Israel is a Contracting State of the Patent Cooperation Treaty (PCT), and foreign applicants may seek patent protection in Israel by entering the Israeli national phase of an international PCT application.
For foreign patent attorneys and IP counsel, the Israeli national phase procedure is relatively straightforward, particularly because applications may proceed in English. Nevertheless, the applicable deadline, filing requirements, international-phase amendments and local formalities should be reviewed before filing.
This guide summarizes the main points foreign counsel should consider when instructing an Israeli associate to enter the PCT national phase in Israel.
PCT National Phase Deadline in Israel
The deadline for entering the PCT national phase in Israel is 30 months from the priority date, both under PCT Article 22 and PCT Article 39.
Accordingly, foreign counsel should provide filing instructions sufficiently in advance of the 30-month deadline, particularly where amendments, changes in applicant details or translation issues need to be addressed.
Israel permits reinstatement of rights under PCT Rule 49.6 in certain circumstances, applying the “due care” criterion. However, this should be regarded as a remedial procedure rather than an alternative to timely national phase entry.
Requirements for Entering the PCT National Phase in Israel
The Israeli national phase is based on a valid international PCT application designating Israel.
In a typical case, foreign counsel should provide the Israeli associate with:
- the PCT application number;
- the international filing and priority details;
- the applicant’s current name and address;
- the international application, including the description, claims and drawings;
- details of any amendments made during the international phase;
- details of any change in the applicant’s name or ownership; and
- the foreign associate’s file reference and filing instructions.
The Israel Patent Office has a designated national phase entry form. The form is recommended, although WIPO notes that its use is not mandatory. Electronic filing is generally used in practice.
Foreign applicants should also ensure that an address for service in Israel is available. Under the national phase requirements, an applicant who is not resident in Israel must provide an address for notification in Israel. Representation before the Israel Patent Office may be undertaken by an Israeli attorney or a registered Israeli patent attorney holding a valid license.
Language Requirements for the Israeli National Phase
One practical advantage for foreign applicants is that the Israeli national phase may proceed in English.
Where the international application is already in English, a Hebrew translation is generally not required for national phase entry.
Where the international application is not in English, an English translation of the required parts of the application must be provided. Depending on the applicable PCT route and amendments made during the international phase, this may include the description, claims, text appearing in the drawings and relevant amended versions of those documents.
This makes Israel particularly convenient for PCT applications originally filed or published in English, as a separate Hebrew translation of the patent specification is not ordinarily necessary.
Which Version of the PCT Application Should Be Filed in Israel?
Before entering the Israeli national phase, foreign counsel should identify the version of the application that is intended to form the basis of the Israeli proceedings.
Where amendments were made during the international phase, the filing instructions should clearly identify them. This is particularly relevant to amendments under PCT Article 19 and amendments reflected in the annexes to an international preliminary examination report under PCT Article 34. WIPO’s national phase requirements contemplate submission of both the original and applicable amended versions in such circumstances.
Foreign counsel may also wish to consider whether additional amendments should be made for the Israeli application. This is a separate strategic question from the formal requirements for national phase entry.
Israeli law provides significant flexibility for amendments to a pending patent application before acceptance. For a more detailed discussion, see our article on Substantial Amendments to a Patent Application Before Acceptance in Israel.
Changes in Applicant Name or Ownership
Any changes that occurred after the international filing date should be reviewed before the Israeli national phase is entered.
Where the applicant’s name has changed, the Israel Patent Office may require evidence of the change. Similarly, where ownership of the application has been transferred, evidence of the assignment or transfer may be required.
Where the relevant change has already been recorded by the International Bureau and can be verified through WIPO’s electronic records, additional documentation may not be required by the Israel Patent Office.
Foreign counsel should therefore inform the Israeli associate of any changes in applicant name, address or ownership when sending national phase filing instructions.
Power of Attorney and Local Representation
Where an applicant is represented in Israel, the national phase filing should address the applicable power of attorney requirements.
The Israel Patent Office’s guidance identifies a power of attorney as one of the documents relevant where an applicant is represented. Foreign applicants must also maintain an address for notification in Israel.
For routine instructions, foreign counsel should provide the full applicant details and identify any corporate or ownership changes at the outset so that the appropriate filing and representation documents can be prepared without delaying national phase entry.
Official Fees for Israeli National Phase Entry
A national filing fee is payable when entering the PCT national phase in Israel.
Additional official fees may apply to unusually large applications. Under the current WIPO schedule, additional claim fees apply from the 51st claim onward, and an additional size fee applies for each additional 50 sheets exceeding 100 sheets. Official fees are periodically revised and should therefore be confirmed at the time of filing.
Foreign patent firms may contact us for the current official fees and our Israeli associate fee schedule before sending filing instructions.
What Happens After National Phase Entry?
Once the application has entered the Israeli national phase, it proceeds as an Israeli patent application and is examined by the Israel Patent Office under Israeli patent law.
The prosecution stage may involve substantive examination, examination reports, responses to objections, amendments and, where appropriate, requests for accelerated examination.
Those issues fall outside the scope of national phase entry itself. For a broader explanation of the subsequent procedure, see Patents Prosecution Process in Israel.
Where accelerated examination may be commercially important, see also Expedited Patent Examination in Israel.
Israeli PCT National Phase Filing Checklist for Foreign Counsel
To instruct Israeli counsel to enter a PCT application into the national phase in Israel, it is useful to provide:
- PCT application number
- Priority and international filing details
- Applicant name and address
- Your file reference
- The version of the claims to be pursued in Israel
- Details of any Article 19 or Article 34 amendments
- Details of any change in applicant name or ownership
- The applicable 30-month national phase deadline
- Any specific filing or prosecution instructions
Where the application is not in English, translation requirements should also be addressed in advance.
Providing this information at the outset generally allows Israeli counsel to review the file, identify any formal issues and proceed efficiently with the national phase filing.
Frequently Asked Questions About PCT National Phase Entry in Israel
What is the deadline for entering the PCT national phase in Israel?
The applicable deadline is generally 30 months from the priority date.
Can a PCT application enter the Israeli national phase in English?
Yes. English is an accepted language for the Israeli national phase. If the international application is already in English, a Hebrew translation is generally not required.
Is a Hebrew translation required?
Generally not where the relevant PCT application documents are available in English. If the international application is in another language, an English translation of the required parts must be provided.
Can claims be amended when entering the Israeli national phase?
International-phase amendments should be identified as part of the national phase filing. Further amendments may also be considered under Israeli law. For the Israeli rules concerning substantive amendments before acceptance, see Substantial Amendments to a Patent Application Before Acceptance in Israel.
Does a foreign applicant need an address in Israel?
Yes. A foreign applicant who is not resident in Israel must provide an address for notification in Israel.
What happens after the Israeli national phase is filed?
The application proceeds to prosecution before the Israel Patent Office. For a detailed overview, see Patents Prosecution Process in Israel.
Israeli Patent Counsel for Foreign Associates
Drori-Stav & Co. represents foreign law firms, patent attorneys, companies and corporate IP departments in patent matters before the Israel Patent Office, including PCT national phase entries and subsequent patent prosecution.
Foreign associates who need to enter a PCT application into the Israeli national phase may send us the PCT application number, filing deadline and filing instructions for review.
For filing instructions, an estimate of official fees or our current Israeli associate fee schedule, please contact our patent team.
