Israeli Patent Law Amendment No. 9 is Published – PCT related

Amendment No. 9 to the Israeli Patent Law regarding Israel patent search
and Israel trademarks search, regulates the new functions of the Israeli Patent Authority as an International Patent Authority for the PCT, capable of searching and examining patents under the PCT – Patent  Cooperation Treaty.

Amendment No. 9 was due to take effect within 30 days from the day it was published (December 8, 2011).  However, the Minister of Justice can postpone the effective date order, and according to the Israeli Patent Authority’s website the revision has not yet come into effect and a notice of which should be published in the future.

With the entry into effect of this revision, the Israeli Patent Authority should complete the preparations needed and it is expected to start its activity in the first half of 2012 as a PCT searching and examination office.

The following issues are included in Amendment No. 9:

New Terms – The terms Patent “Office” or Patent “Bureau” were amended with the terms “Authority” or “The Authority”. Therefore from now on the Israeli Patent Office will be called the Israeli Patent Authority.

Amendment to Article 17 – The amendment will allow the Patent Office, if it was requested by the applicant, to produce a report of examination results of a patent application that is not an international application, in an identical manner to that of the international search report.

Amendment of Article 48A – Several amendments were added regarding the definitions of the new roles of the Patent Authority and the definition of the PCT was updated. The definition of “treaty” included the regulations of the PCT as they were in effect on January 1, 1994. The definition was updated to include reference to the latest regulations as they appear on the WIPO website.

Amendment of Article 48 (9) – This section sets the new functions of the Patent  Authority as an international Search Authority and International Preliminary Examination Patent Authority, regarding international applications in accordance with the PCT Treaty and the agreement signed with the International Bureau. The Patent Authority can now serve in these capacities that are related to applications filed by Israeli citizens and residents. Section 48(9)(b) allows the Patent Authority to serve in these capacities also in relation with citizens and residents of other states, as listed in the appendix to the agreement and from countries published in the Official Gazette. This will open the way for the Israeli Patent Authority to examine international applications filed by non-Israelis.

Summary of amendments to Article 48 (10) (a request to produce an international search report) – this article enables the Patent Authority examiners to conduct and issue PCT International Search reports.

Section 48 (11) (a request to produce a preliminary examination report) – According to the Patent Authority’s function as an international preliminary examination office, an applicant can apply for an application to review the compliance of his invention under certain conditions as prescribed in the PCT: being a citizen or resident of a state party to the PCT, whose application has been treated by the internationally search Authorities recognized.

Section 48(12) (objections on the decision examines the international application contains more than one invention) –The article indicates that a decision made by the examiner in accordance of an international application submitted, whether a request to produce an international search report or a preliminary examination report, that holds that it includes more than one invention, may be appealed to a body that can conduct reexamination. If the appeal is found justified, the additional fee will be refunded to the applicant.

Article 48 (13) (the aid of an international search report, an opinion provision and a preliminary examination report in decision regarding the patentability of a patent) -The international search report, an opinion provision and a preliminary examination report do not bind the examiner while preparing his decision regarding the patentability of the patent, yet he may use them in his examination in accordance with the Israeli law.