I have a good idea and want to register a patent. What should I do?
You should approach a patent attorney in order to check whether the invention is worthy of patent protection. The attorney will first check whether the invention falls under the category of patentable subject matter. Then, the patent attorney will probably conduct a research in the field, among others by searching patent databases, in order to check whether the invention meets the main requirements of patent laws, namely that the invention is new and non-obvious.
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What is a patentable invention?
Section 3 of the Patent Act defined a patentable invention as "an invention, whether a product or a process in any technological field, which is new, useful, capable of industrial use and non-obvious". From the aspect of subject matter, almost anything falls under the category of patentable invention. In the words of the famous US judgment in the matter of Diamond v. Chakrabarty (which involved an invention in the field of biotechnology), it is possible to obtain a patent on "anything under the sun that is made by man". The main requirements for patentability are novelty and non-obviousness. Section 4 of the Patent Act provides that an invention is new if it was not published in Israel or abroad before the filing date of the patent application, by means of description or use which enables a person skilled in the art to perform the invention. Section 5 of the Patent Act provides that non-obviousness is an inventive step which does not seem obvious to a person skilled in the art who is familiar with the prior art in the field.
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How should I draft the patent?
Patent law is a complicated field and patent drafting is a very difficult task which should be handled by skilled patent attorneys. Despite the high costs which may be involved in such process, it is not recommended to save costs in the crucial stage of patent drafting. If you possess an invention which has great commercial potential, any tiny mistake in the stage of patent drafting may later cause you damages of millions, or even more.
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Does the patent provide worldwide protection?
Patent laws around the world provide only territorial protection. Thus, it is necessary to register a patent for every jurisdiction in which you seek protection. Nevertheless, Israel is a member of the international treaties in this field and, therefore, it is possible to file in Israel a patent application and obtain an earlier priority date according to the Paris Convention or the PCT (Patent Cooperation Treaty).
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What is the process of examination of patents in Israel?
The examination is a lengthy process which might take years. After a patent application is filed with the Patent Office, it is being examined by an examiner with a proper background in the technological field of the invention. Usually there is lengthy correspondence between the examiner and the applicant, during which the applicant is required to convince the examiner that the invention is worthy of patent protection and sometimes the applicant is required to amend the application so that it meets the criteria of patentability.
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Is it possible to oppose to an application filed by a third party?
Yes, it is possible to file an opposition to a pending application. Israel takes the approach of a "pre-grant opposition", i.e. after the examiner accepts the application, it is published in the Patent Gazzette for three months during which third parties may file an opposition. If an opposition is filed, the process of registration is withheld and the application does not transform to a registered patent unless the opposition proceedings conclude in favor of the applicant. The opposition proceedings are conducted as inter-partes proceedings in a similar fashion to litigation in court. At the end of the proceedings the Patent Registrar rules in a written decision whether the application should be accepted or denied.
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For how long does the patent protect my invention?
A patent provides protection for a period of 20 years, which are counted from the date of the filing the application, and the protection applies retroactively. Since the process of examination is long, sometime the patent holder is left with only a few years of effective exclusivity. Thus, the law provides an exception which entitles patent holders to request patent extension for a few years, but the application should meet stringent criteria and it applies mostly to the pharmaceutical industry.
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What is the level of protection conferred by the patent?
A patent confers on its owners exclusive rights to exploit the invention during the term of the patent. Section 1 of the Patent Act provides that when he invention is a product, exploitation of the invention is defined as the manufacture, use, sale or importation for one of these purposes, whereas when the invention is a process, exploitation of the invention is defined as use of the process or manufacture, sale or importation for one of these purposes of the product which is directly produced as a result from the process. Patent protection is the "strongest" protection available amongst intellectual property laws since it provides absolute exclusivity with respect to the exploitation of the invention.
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How can I enforce my patent rights against third party infringers?
When a third party infringes your patent, it is possible to file a civil claim against him. Infringement proceedings are usually conducted in the District Court. Also, it is common to accompany the claim with a motion for preliminary remedies in an attempt to bring an immediate end to the infringing activities.
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