Israel IP Updates – January 2013

Why Register Patents in the “Start-up Nation”?

 

Generally speaking, patents are registered in Israel not because of the market size, but in spite of it.

In their book Start-up Nation originally published in 2009, authors Dan Senor and Saul Singer explain how Israel, a country with few natural resources and a population of little more than 7 million people, has become a major force in global business, especially technology. A variety of sources have written about the Israeli high tech miracle. Two examples:

  • In a review of Start-up Nation in November 2009 the Wall Street Journal stated that 63 Israeli companies were listed on NASDAQ. This is more than any country outside the United States. In November 2012 they reported that per capita funding in Israel is 2.5 times that of the US and about 30 times that of Europe.
  • In an article on cleantech in March this year Forbes reported that [Israel] “has more scientists, engineers, and start-ups, per capita, than any other nation in the world. Numerous Israeli firms have been acquired by leading multinationals including Google, IBM and HP.”

According to the Israel Patent Office an estimated 7,000 patent applications are filed in Israel annually. Of this total about 40% are in biotech and pharmaceuticals, another 40% are in high tech including telecommunications and computer-related inventions. The remaining 20% are in water technologies, alternative energy including solar energy, and mechanical engineering.

The list of the leading foreign companies filing multiple applications in Israel last year starts with Raytheon, F. Hoffmann-La Roche, Sanofi-Aventis, BASF and Microsoft.

Conclusion: Generally speaking, patents are registered in Israel not because of the market size, but in spite of it. They are registered due to the high level of development activity in many areas of advanced high tech and medical technologies, which exceed most other countries of the world.

The Israel Patent system is user friendly and flexible

Once you have decided that it is a good idea to obtain patents in Israel, it is worthwhile considering the main characteristics of the Israel patent system, the costs involved, and how the relevant factors fit into your international filing program.

Filing a Patent Application in Israel

The Israel patent system is user friendly for applicants who are not from Israel. There are a number of reasons for this:

  • Language. Initial applications can be filed in any language. Applicants have several months to have their applications translated into one of Israel’s official languages: Hebrew, English or Arabic.
    In fact, all documents and amendments can be filed in English. Only formal correspondence has to be in Hebrew. This reduces the cost of filing and prosecution.
  • Speeding up the Process. A Notice Prior to Examination typically issues within 12-18 months after filing. The process can be accelerated if there is a commercial justification. Acceleration also applies to green patents.
    If an application is accepted for acceleration an Israeli patent can be granted in one year if all goes smoothly.
  • Slowing Down the Process. Applicants may decide to take advantage of the modified examination procedure, which enables a patent to be granted based on a parallel patent in a major jurisdiction. Typically this includes the US, Europe and Japan.
    If necessary, suspension of examination for up to 2-3 years may be requested while waiting for a parallel patent to be granted. This can only be requested after responding to a Notice Prior to Examination.
    Note that the normal term for response to an Office Action is four months but it can be extended to a total of 10 months on payment of official extension fees. The sole limitation on this right is that during subsequent examination the accumulated extensions cannot exceed a total of 15 months.
  • Note. Modified examination is not a free pass. If the Israeli examiner feels that the examination of the parallel patent was not sufficiently thorough the request for a modified examination may not be granted. In this case the examiner may insist on full examination for novelty, inventive step and utility.
  • Maintenance Fees. Maintenance fees for an Israel patent – even after increases that will take effect on January 1, 2013 – compare favorably with those in other countries and are payable once every four years. For details see Eye on Patents: The Latest Installment in the Overhaul of the Israel Patent System in this newsletter.

