Patent Registration in Israel – Registered Patent
Registering a patent in Israel provides the applicant with a monopoly right for twenty years from the date of the patent registration application if the registered patent is granted, i.e. the day the patent application was filed starts counting the number of days marking the validity of the registered patent, and not the day the patent is granted.
We provide legal services for our clients to register a patent in Israel and abroad. However, in some cases, Israeli citizens are obligated by patent law to register their patent in Israel first, for example in the field of national security.
Considerations for Patent Registration in Israel or Abroad
Even without legal restrictions, it is preferable in many cases to start the patent registration process in Israel. This is due to many factors, including convenience, saving on costs, and the use of treaties signed by Israel with other countries that enable the expedition of the examination process abroad. For example, a US application can be examined via an accelerated route after being granted a patent in Israel. In some cases, up to half the fees for international PCT applications can be saved. Of course, market position, characteristics of the applicants and many other factors come into play.
There are also several reasons that our legal team may consider advising the initial patent to be filed outside of Israel. For example, in some fields, patents are more readily granted outside of Israel; the client’s business objectives like their target market or investors may have an influence; or the strategy of the Israeli examination procedure may affect the applicant’s ability to use international treaties, and other various legal and business considerations.
Rights Conferred by Patent Registration in Israel
Registration of a patent in Israel confers many rights to the applicant from the date of application, after publication, and of course the monopoly right after the patent is granted. It is important for the applicant to consult with an attorney or patent attorney in order to ensure he does not lose any of the rights granted to him during the patent application process.
Patent Registration in Israel – Rights from Date of Patent Application
Patent registration and publicity: From the date the patent is filed, the inventor can start commercial activity related to his invention. An applicant who publicizes his invention before applying for a patent renders his invention ineligible for a patent to be granted, but as of his patent registration application date in Israel, he can start to commercialize and sell his invention.
The legal source for this is in section 4 of the Patents Law, which states, “An invention is considered to be new if it has not been advertised publicly, whether in Israel or abroad, before the application date…”
However, it must be noted that at this stage, the invention still does not have a registered patent, and in the event that someone else copies or takes advantage of the invention, the applicant is not yet able to sue for patent infringement. It is important to consult with an attorney or patent attorney in each case for advice as to correct conduct.
Patent Registration and the Paris Convention: Registration of the patent in Israel entitles the applicant to an additional right – the opportunity to take advantage of the Paris Convention. According to the Paris Convention, of which Israel is a signed party, from the date of patent application in Israel, the applicant is entitled to file additional patent applications in other countries outside of Israel, while claiming the priority date of the Israeli application for the parallel application filed abroad.
In other words, applicant John Doe files a patent application in Israel. According to the Paris Convention, he can apply for patents overseas within 12 months (before a calendar year is over) and receive the Israeli date for the application filed abroad.
This means that should John Doe file a patent application in Israel, and then file a patent application in one or more of the 175 countries party to the Paris Convention, he will have a priority right over any other applicant who filed an application in Israel or abroad, on condition that it is the same invention and 12 months have not passed since the Israeli filing date.
So, even if another party (possibly a competitor) actually filed a patent application outside of Israel before the Israeli applicant (Mr. John Doe), but after the Israeli application was filed by John Doe, the applicant who filed in Israel, if he files an application in one (or more) of the Convention countries before 12 months have passed and claims priority, will have a right that precedes that of the later applicant in that specific country.
Patent Registration in Israel – Rights from Time of Publication
18 months after the first patent application was filed, the Patent Office publishes the details of the application, including the description and drawings, and all other material submitted by the applicant in accordance with Section 16A of the Patents Law (as is also customary in many other countries in the world).
Starting the day the patent application is published, i.e. 18 months after the initial application, the applicant has some form of protection which can be taken advantage of, on the condition that the patent is granted at a later stage, by filing a claim of patent infringement.
Section 179 of the Patents Law notes:
“Action for infringement shall be brought only after the patent was granted; however, if action for infringement was brought, then the Court may –
(1) grant compensation for the exploitation of an invention committed after the date of publication under section 16A and before the date of publication under section 26; such compensation will be in the amount of reasonable royalties which the infringer would have been liable to pay had he been granted a license to exploit the invention to the extent of such exploitation…”
In other words, the publication of the patent application in certain circumstances can give rise to a cause of action that may be exercised after the patent has been granted.
Rights from a Registered Patent
A patent registered in Israel grants the holder rights within the State of Israel for twenty years from the date of application. In certain fields, it is possible to apply for an extension of this period.
If the court decides that patent infringement has occurred, the patent holder is entitled to relief by way of an injunction and compensation. Section 183 of the Patents Law notes:
“(a) In an action for infringement, the plaintiff shall be entitled to relief by way of injunction and compensation.
(b) In awarding compensation, the Court shall take account of the act that constitutes the infringement and of the plaintiff’s situation in consequence of that act, and it may also take into account, among other things –
(1) the direct damage caused to the plaintiff;
(2) the extent of the infringement;
(3) the profits derived by the infringer from the act of infringement;
(4) reasonable royalties which the infringer would have had to pay, if he had been granted a license to exploit the patent to the extent to which he infringed it.
(c) If an infringement was committed after the patent holder or exclusive licensee warned the infringer, then the Court may order the infringer to pay punitive compensation, in addition to the compensation which it adjudged under subsection (b), in an amount that does not exceed that compensation.
(d) If action was brought for compensation, then the Court may order the defendant to render an account of the extent of the infringement; however, in fixing the amount of compensation, the Court shall not be bound by the account, but may set the amount of compensation according to all circumstances of the case; this provision shall not derogate from the Law Procedure Regulations on the rendering of accounts.”
It is important to consult with an attorney in all matters pertaining to a particular case. We accompany inventors and companies from the conceptual stages through the life of the patent. It is important for the patent right owner to know his various rights, from the application stage through the life of the patent. The above information is partial and incomplete. Please contact us for an initial introductory consultation.
To advance your invention, and to register your rights within a patent application, call us on +972-3-9711013.