New procedural routes were developed by the Israel Patent Authority (ILPA) in the last couple of years, accruing unique benefits to Israeli applicants, which may be available to foreign applicants as well. The Israeli channel can substantially reduce risks before the filing of an international PCT application 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 International Searching Authority (ISA), may further reduce the risk of redundant complications that may be encountered during further prosecution.
First Stage: File National Application with Accelerated Examination. Optional Full Prosecution
Despite privately conducted patentability searches, the actual patentability prospects remain uncertain when filing a new patent application, and applicants 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 Report 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application may be further prosecuted until grant, but prosecution is optional as the application may be abandoned or withdrawn and yet still be utilized as a priority application.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 application may 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 applicants 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 application 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 prosecution of the Israeli priority application, thereby optimally positioning the PCT application for a favorable examination. Such an augmented PCT application is generally much more mature 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 Israel, 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. Following the aforementioned approach significantly increases the likelihood that the patent application will be first published with a favorable International Search Report and Written Opinion (ISR/WO), which represents the initial publication worldwide.
What should be done with the Israeli Priority application at the second stage? Four options:
1. Complete prosecution and receive an Israeli patent. 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 potential new findings resulting from the PCT search and examination process.
3. Abandon the Israeli application, and merely 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 different 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 confidentiality 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 Demand 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, Europe (EPO), China, Japan, Korea, and Finland.
- GPPH - The offices involved with the GPPH are in 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 involved, 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.
The Israeli channel reduces patentability “gambling” risks, allowing the application to mature, or to be “buried”, before publication, under confidentiality, 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.