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The US-Israel Legal Review 2019 83
on a constant rise over the past 5 years, ranking
13th in the world. It is well worth noting that the
ISA/IPEA services provided by the ILPO can be
enjoyed also by US applicants who can designate
the ILPO as their ISA/IPEA. Examination on the
national level has shown in many cases that
national phase patent offices attribute high
quality to the ILPO ISRs.
In an attempt to balance the interests of
both the innovative and generic pharmaceutical
industries, provisions for the grant PTE were
made in the Israel Patents Law together with
the insertion of a Bolar exception. Since their
enactment these provisions have been revisited
several times by the legislature, the last such
round was in 2014 leading to a relatively
complex chapter in the Patents Law. Quite a few
decisions of the Patent Commissioner concerning
the interpretation and scope of the Law’s PTE
provisions have been subject matter of appeals to
the courts, some of which arriving to the Supreme
Court. The most recent decision of the Patent
Commissioner in this field concerns the grant of
PTE to biosimilar drugs (i.e. patents on inventions
pertaining to drugs which are biosimilar to other
drugs of similar biological matter which enjoy
prior market approval) thus providing indications
as to when PTE will be granted in this innovative
field. In recent years, in view of the IP friendly local
environment, Israel has become the opening
gateway not only for the innovation itself, but
also for the obtaining of its legal protection.
Recognizing the importance of timely patent
prosecution, several modes for expediting patent
prosecution in Israel were put in place. Under the
2012 Patent Law amendment, Section 19A added
the possibility of expediting the examination also
at the request of any person (i.e. not the applicant)
on grounds of public interest. Requests on behalf
of patent applicant for expediting examination
using the various modes of making special have
become quite common (731 requests in 2017,
whereas in 2008 only 70 request were made).
Most such requests are made on grounds of PPH,
GPPH or PCT-Direct programs and arrangements
made with other patent offices in order to share
the work and mutually benefit from positive office
actions. To date, the ILPO stands by its declaration
to provide a first office action for an expedited
application within 3 months of the granting of such
request. Another mode of expediting is the ILPO’s
undertaking to expedite an application for an
invention first filed in Israel from which priority
is intended to be claimed in foreign territory. Such
mode is becoming a trend worthwhile exploring in
initial phases of an entrepreneurial initiative.
The booming Israeli hi-tech industry required
certainty as to the patentability of software
implemented inventions (SII). In early 2012 the
ILPO issued guidelines as to how the Patent Law’s
limitation on patentable subject matter are to be
examined. Broadly speaking, it was indicated that
the requirement of a patentable invention to “be in
a field of technology” (as required by the Patents
Law) should present,
prima facie
, a technical effect.
This test was in line with European jurisprudence.
The guidelines incorporated several examples for
their implementation. The effectiveness of this
promulgation is evident by the impressive figures
of filings made since by international software
leaders such as Microsoft, Facebook, Google and
Qualcomm which are among the leading foreign
filing entities in Israel in recent years. In a few
public hearings ILPO officials voiced a position
espousing that inventions pertaining to artificial
intelligence technology should be regarded as any
other SII. This would be in line with EPO guidelines
for examination of artificial intelligence inventions
issued in late 2018.
As in most countries, Israel has rules
Israel has become the
opening gateway not only
for the innovation itself, but
also for the obtaining of its
legal protection.