DUN'S 100 2016/17 - High-Tech & Technology Sector

Opinion Articles

2016/17

High-Tech & Technology -

DUN’S

100

Opinion Article

rofessionals are always in pursuit of quick,

reliable, and cost efficient patent pros-

ecution, while taking into account global

implications. Global patents as such are not yet

available, but small steps toward global prosecu-

tion have been gradually introduced in leading juris-

dictions. Newprocedural routes were developed by

the Israel Patent Authority (ILPA) in the last couple

of years, accruing unique benefits to Israeli appli-

cants, whichmay be available to foreign applicants

aswell. The Israeli channel can substantially reduce

risks

before

the filing of an international PCT ap-

plication or other national patent applications, by

taking advantage of an accelerated examination

of an Israeli priority application conducted by the

ILPA, in complete confidentiality. Subsequent filing

of a PCT application, while selecting the ILPA as the

InternationalSearching Authority (ISA), may further

reduce the riskof redundant complications that may

be encountered during further prosecution.

First Stage: File National Application with Accel-

erated Examination. Optional Full Prosecution

Despite privately conducted patentability searches,

the actual patentability prospects remain uncer-

tain when filing a new patent application, and ap-

plicants typically encounter newly cited prior-art

upon examination. Therefore, there is an inherent

risk associated with patent filings, as applicants

cannot be guaranteed of eventually obtaining a

valid patent. If the first, i.e., “priority”, application

is filed in Israel, then an accelerated examination

may be requested. Israeli and Foreign applicants or

inventors, including U.S. inventors who obtained a

foreign filing license, can file their first application

in Israel following a routine request. A Search Re-

port and an Office Action (OA) is normally furnished

within 3-4 months. If prosecution is continued, a

second OA and sometimes even a third OA will be

issued before the lapse of the first year. The Israeli

application may be further prosecuted until grant,

but prosecution is optional as the application may

be abandoned or withdrawn and yet still be utilized

as a priority application. The Israeli jurisdiction is

not abandoned because a further national phase

applicationmay be filed later in Israel in pursuance

of the PCT application.

Second Stage: File International (PCT)

Application

A PCT application claiming priority from the Israeli

application is filed within one year. Israeli appli-

cants and inventors may file the PCT application

designating the ILPA as the ISA. Other applicants

and inventors (e.g., U.S. nationals) can file the ap-

plication with the USPTO as the Receiving Office

but request the ILPA to act as the ISA pursuant to a

USPTO pilot program.

The PCT application can include new subject matter

as well as implementation of amendments based

on lessons learned from the initial search and pros-

ecution of the Israeli priority application, thereby

optimally positioning the PCT application for a

favorable examination. Such an augmented PCT

application is generallymuchmoremature than an

application for which the initial examination occurs

at the PCT international phase.

Usually, the same Examiner team will typically

examine the corresponding PCT application, with

which they will be familiar from the first filing in Isra-

el, while conducting a further search in its capacity

as the ISA, but naturally will take into account their

previous findings. The ILPA encourages such a chain

of events by launching a “PCT-Direct” pilot program

with specifically reduced examination fees, and the

applicant is invited to file comments addressing

objections raised in the Israeli examination. Fol-

lowing the aforementioned approach significantly

increases the likelihood that the patent application

will be first publishedwith a favorable International

Search Report andWrittenOpinion (ISR/WO), which

represents the initial publication worldwide.

What should be done with the Israeli Priority ap-

plication at the second stage? Four options:

1. Complete prosecution and receive an Israeli pat-

ent. The publication and eventual grant of an Israeli

patent may take place before the PCT process yields

any results.

2. Delay prosecution to allow amending the Israeli

application to conform to the PCT application. The

publication and eventual grant of an Israeli Patent

may be delayed until the lapse of 18 months from

the priority filing date to allow addressing poten-

tial new findings resulting from the PCT search and

examination process.

3. Abandon the Israeli application, andmerely use it

as a priority application (for the PCT application).

A further Israeli National Phase application can be

filed later based on the PCT application linked to

the same chain, for the purpose of prosecuting dif-

ferent claims, including new subject matter that

was added to the PCT application, or divisional

inventions.

4. Abandon both the Israeli and PCT applications.

If the search or examination findings are such that

the patentability prospects appear hopeless, then

one can save additional future costs that would

otherwise be incurred by continuing with the a full

PCT process. This may be conducted in total confi-

dentiality before publication.

Third Stage: Patent Prosecution Highways -

PCT-PPH or GPPH for National Phase

Under the PCT-PPH or Global-PPH (GPPH) programs,

an applicant can “fast track” the examination of a

national phase application in certain jurisdictions

based on an indication by another patent office

of at least one allowable claim in a corresponding

application.

•

PCT-PPH -

The applicant may request accelerated

examination in selected national phase jurisdiction

based on the following PCT work products: (1) a

positive International Search Report and Written

Opinion (ISR/WO); or (2) a favorable International

Preliminary Report on Patentability (IPRP), if a De-

mand was filed therefor, following an unfavorable

ISR/WO. Israel has several agreements with other

countries in the PCT-PPH program guaranteeing

such accelerated examination, including

U.S

Eu-

rope

(EPO)

China

Japan

Korea

, and

Finland

•

GPPH -

The offices involved with the GPPH are

USA

Japan

Korea

Russia

Canada

Australia

Israel

Singapore

and several

European offices.

The GPPH pilot allows patent applicants to request

accelerated examination at any of the offices in-

volved, if at least one claim in the application has

been found to be allowable by another patent office

involved. If the Israeli prosecution is successfully

completed with an allowance, then one can file

GPPH for national phase regardless of the opinions

issued in the PCT work products.

In summary:

The Israeli channel reduces patentability “gam-

bling” risks, allowing the application to mature, or

to be “buried”, before publication, under confiden-

tiality, at an early stage, whereby applicants can be

well informed and attain a greater understanding of

what to expect before the filing of an international

PCT or other national applications, and obtain early

grants in leading jurisdictions, with substantially

reduced prosecution costs.

International Patent Prosecution through the

Israeli Channel

By Zohar Eliezri, Adv. & Patent Attorney

Adv. Zohar Eliezri, Owner & CEO, Eliezri Intellectual Property, Patent Attorneys & Law Offices