Duty Of Disclosure In Israel - Patent - Israel (2024)

You have now filed your patent application in Israel. "Whatcomes next?" you may ask.

As detailed below, prior to commencement of examination there isa duty to disclose all known relevant publications and allreferences cited in parallel applications.

What is the Duty of Disclosure requirement?

According to Section 18 of the Israel Patent Law, anapplicant must disclose a listing of all relevant publicationsknown to them, as well as all references cited in correspondingapplications, during the duration of examination and untilallowance of the application. This also entails the provision ofcopies of all non-patent references cited against novelty and/orinventive step in corresponding applications. However, whenrequesting modified examination under Section 17(c) of the Law,non-patent documents that are cited against novelty and/orinventive step must be listed, however, they do not need to besubmitted. Click here for an explanation of modifiedexamination.

When does the Duty of Disclosure start?

In all cases, the Patent Office will issue a so-called NoticePrior to Examination prior to the onset of examination. It is inresponse to such Notice that an applicant is first required tosubmit the above listing and documents (herein "DisclosureMaterials").

How Early can Disclosure Materials be Submitted?

Unlike in the United States, in Israel it is not only notrequired to first submit Disclosure Materials before beingrequested to do so (by issuance of a Notice Prior to Examination);it is advised not to submit these materials beforebeing requested. This is for the reason that there exists apossibility that early or pre-emptive submission could cause theMaterials to be overlooked by the Patent office. If acceleratedexamination is requested, such as under the PPH, however, a NoticePrior to Examination will be issued immediately. Click here for an explanation of acceleratedexamination under the PPH.

Once a response to a Notice Prior to Examination has beenfiled, when should additional Disclosure Materials besubmitted?

It is best to submit additional duty of disclosure material assoon as one becomes aware of it. Regular submission of additionaldisclosure material enables the Examiner to examine it as it issubmitted and any examination conducted will be based on the mostrecent disclosure material. A delay in additional materialsubmission may result in it not being examined if a Notice Prior toAllowance is issued in the meantime.

Are there any circ*mstances in which one can wait to submitduty of disclosure material?

If an office action has issued, but has not yet been respondedto, we recommend submitting the additional material with theresponse. The reason for this is that there is no benefit tosubmitting this additional material right away since examination isessentially on hold until the response is filed. As such, anopportunity to have the references examined is not beingmissed.

What about the Submission of Disclosure Materials that wereDiscovered After Issuance of a Notice Prior to Allowance? Shouldthey be Submitted?

All duty of Disclosure Materials must be submitted up toallowance. i.e. publication for Opposition. Nonetheless, at thisstage these materials will not be reviewed by the Examiner.

Is there an Option to Reopen Examination?

Yes. If disclosure materials come to light after a Notice ofAllowance has been issued, it is possible, though not required, torequest reexamination. This topic will be discussed in a laterarticle.

The content of this article is intended to provide a generalguide to the subject matter. Specialist advice should be soughtabout your specific circ*mstances.

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