Recently, the Israel Patent Office has modified procedures relating to patent prosecution in a number of areas. New Guidelines for Patent Examination have been issued by the Patent Office which impact prosecution in the fields of overlap, computer-related inventions, antibodies, and interviews. This update will focus on overlap.
The Israel Patent Office procedures regarding overlap stem from three sections of the Israel Patent Law 5727-1967: Section 2, which states that the owner of a patentable invention is able to request a patent on his/ her invention; Section 9 which stipulates that if a patent is requested for one invention by more than one applicant, the patent will be granted to the earlier of the applicants; and Section 19 which allows for delay of examination until publication of a prior application when a prior application is cited against the examined application.
An examiner may reject claims in an application based on overlap in a number of situations:
- Between the examined claims overlapping claims in a pending Israel patent application or in a granted Israel patent.
- Between two applications (or a patent and an application) having the same filing date or having different filing dates; and
- Between two applications having the same applicant or between two applications with different applicants.
Previously, an applicant filing a divisional application would need to make sure that the same subject in the “parent” application not be claimed in the divisional application. For example, if the parent application claimed a general chemical formula which included many specific chemical agents, a divisional application directed to one of the specific chemical agents would be rejected based on overlap. Furthermore, if the parent application claimed a general chemical formula which included many specific chemical agents, a divisional application directed to a general chemical formula which even partially overlapped the general formula of the parent application would be rejected based on overlap.
The Guidelines for Patent Examination, Appendix E, issued on February 10, 2020, changed this practice. For applications having the same filing date and filed by the same applicant, (whether filed independently of each other, or filed as a parent and a divisional application) overlap is proper between claims claiming the same aspect of the invention, having an identical scope as the claims in the prior application. The overlap would be applicable even if the claim language is not identical in the two applications.
In addition, claims to different aspects of the invention having effectively the same scope would be considered to have identical scope. For example, a product-by-process claim would be considered to have the same scope to a corresponding process claims, provided that the scope of the process is identical.
This practice effectively broadens the possibility of use of divisional patent applications at the Israel Patent Office, as certain subject matter can be claimed in two separate applications without the examiner rejecting the claims based on overlap, as long as the scope of the claims in both applications is not identical. Returning to the example of a parent application claiming a general chemical formula including many specific chemical agents, a divisional patent application directed to one of the specific chemical agents would not be rejected based on overlap.