Practice points in Israel patent prosecution: selection patents and treatment of earlier-filed patent applications
Earlier-filed patent applications
In contrast to classical prior art publications, which are published prior to the effective filing date of a patent application, earlier-filed patent applications, though unpublished at the effective filing date of a patent application, can be cited as prior art in some jurisdictions. The Israel Patent Office relates to earlier-filed applications slightly differently from either the European or US patent offices.
Selection patents
These constitute a special class of patents and patent applications with regard to their treatment by Israel patent examiners. While selection patents can occur in various fields, they are most often found among chemical and pharmaceutical patents.
Patents of addition
These are unique to Israel patent practice.
Treatment of earlier-filed patent applications
Understanding of this topic requires familiarity with Sections 2, 4, 5 and 9 of Israel Patent Law:
- Section 2 of the law provides for the right of an applicant to request a patent for an invention. While it does not explicitly state so, the use of the singular in this statute is relied upon to prohibit the granting of more than one patent for a single invention (‘double patenting’).
- Sections 4 and 5 relate to novelty and nonobviousness (inventive step) respectively and are similar to corresponding sections of the US and European patent laws.
- Section 9 provides that in cases where more than one entity applies for a patent for the same invention, the patent will be issued to the first to file a valid patent application.
In Israel, earlier-filed but unpublished patent applications are not considered prior art for the purposes of Sections 4 and 5 of the law. However, the claims of an earlier-filed Israel Patent Application, whether or not issued at the time of examination of the later application, can present a prima facie bar to patentability of a later-filed application under Sections 2 and 9, if the claims of the two documents are considered by the examiner to significantly overlap.
In cases where the two applications are not commonly owned, the first-filed application is examined, while examination of the second-filed application is suspended until the first application is abandoned or allowed and published for opposition purposes. In the latter case, the pending claims of the second application are checked against the issued claims of the earlier application to avoid overlap.
In cases where the two applications are commonly owned, the overlapping claims of the second application are provisionally rejected until the overlap is removed by amendment of one or both of the applications. Examination is not suspended in this case.
A double-patenting/overlap objection may also be issued against related patents and/or applications claiming substantially the same invention. This could happen, for example, in the examination of a divisional application with similar claims to a parent and/or a sister application.
The recently published Guidelines for Israel Patent Examiners provide that an overlap objection should be raised when either:
- A claim is essentially identical to one in the earlier patent specification; specifically, where each and every essential element of the claim being examined is present in the claim in the earlier application.
- The examined claim is a modification or improvement of the overlapping claim, and the modification or improvement is not inventive.
Several relevant scenarios will now be considered.
Scenario 1: An earlier-filed patent specification filed in a jurisdiction other than Israel anticipates or renders obvious the invention claimed in a later-filed Israel application. Outcome: The earlier-filed foreign patent specification would not be considered prior art to the later-filed application examined in Israel. In many such cases, the applicant of the later application may be able to attain patent protection in Israel that is not available in other major jurisdictions, such as the US and Europe.
Scenario 2: The claims of an earlier-filed application filed in Israel by a different applicant recite or render obvious the invention claimed in the examined application.
Outcome: If the examiner believes there is an overlap, the claims of the earlier patent specification will prima facie render unpatentable the claims of the later application.
Moreover, continued examination of the later application may be suspended under Rule 39 of the Israel Patent Regulations, depending on (a) whether the earlier application has been granted (Israel patent applications are not published until grant, except for their bibliographical details); (b) whether a corresponding application in another jurisdiction has been published; and (c) whether the later applicant makes a special request under Rule 39.
While the details of this rule are beyond the scope of this article, requesting suspension under it may be a useful option to applicants wishing to defer costs and/or decisions relating to such an application.
Scenario 3: The claims of an earlier-filed application filed in Israel by the same applicant recite or render obvious the invention claimed in the examined application.
Outcome: The outcome is the same as for Scenario 2, except that Rule 39 suspension of examination is not available (although the possibility of requesting suspension under the usual procedure will still be available, subject to the usual conditions).
In each of Scenarios 2 and 3, the prima facie allegation of overlap must be overcome by traversal and/or amendment of the claims. In either case, the overlapping claims must be related to as if they were prior art under Sections 4 and 5 of the law. This may be done either according to the usual inventive step criteria or according to special criteria in the case of selection patents, as will be described following the description of the next scenario.
Scenario 4: The disclosure, but not the claims, of an earlier patent specification filed in Israel anticipates or renders obvious the invention claimed in a later application filed in Israel.
Outcome: Once again, the earlier patent specification would not preclude the patentability of the examined application. However, arguably, if the scope of the claims of the earlier patent specification is subsequently widened with proper support in the specification, and a situation is thereby created in which there is a conflict between the claims of the two applications, the claims of the later application would be rendered unpatentable. This issue has, however, not been addressed by the courts.
Selection patents
An applicant may request during prosecution that an application be examined as a selection patent. Selection patents are defined by the Israel Patent Office as applications that claim a specific subset of subject matter that was more broadly claimed in an earlier-filed application or previously disclosed in a published document. While they do not have a separate legal status, such applications are afforded special treatment by Israel Patent Examiners.
Specifically, selection patents are examined for inventive step in accordance with special criteria, laid out in the Pliamfort v Ciba decision, as follows:
- The recited subset must possess a substantial advantage or the lack of a substantial shortcoming relative to the broader class.
- All the species of the recited subset must exhibit the advantage.
- All the species of the recited subset must possess a common technical feature.
- The description of the application must clearly and unambiguously point out the technical feature or advantage of the recited subset.
In our experience, unless the applicant requests it, applications are generally not examined according to the selection patent criteria. However, since these criteria are more favourable for certain applications than the usual inventive step criteria, and since many applications could reasonably be argued as being selection patents, this is a useful option to bear in mind.
Patents of addition
It is also possible in certain circumstances to request that an application be accorded the status of a patent of addition. Patents of addition are directed to improvements and modifications of an issued patent (parent patent) with the same or an earlier filing date and are owned by the same applicant.
It does not matter whether the parent patent was published prior to the priority date of the later application. The invention claimed in a patent of addition need not possess inventive step over the parent patent, but it does need to be novel.
Patents of addition are not afforded the filing date of the parent patent and must, therefore, possess novelty and inventive step over all other publications prior to their actual filing date. They expire no later than 20 years from the effective filing date of the parent and will become regular patents if the parent is abandoned. A patent can also be converted into a patent of addition if it is alleged to lack inventive step during opposition proceedings.
In conclusion, an earlier-filed Israel application can be cited during the examination of a laterfiled Israel application, only to the extent that the claims conflict with the claims of the application under examination.
In addition to the regular techniques of overcoming inventive step rejections, rejections based on such earlier-filed applications may be traversed by requesting that the application be examined as a selection patent or (if the earlier application is owned by the same applicant) by requesting that the application be accorded the status of a patent of addition.
Dr Moshe Tritel is head of biotechnology at JMB, Fa©tor & Co. He can be contacted at: mtritel@israel-patents.co.il
