An applicant may amend the claims and specification during examination, including in response to an Office Action.
However, the nature of the amendment matters. An amendment that introduces substantive new matter can have consequences for the date attributed to the amended subject matter.
Foreign counsel should therefore distinguish between amendments that clarify or narrow the existing disclosure and amendments that introduce additional technical information.
This aspect of Israeli law may differ from amendment practice before the EPO or USPTO.
For a detailed analysis, see Substantial Amendments to a Patent Application Before Acceptance in Israel.
Acceptance, Opposition and Grant
If the examiner concludes that the application satisfies the applicable requirements, the Israel Patent Office accepts the application.
Acceptance does not immediately result in the grant of the patent.
The Israel Patent Office publishes the acceptance, which begins a three-month opposition period.
During this period, a third party may oppose the grant on grounds recognized under Israeli patent law.
If no opposition is filed within the three-month period, the application may proceed to grant.
If an opposition is filed, the patent will generally not proceed to grant until the opposition proceedings have been resolved.
Patent opposition is a separate adversarial proceeding before the Registrar of Patents. For a detailed explanation, see Patent Opposition in Israel.
Foreign counsel should therefore distinguish clearly between three stages:
examination → acceptance → grant
An accepted Israeli patent application is not yet a granted patent.
Practical Checklist for Foreign Counsel
When managing an Israeli patent application through local counsel, foreign patent attorneys should monitor the following:
- Israeli patent application number
- Current applicant and ownership information
- Current Israeli claim set
- Office Action and response deadlines
- Foreign search and examination reports
- Prior art cited in corresponding applications
- New references relevant to Section 18
- Amendments made in other jurisdictions
- Foreign arguments or allowed claims that may assist Israeli prosecution
- Any commercial need for accelerated examination
Relevant foreign prosecution developments should continue to be reported to Israeli counsel until the Israeli application is accepted.
A coordinated approach is particularly useful where the same patent family is undergoing active prosecution in several jurisdictions.
Patent Prosecution Costs in Israel
The cost of prosecution depends on the complexity of the application and the objections raised during examination.
A straightforward application may require only a limited response. A more complex application may involve several Office Actions, claim amendments, technical analysis or additional proceedings.
For information about filing and prosecution costs, see Patent Filing Costs in Israel: How Much Does It Cost to Register a Patent?.
Israeli Patent Counsel for Foreign Law Firms and Patent Attorneys
Drori-Stav & Co. represents foreign patent attorneys, law firms, companies and corporate IP departments in patent proceedings before the Israel Patent Office.
Our work includes Israeli patent prosecution, responses to Office Actions, Section 18 matters, claim amendments, expedited examination and patent opposition proceedings.
Foreign associates may send us the Israeli application number, Office Action, relevant foreign prosecution documents and instructions for review.
For Israeli patent prosecution instructions or our current associate fee schedule, please contact our patent team.
