Registered Israeli patent attorney
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Overlap rejections? Important revisions to Patent Examination Guidelines in Israel facilitate examination of divisional patent applications. See below how the new amendments affect your path towards patent registration. But, before we get to the point, lets review the basics.
In Israel, it is possible to file divisional patent applications from filing of an application until payment of the allowance fees. A divisional patent application should be directed to an aspect of the invention disclosed in the description but not claimed in the parent application.
Until now, the Israeli Examination guidelines (equivalent of MPEP) dictated that an examiner should issue an overlap rejection even in cases where two applications with same dates and same applicant comply with one of the following criteria:
Unfortunately, the Israel Patent law does not provide the option of filing a terminal disclaimer in response to double-patenting rejection.
We are glad to report that on February 10, 2020, the Israeli Commissioner of Patents has issued amendments to the Examination guidelines including a specific amendment regarding overlap. The Hebrew version of the amendments can be found here.
The amendment allows an examiner to stop raising overlap rejections in cases of divisional applications owned by the same applicant with claims covering different scopes of the invention, as long as they expire the same day.
In other words, from now on, overlap rejections in divisional applications with same filing dates and owner can be raised only when identical scopes are claimed.
Parent/Divisional1 claim: A+B+C
Divisional2 claim: A+B+C+D or A+B+C1 or A+B
Divisional2 claim: A+B+C
Effective February 10, 2020, this amendment will be applied to all applications which are currently under examination.
It is expected that the amendments will ease life for applicants.
No more wasting time on finding creative configurations of claims in order to avoid overlap.
Another issue is that the co-ownership of the overlapping applications will only be inspected during examination.
Helpful information regarding the filing requirements for Israeli patent applications .
Additional information regarding divisional applications in Israel can be found in a post I wrote with Adv. Lisa Mueller published in the blog BRICS & Beyond.