Foreign Companies Filing Multiple Applications in Israel in 2011

Company Name No. of Applications
RAYTHEON COMPANY 109
F. HOFFMANN-LA ROCHE AG 99
SANOFI-AVENTIS DEUTSCHLAND GMBH 67
BOEHRINGER INGELHEIM INTERNATIONAL GMBH 64
BASF SE 61
MICROSOFT CORPORATION 60
GENENTECH, INC. 59
NOVARTIS PHARMA AG 59
QUALCOMM INCORPORATED 56
SANOFI 54
ASTRAZENECA AB 36
MERCK PATENT GMBH 32
THALES 30
BAYER PHARMA AKTIENGESELLSCHAFT 26
BAE SYSTEMS PLC 25
GLAXO GROUP LIMITED 24
BAYER CROPSCIENCE AG 24
NESTEC S.A. 24
GLAXOSMITHKLINE BIOLOGICALS S.A. 23
ELI LILLY AND COMPANY 23

Profile: Dr. Irving Treitel

Senior Member of the Life Sciences Patent Group

Dr. Irving Treitel is a native New Yorker. He received his BA in chemistry from Yeshiva University and his MA in chemistry from Columbia University, both in New York City. Moving to the West Coast he received his Ph.D. in Physical Inorganic Chemistry from the California Institute of Technology (Cal Tech) where he trained as a physical inorganic chemist using spectroscopic, magnetic, and crystallographic techniques.

“At Cal Tech my doctoral thesis was on electron interactions between multiple metal centers in transition metal complexes,” he says. This included work on the electronic and crystallographic structure of the first synthetic analogue for nitrogen fixation.

“I also worked in a lab where moon rocks were analyzed and polywater was disproved,” he says. (Polywater is a hypothetical polymerized form of water that was the subject of much scientific controversy during the late 1960s. It was disproved in the early 1970s.)

Dr. Treitel entered the IP field after an extensive career in industry in the US. He has lived in Israel for the past 30 years.

From textile coating to bioinorganic materials

“During my professional career before patents I worked in diverse areas such as textile and textile coating chemistry; on the production of high quality, high temperature superconducting materials; and I’ve consulted on anti-microbial bioinorganic materials.”

Dr. Treitel is licensed to practice before both the Israel and the US Patent Offices. As a senior member of the JMB Davis Ben-David Life Sciences Patent Group he has drafted life science-related patents that span the range of related disciplines from simple urine dipsticks to computer-assisted diagnosis of mammograms. He has also drafted and prosecuted patent applications in a variety of fields including chemistry, material science, mechanics, medical devices, optics and physics.

Unique experience

“Because I’ve worked on such a wide variety of projects I often have a distinct perspective. I can read or discuss a new concept and then say to the potential client, ‘But what’s novel and non-obvious in your invention?’”

“Generally, discovering problems that need solving is relatively straightforward,” Dr. Treitel explains. “It is common knowledge that finding a cure for cancer or developing an energy source that reduces pollutants would be both technologically satisfying and financially rewarding. But finding solutions is much more difficult,” he says. “It is the patent attorney’s job to help inventors find something that is really new in order to allow for patentability of innovative solutions.”


Eye on Trademarks

Designating Israel for an International Madrid Registration
How to Prevent an Israeli Designation being in Name Only

Implementation of the Madrid Protocol in Israel on September 1, 2010 was seen as long overdue. It was greeted with great fanfare. Adding Israel to new or existing Madrid registrations is all that it was expected to be in terms of convenience and cost to almost all overseas trademark owners.

The good news. The Israel Customs Authority is constantly on the lookout for counterfeit goods entering the country. They often contact the local registered agents (i.e. law firm) of a trademark, in order to inform them of the arrival of goods that may be counterfeit. The trademark owner then has a possibility of requesting that Customs hold the goods to allow time for possible legal action against the infringers.

However, Customs will only contact registered agents who have an address for service in Israel. An Israeli designation of an international registration will not normally have a local address for service unless objections have been raised during examination by the Israel Trademarks Office. Most Israel designations do not encounter problems during examination in Israel and thus are not required to appoint a local agent.

The solution. According to the Trademark Office in Jerusalem, a local agent can be appointed to act as an address for service for any Israeli designation, thus giving Customs someone to inform if the need arises. Doing so is easy, inexpensive, and it gives the trademark owner the opportunity for enforcement. Otherwise, designation of Israel for a Madrid registration runs the risk of being in name only.


Eye on Patents

Out with the Old, In with the New

The Latest Installment in the Overhaul of the Israel Patent System

There are a number of changes in new Israel Patent Office regulations that were published on December 10, 2012 and take effect on January 1, 2013. The most notable change affects the level of Official Fees detailed below.

