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 Israeli test 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 a patent attorney in order to ensure he receives all 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 Patent 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 patent, the applicant is not yet able to sue for patent violation. It is important to consult with a patent attorney or lawyer in each case for advice as to correct conduct in this case.
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 several other countries, with the parallel overseas applications being filed with an application date identical to the Israeli patent application.
In other words, applicant John Doe files a patent application with the Israeli Patent Authority. According to the Paris Convention, he can apply for patents overseas within 12 months (before a calendar year is over) and have his patent registered on the date in which it was filed in Israel.
This means that should John Doe file a patent application in Israel, and then file a patent application in one or more of 175 countries party to the Paris Convention, he will have a priority right to that date over any other applicant who filed a patent in Israel or abroad, on condition that it is an identical invention and 12 months have not passed since he applied for his original Israeli patent.
So, if another party (possibly a competitor of John Doe) applied for a patent in a certain country other than Israel before the Israeli applicant (Mr. John Doe), but after Mr. Doe already applied for his patent in Israel, and should John Doe then apply for a patent on the same invention in one (or more) of the countries in the Paris Convention before his 12 months are up, the priority right to the patent is awarded to the first applicant regardless of the country in which it was filed.
Patent Registration in Israel – Rights from Time of Publication
18 months after the patent application was first filed, the Patent Authority publish details of the application, including the description and diagrams, and all other material submitted by the applicant in accordance with Section 16a of Patent Law (as is also customary in many other countries in the world).
Starting the day the patent is published – 18 months after the initial application– there is some form of protection which can be taken advantage of, on the condition that the patent is accepted at a later stage, by submitting a claim of patent violation.
Section 179 of Patent 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 relief for an infringement committed after the date of publication under section 26; This relief will be reasonable royalties which the violator will be liable to pay if he had been granted a license to exploit the invention of the scope had he exploited as said…”
In other words, the publishing of the patent application in specific circumstances can lead to a cause of action that may be exercised after the patent has been granted.
Rights from Patent Registration
A patent registered in Israel grants the holder the rights within the State of Israel for twenty years from the date of application. In certain circumstances, 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 Patent 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—
(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 gall 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 the 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 stages 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(0) 3-9711013.
