A new Bill to amend the Patents Act proposes significant revisions

A new Bill to Amend the Patents Act, 1967 includes several significant revisions relating to substantive and procedural aspects. Some of the most notable proposed revisions are the following:

• ‘Secret prior art’: Similar to Article 54)(3) of the EPC, the state of the art for novelty purposes will also include patent applications filed in Israel which have a priority date earlier than the examined application and are published on or after the date of the examined application.
• Grace Period: Any publication of the invention during a period of 12 months before the date of the application by the owner of the invention or with its consent, or by another person based on information originating from the owner of the invention, shall not be part of the state of the art. If the publication was without the owner’s consent and the patent application was filed a reasonable period of time after the owner of the invention learned of the publication, it shall not be part of the state of the art even if more than 12 months elapsed since publication.
• Request for examination: Instead of the current system whereby all applications are automatically examined based on their filing date, patentees will now be required to request examination within 4 years from the date of the entry into national phase. If a request for examination is not filed within this time frame, the application will be rejected. Third parties will also be entitled to file a request for examination, including anonymously.
• Third Party observations: The constraints on third party observations will be revoked. The filing of observations will be permitted any time during examination (currently observations must be filed within two months from applicant’s first IDS) and it will be permitted to file arguments in addition to prior art. 
• Amendments of the examined application before allowance: It is currently possible to amend the specification by adding substantive subject matter if it is post-dated. In accordance with the proposed amendment, amending the specification by adding subject matter which extends beyond the content of the application as filed will not be permitted. The drafting of the section is however unclear and can be misinterpreted as banning claim amendments which expand the scope of the claims even if they are supported by the specification as filed. 
• Restrictions on divisional applications: The Ministry of Justice will be authorized to issue regulations which impose restrictions on the filing of divisional applications to prevent an abuse of the divisional procedure (e.g. limiting the number of divisional applications or the period for filing divisional applications). The details are not provided and the regulations will be published for public comments when (and if) they are introduced.

The extensive legislative revision seems to be inspired in part by EPO practice and we expect it will be further refined during the legislative process. We will advise on further developments and in the meantime please feel free to approach us for further information.

This update article is provided for general information only and is not in lieu of legal advice. Please contact us directly for any required advice on specific matters.