Our new professional tariff will be released shortly. Please contact us for a copy.

  • The application fee for patent applications of all kinds is increasing from the current ILS 1075 (about US$275) to ILS 2,000 (US$512).
  • The excess claim fee of ILS 513 (US$132) for the 51st claim may be payable at the time of filing. This is being clarified.
  • A new fee of ILS250 ($64) for each 50 pages from the 101st page will now be payable at the time of filing.
  • Monthly extension fees will increase from ILS 64 ($16) to ILS 200 ($51).

A new fee of ILS 700 ($180) will be payable upon allowance of an application.

  • A new “small entity” status is being instituted for companies that have a turnover of ILS 10m ($2.5m) with respect to first filings in Israel. This status, which will have to be established by application to the Patent Office, will reduce the filing and the allowance fees by 40%. As a result this cannot apply to national phase entries or to any application claiming Paris Convention priority from a case filed earlier.

Renewal fees are also being increased.

New Renewal Fees ILS US$
Years 1-6 (payable after grant) 800 205
Years 7-10 1,600 400
Years 11-14 2,400 615
Years 15-18 4,000 1,025
Years 19-20 5,600 1,435
Payment in advance for the entire 20 years 12,000 3,075

Note: From January 1, 2013 it will be possible to pay renewal fees up to 3 months in advance, as opposed to the 30 day period which is currently in force.


News from Israel

US expert: ‘Israel is model for the world’

Int’l cooperation in R&D as well as gov’t support for scientific education are critical to advance innovation, experts say.

By Sharon Udasin
Jerusalem Post, May 6, 2012

Scientists in a laboratoryExperts say that international cooperation and government support for R&D are critical to advance innovation.

The No. 1 challenge, in both Israel and other countries, is to translate innovative success into development, according to Dr. E. Williams Colglazier, science and technology adviser to the US secretary of state.

“Israel is a world leader and a model not only for small countries but for all countries,” Colglazier said on Thursday.

He spoke at The Chief Scientist’s Annual Conference for Research and Development, held at Airport City.

International cooperation in research and development as well as government support for scientific education are critical to advance innovation, experts agreed on Thursday.

Entrepreneurs and innovators from Israel and around the world agreed that Israel’s path to innovation can serve as a model for other countries.

In recent years, there has been a spread of expertise in science around the world, creating “an era of the globalization of science and technology,” with huge potential for rapid economic growth, Colglazier explained.

To achieve that level of growth, countries need to realize that governmental investment in scientific education is the key to facilitating innovation – something that the US has been doing quite effectively as of late, he continued.

By beginning to “create an innovation ecosystem,” both the US and Israel have been providing more and more research and development opportunities for their scientists, many times through joint programs between the two countries that are a model for growth, according to Colglazier.

“Only by collaborating with other countries” can countries such as the US remain leaders in the propagation of innovation, he said.

“In today’s world collaboration is in many ways the mother of innovation,” agreed Avi Hasson, chief scientist of the Industry, Trade and Labor Ministry. “If we are in the innovation business, learning and education go hand in hand.”

More than 40 percent of the chief scientist’s budget in the past year was dedicated to international cooperation, Hasson said.

“The understanding that innovation is in the center of economic prosperity… is shared by the entire world,” he said.

In part by focusing on innovation and technological growth for so long, Israel has achieved economic stability that has withstood shaky financial periods on an international level, Minister of Industry, Trade and Labor Shalom Simhon said.

“In recent years the Israeli economy has shown great fortitude and growth and this is despite the general crisis in the world,” Simhon said. “The State of Israel is one of the leaders in the world innovation map.”

While Israel is never going to have the innovative production capacity of, say, China or Brazil, it can cooperate with these countries through the 32 partnership programs in the Chief Scientist’s Office, many of which integrate academia and industry, Hasson said.

“We consider this country as a strategic partner,” said Nelson Fujimoto, secretary for innovation at Brazil’s Development, Industry and Foreign Trade Ministry.

The countries have established a Brazil-Israel Cooperation Program, which in two months will receive second calls for technological cooperation proposals, focusing on life science, homeland security and a number of other areas, Fujimoto said.

