Registered Israeli patent attorney
The following article explains what the duty of disclosure is with respect to patent applications in Israel, and discusses the requirements as set under the law and regulations. It further provides a short review of this topic in comparison with the requirements of the USPTO, EPO and Chinese Patent Office.
The main principle of a patent is to encourage innovation and provide lucrative incentives to inventors who spent time and money developing new technological solutions to common problems. The patent grants a legal monopoly on an invention to an inventor in exchange for disclosure of that invention to the public.
By providing a legal right to a person to prevent others from using the patented product, other people are motivated to try and find additional ways to produce the same product or even better, they will develop a superior product that will not infringe on the patented one.
The duty of disclosure in respect of patents is addressed in Section 18 of the Israeli Patent law and in Regulation 36. In addition, the Commissioner of Patents has issued Circulars with guidelines in this respect.
In general, an applicant is required to inform the Israeli Patent Office of any material in the area of the invention that was published before the date of the application that may affect the registration.
Usually, a request for information disclosure is issued by the Israeli Patent Office, few months before substantive examination. A response to this communication should be submitted to the Patent Office within four months from the mailing date of the communication. Extensions can be obtained upon payment of official fees.
The duty of disclosure applies from this mailing date onwards.
The duty of disclosure is an ongoing duty that lasts throughout the pendency of the patent application. Accordingly, if you become aware of any material information at any time before the patent is issued, you should promptly update the Patent Office.
The requirements for disclosure of information during the pendency of a patent application in Israel have been changed significantly in the last fifteen years.
Three recent amendments to Circular 035/2017 specify in detail when the duty of disclosure ends and when a procedure of re-examination may be carried out.
According to these recent amendments, the duty to disclose information does not end upon payment of the publication fees, but extends until the date of publication of the allowance in the Patent Journal.
Nonetheless, in cases where a patent application was allowed under section 17c (on the basis of a corresponding patent) then the duty to inform the Patent Office of opposition or cancellation proceedings initiated against the corresponding patent is extended until a patent certificate is issued for that application. That means extension of the normal period for an additional three months.
The circular provides an option to request re-examination for those applicants who became aware of a pertinent prior art after the examiner has concluded examination. However, after the recent amendments, in the event that, an applicant wishes to re-examine the application in view of newly revealed publication, s/he must then inform the examiner when exactly this publication was revealed. The examiner has now the authority to deny a request for re-examination in certain circumstances (when the relevant material could have been submitted earlier).
Everyone involved in the filing and prosecution of a patent application has a duty to disclose to the Patent Office all information which is relevant in assessing the patentability of the invention which is the subject of the patent application.
The Israeli patent law provides the Commissioner of Patents or court the authority to revoke a patent, grant a license or order reduction of the patent term if the applicant or his representative knowingly avoided informing the Patent Office of a substantive reference. The court may impose a fine on the person responsible.
The United States has similar disclosure rules to Israel. The main difference is that until now no real time frame for submission of prior art had been set in Israel. Whereas the United States Patent & Trademark Office (USPTO) requires submission of an information disclosure statement (IDS) within three months from the date when the item was first cited in any communication from a foreign patent office in a counterpart foreign application, Israel did not have any time frame for updating the Patent Office. Until now, as long as the material was filed before payment of the publication fees, the applicant has complied with the requirement of the Israeli law.
Current amendments will enable the Israeli Patent Office to deny a request for re-examination in certain circumstances (when the relevant material could have been submitted earlier).
China requires the submission of “reference materials relating to the invention,” and their patent office can require the submission of any patent searches carried out by a foreign office. The penalty for failing to do so is invalidation of the patent.
The EPO does not require disclosure of potentially relevant prior art on all patent applications, as is required for example by the USPTO. However, information disclosure requirements apply under some circumstances.
Most countries do not require the applicant to report the result of counterpart searches or submit any information regarding prior art known to him in the area of the invention.
If you wish to receive our advice regarding information on disclosure duty in Israel, we will be happy to assist.
Additional information in Hebrew.
This information is simplified and must not be taken as a definitive statement of the law or practice.