Registering a patent in Israel is, unfortunately, quite a long, complicated process that requires, among other things, significant financial outlays. One of the stages in obtaining a patent is a substantive examination of the patent application by a patent examiner.
The stage of substantive examination is a critical one because this determines whether the patent application will be accepted and become a registered patent or not. Therefore, the patent holder is interested in having the substantive examination proceed as smoothly, and as quickly, as possible. There are several tracks for the substantive examination process, each of which has its advantages and disadvantages, which are reflected in the time and resources invested in conducting the examination.
During the substantive examination, a patent examiner reviews, among other things, the level of novelty and inventive step of the invention described in the patent application. If the examiner decides that previous patents or other publications fully describe the invention being examined, the examiner will issue a letter enumerating the defects and refuse to accept the patent application.
It should be emphasized that most patent applications, after being examined by a patent examiner, are rejected on the basis of deficiencies such as lack of novelty or inventive step. However, it is important to remember that the rejection raised by the patent examiner is non-final and it may be successfully appealed in most cases. When reviewing the deficiencies that the examiner raised in his letter, it is important to check the publications cited and to see how relevant they are to the invention, if at all.
Expediting the Process
Probably the biggest source of dissatisfaction with the patent approval process is the length of time it can take.
As mentioned above, patent applicants have several ways to shorten and expedite the entire patent prosecution process. One common way to do this is to rely on a parallel patent that was granted in another country and to demand an accelerated examination according to the PPH track. Following this route, the time for examining a patent application can be significantly reduced.
Another examination track, which also relies on a parallel patent from a foreign country, is a modified examination that skips the checking of novelty and inventiveness step altogether, and as a result shortens the process considerably. It is important to also mention that there is a “green” route intended for environmentally friendly inventions. The “green” route also significantly shortens the processing time of a patent application.
Finally, it is worth noting that an effective management of the patent prosecution can depend largely on the ability of the patent attorney to successfully interact with the patent examiner. Therefore, when choosing a representative, a patent attorney who also has experience as a patent examiner would be the preferred choice.
Such a patent attorney, who has worked “for both sides”, can understand the mind-set of a patent examiner and decide what amendments should be made to the patent application or what arguments should be advanced to counter the patent examiner’s arguments, so that the patent application is accepted and the patent is granted.