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

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

2. Search & Examination of Patent Applications

3. 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 Search & Examination of Patent Applications 3

4. The Israeli Patent Authority was approved as an ISA/IPEA on Sept. 2009 greater workload Search & Examination of Patent Applications 4

5. Israeli Patent Law 1967Article 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;” Search & Examination of Patent Applications 5

6. Israeli Patent Law 1967Article 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; “ Search & Examination of Patent Applications 6

7. 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 Search & Examination of Patent Applications

8. Search Resources Prior Art Databases (STN, THOMSON Innovation, Derwent, PatentScope, Google, Esp@cenet, SCIRUS, Chemical Spider, Pubmed (BLAST)). Cooperation with IP Offices (EPO – Epoque). Search & Examination of Patent Applications 8

9. Israeli Patent Law 1967Article 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.” Search & Examination of Patent Applications 9

10. Israeli Patents Law 1967 –Article 17(c) List of the Countries: Austria , Australia , USA, UK Germany Denmark, Russian Federation , Japan EPO Norway Canada Sweden Search & Examination of Patent Applications 10

11. 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" Search & Examination of Patent Applications 11

12. 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.” Search & Examination of Patent Applications 12

13. 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.” Search & Examination of Patent Applications 13

14. HOWEVER: Modified examinations in accordance with section 17(c), as well as Commissioner’s Circulars M.N. 70 and M.N. 71 are requested for less than 20% of all applications submitted. Our applicants require substantive examinations. Search & Examination of Patent Applications

15. Israel excels in hi-tech and biotech The ILPO has very experienced specialist teams in these fields   This expertise is available for contracting search and examination services in accordance with international standards, to other IP offices The ILPO provides training in these fields to officials from other IP offices Search & Examination of Patent Applications 15

16. For your Attention