Effective and Efficient Search and Examination of Patent Applications in Small and Medium Size IP Offices

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Effective and Efficient Search and Examination
of Patent Applications in Small and Medium Size
IP Offices
Israeli Patent Authority
The State of Israel Ministry of Justice
Second Global Symposium of IP Authorities
Presenting Dr. Meir Noam Commissioner
of Patents Trademarks and Designs
Head of the Israeli Patent Authority
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Search Examination of Patent Applications
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Search Examination of Patent Applications

• Almost 100 examiners in all technological fields
• More than 7000 patent applications per year, 75
  of which are PCT national phase applications
• Israeli patent law mandates substantive
  examination of applications

• Enormous workload

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Search Examination of Patent Applications

• The Israeli Patent Authority was approved as an
• ISA/IPEA on Sept. 2009

• greater workload

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Search Examination of Patent Applications

• Israeli Patent Law 1967 Article 18 (Due
  Diligence)
• access to work done by other IP offices
• The examiner shall use at least one of the
  following additional means of examination
• (1) the list of documents used by patent
  authorities in any foreign state in the
  examination of a patent application on the same
  patent application, submitted in a foreign
  country by the applicant or by his predecessor in
  title to the invention
• (2) a list of documents published before the
  application date, known to the applicant and
  directly connected with the invention

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Search Examination of Patent Applications

• Israeli Patent Law 1967 Article 18(5)
• (Cooperation with Foreign IP Offices)
• Transmission of the specifications of the
  application-in order to search for material that
  will enable the Office make the examination to an
  institution in Israel or abroad, with which the
  Office contracted under any Law by an agreement
  drawn up by the Registrar, including a section on
  keeping any patent application confidential and
  on nondisclosure under section 165

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Search Examination of Patent Applications

• SUGGESTION
• Creation of a source containing all pertinent
• prior art documentation cited by different IP
• offices against the same application, along with
• search examination reports
• Such a source will be accessible to all IP
• offices, free of charge

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Search Examination of Patent Applications

• Search Resources
• Prior Art Databases (STN, THOMSON Innovation,
  Derwent, PatentScope, Google, Esp_at_cenet, SCIRUS,
  Chemical Spider, Pubmed (BLAST)).
• Cooperation with IP Offices (EPO Epoque).

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Search Examination of Patent Applications

• Israeli Patent Law 1967 Article 17(c)
• If the conditions specified below are met by an
  application, then it shall be deemed to have
  complied with the provisions of section 4
  (novelty), 5 (inventive step), 8 (unity of
  invention), 12 (specification) and 13 (claims)
• (a) a patent in a country from the list
• (b) a priority claim
• (c) applicant request in writing
• (d) identical claims
• (e) identical description and drawings or
  according to Israeli Law.

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Search Examination of Patent Applications

• Israeli Patents Law 1967 Article 17(c)
• List of the Countries
• Austria , Australia , USA,
• UK Germany Denmark,
• Russian Federation , Japan
  EPO
• Norway Canada Sweden

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Search Examination of Patent Applications

• Israeli Patent Law 1967 - Article
• 17(d)
• Discretion of the Israeli Patent Authority
• The Registrar and also the Superintendent of
  Examiners or his deputy may refrain from
  accepting an application, if they determined on
  the basis of the material at their disposal or
  submitted to them in the course of the
  examination that the application does not comply
  with one of the provisions specified in
  subsection (c) or that there is some other
  special reason why the application should not be
  accepted"

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Search Examination of Patent Applications

• Circular MN. 70 regarding modified examination
  based on foreign patents (expansion of 17(c))
• 1. An application containing claims pertaining
  to methods of therapeutic treatment on the human
  body accepted in another country and rephrased,
  by examiner's request, to comply with the
  definitions of use claims, is deemed applicable
  to the present circular, as long as said
  application adheres to the remaining terms set
  forth in the present circular, (identical to
  17(c)).
• 2. When the Israeli application and the foreign
  patent are both national phase applications of
  the same PCT application, the Israeli application
  is entitled to a modified examination according
  to the circular if the other terms of 17(c) are
  met.

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Search Examination of Patent Applications

• Circular MN. 71 regarding modified examination
  based on a Favourable Search Report and Written
  Opinion or a Favourable Preliminary Examination
  Report
• An application having met all the conditions
  specified below shall be deemed to have complied
  with the provisions of sections 4 (novelty), 5
  (inventive step) and 8 (unity of invention) of
  the Israeli Patent Law 1967
• (a) National phase application in Israel or an
  Israeli application and later submitted through
  the PCT
• (b) Favourable International Search and
  Examination report (novelty, inventive step, and
  unity of invention)
• (c) applicant request in writing
• (d) identical claims.

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Search Examination of Patent Applications

• HOWEVER
• Modified examinations in accordance with
• section 17(c), as well as Commissioners
• Circulars M.N. 70 and M.N. 71 are requested for
• less than 20 of all applications submitted.
• Our applicants require substantive examinations.
  

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Search Examination of Patent Applications

• Israel excels in hi-tech and biotech
• The ILPO has very experienced specialist teams in
  these fields  
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• This expertise is available for contracting
  search and examination services in accordance
  with international standards, to other IP offices
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• The ILPO provides training in these fields to
  officials from other IP offices

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For your Attention