18-Month Publication Amendment Proposed to Israel Patent Law

On 27 June 2011 the Israeli government published a bill to amend the Israel Patent Law to include an 18-months publication requirement (Patent Law Proposal (Amendment No. 12), 2011).

Israel patent

At present, under Israeli law, there are two publication dates for Israel patent applications. The first shortly after the filing of the application. This publication is limited and comprise of the fact that an application was filed, the title of the application, and the applicant. The second publication takes place once examination is complete and the file is opened for public inspection. This application provides for the entire specification and other related documents.

Today, once a patent is issued the patent owner may bring an action against infringers retroactively from the time of publication, which is the time of publication in Israel. Since many applications are also filed with the PCT and are published after 18 months from the priority date, a third party can exploit the provisional rights in the PCT publication in Israel until the local publication occurs, usually some years later, without payment of damages to the patent owner.

Recently, this position was affirmed by the Israeli Supreme Court in Motion for Civil Appeal 6025/05 Merck Co., Inc. v. Teva Pharmaceutical Industries, stating that the patent application owner cannot use the theory of unjust enrichment to collect damages caused in the period between the first publication and the second publication by the Israeli Patent Office.

The bill therefore proposes to amend the Israeli Patent Law such that patent applications will be published 18 months after filing, or from their first priority date, or for international applications, three months after filing is completed in Israel. The bill also states that an application which has been refused or rejected by the 18-month deadline, will not be published.

Furthermore, the bill proposes to amend the Israeli Patent Law to allow the patent examiner to use publications and documents supplied by third parties. While Israeli patent Examiners are not prohibited from using such materials today, the law would make it clear that the Examiner may use such materials during the examination process.

The bill further provides that the short description of the invention filed for the purposes of publication would not be used for the interpretation the the specification of the invention, or be admissible as evidence.

The move to 18-months publication will require additional amendments relating to the secrecy of patent applications. The bill proposes to amend various provisions such that, as of the 18-month date, patent applications, their related documents, the prosecution history, any motion or hearing related thereto, will no longer be confidential and will be public.

Finally, the bill amends the term a patent owner can sue for damages retroactively. According to the amendment the issued patent owner will be able to sue for damages caused from the date of publication. Reasonable royalties may be awarded from the date of publication until the date of acceptance of the application for registration.