“Israel is a very small country but is very strong in its innovation system,” he said. Brazil’s investment in research and development has increased almost four times in the past decade, he said.

The European Union’s European Commission, which is on its way to launching its Horizon 2020 economic framework plan for the years 2014 to 2020, is also intent on accelerating its progress with research and development for innovation and likewise sees Israel as a key partner in doing so.

The EU’s three priorities in innovation will be scientific excellence, industrial leadership and social issues, while its most challenging sectors will be health, food security, agriculture, energy, transport, climate, efficient use of raw materials and security, according to Laurent Bochereau, head of the Unit for International Cooperation for Policy Coordination at the European Commission.

“It will be crucial to the success of our program to mobilize cooperation between Europe and other parts of the world,” Bochereau said, noting that Israel has been associated with the commission since 1997.

“I think Israel has understood the whole of research and development as an engine for growth and development,” he said. “You are among the countries that invest the most in research and development. In Europe we are trying to raise this level, so we are very happy to see how things are going in Israel.”


British PM appoints tech envoy to Israel

GOV UK-Logo-BIGIn yet another boost to Israel’s high-tech credentials, British Prime Minister David Cameron has announced the UK’s first ever Tech Envoy to the Jewish state, in an effort to piggyback on their world-class reputation, while Israel will benefit from London’s position as a global business and science hub.

Cameron has appointed Saul Klein, a former venture capitalist who founded Seedcamp in 2007 to help entrepreneurs build successful technology businesses and now has more than 2,000 mentors around the world. Klein said that Britain was ‘a natural partner of choice for Israel in technology’.

Israeli Prime Minister Benjamin Netanyahu recently cut a virtual ribbon at the launch ceremony of a new Google campus in Tel Aviv, which will provide help to around 100 start-up businesses each year, while the 16,000 square-foot campus will be free to use for technology startups.

Tel Aviv was recently ranked second, only to Silicon Valley, as the best place for technology startups to thrive, according to reports from Bloomberg and Forbes magazine, based on factors including investment opportunities, consultants and the existence of other entrepreneurs in the city.


Israel partners China in renewable energy technology

At the recent renewable energy conference, Israel said it will collaborate with China in developing methanol and solar power technology.

By Liu Jiayi for View from China
December 3, 2012

chinaisrael-flagIsrael is set to work with China in the future to develop renewable energy technology, following talks at the 5th Eilat-Eilot Renewable Energy Conference & Exhibition held last week in Eilat, Israel.

The conference provided a platform to facilitate the development and investment in the booming renewable energy industry, which is the future of energy use, according to Dorit Banet, conference co-chair and manager of Eilat-Eilot Renewable Energy Administration.

Israeli Minister of Energy and Water Resources Uzi Landau also told a Chinese newspaper that China leads the world in solar, wind, and methanol technology, and Israel looked forward to carrying out further cooperation with China in these fields.

“As the national project of alternative energy in transportation, carried out by the Israeli government, we plan to lower fossil fuel usage in the transportation sector by 30 percent by 2020, and 60 percent by 2025. That is to say, 30 percent and 60 percent of vehicles would run on renewable energies such as methanol, compressed natural gas, bio-fuel, and electricity by 2020 and 2025,” said Eyal Rosner, director of the Israeli prime minister’s office of alternative fuel.

Renewable energy use accounts for less that 1 percent in the sector, according to Rosner. “Methanol usage should reach almost 10 percent by 2020,” he said. “It is quite a challenge, and that is why we hope to learn from our Chinese counterparts and carry out in-depth cooperation with China.”

Israel is also working with China in solar power utilization and technology development.

Half of the nation’s solar panels are provided by Suntech, a Chinese solar power company based in Wuxi, China. Suntech has installed over 100MW of solar panels in Israel and the market outlook remains optimistic, according to Suntech’s PR department.

During last week’s conference, Suntech also announced it would collaborate with CapitalNature, an Israeli company, to set up a renewable energy test center in the suburb of Eilat to test the latest solar power technology especially developed by Suntech for deserts.