Filing an opposition requires the payment of a fee and a request that will be heard before the Registrar of Patents’ tribunal. The Registrar will decide between the parties, i.e. between the patent applicant and the opponent to the grant of the patent, and will decide whether a full patent will be granted as approved by the examiner, or whether to remove parts of it, or not to grant a patent at all.
The decision of the Registrar of Patents can be appealed as of right by filing an application to the District Court, and the decision of the District Court can be appealed to the Supreme Court with leave.
Section 30 of the Patents Law states when an opposition may be filed: “within three months from the date of publication of the application under Section 26…”, i.e. after the examiner issues a notice of acceptance for the patent application. In the past, publication took place only after the acceptance date, but the law has changed, and today the application is in fact published 18 months after the filing date. However, from the moment the Office issues a notice of acceptance, an opposition can be filed within three months. If no opposition is filed, a patent certificate will be issued to the applicant.
Who may file an opposition to a patent? “…any person may…”
What are the grounds for opposition to a patent?
“There is a reason on account of which the Registrar would have been authorized to refuse the acceptance of the patent application”, i.e. the examiner erred and was not authorized to approve the grant of a patent, meaning the applicant did not meet the Patents Law and Regulations, according to the opponent. Section 3 of the Patents Law states what a patentable invention is, which an applicant must meet in addition to the other conditions of the law: “An invention, whether a product or a process in any field of technology, which is new, useful, can be applied industrially and involves an inventive step – is a patentable invention.” (emphasis not in the original).
“The invention is not patentable under Section 4(2)”, i.e. “4. An invention is considered to be new if it has not been published, whether in Israel or abroad, before the application date…” “(2) by way of exploitation or display, so that a person skilled in the art can carry it out according to the details that became known in this way.”
“The opponent, and not the applicant, is the owner of the invention.” In other words, someone else filed the invention when it was not his at all. For example, a person told an investor about the invention and had him sign a non disclosure agreement, and that investor filed a patent application. The inventor can oppose, arguing that he is the owner of the invention, and present evidence, for example the non disclosure agreement.
However, it is important to remember that there is also a legal and financial risk for the opponent to the grant of a patent. For example, an opponent who exploits the invention and files an opposition may, if he does not succeed in the opposition, face a cause of action against him also for damages caused by his opposition and for the costs of the legal proceedings.
Our firm handles proceedings of filing an opposition or defending against an opposition. In an opposition proceeding, the Registrar of Patents will hear the case before the Registrar of Patents’ tribunal.
To prevent an opposition, it is worth consulting with us regarding the strategy for presenting the invention: when, to whom and how to present it, and which details and legal information will or will not be presented, in order to prevent potential competitors from opposing the patent registration application, which complicates the patent registration process and makes it more expensive for the inventor or the company.
The above information is partial and incomplete. An attorney and patent attorney should be consulted in each case individually. For more details, call +972-3-9711013.