McDonnell Boehnen Hulbert & Berghoff LLP

[author: Dan Feigelson*]

Many patent practitioners will never have need to file a patent application in Israel, a country of nine million people that's geographically smaller than New Jersey.  But if you're one of those practitioners who does file in Israel from time to time -- and I suspect that readers of Patent Docs file in Israel at a higher rate than the general practitioner population -- you'll be pleased to know that the Israel PTO (ILPTO) recently proposed a change in patent examination practice that portends relief for beleaguered applicants:  the ILPTO plans to tighten the criteria for rejecting claims of an applicant's application for "overlap" with the claims of another of the applicant's applications (or granted patents).  The upshot will be that the ILPTO will no longer make such rejections in the case of divisional applications on the basis of the claims of an ancestor application.

By way of background, section 2 of the Israel patent statute says that an applicant may obtain a patent for his invention.  Like 35 U.S.C. § 101, Israel section 2 has been interpreted to mean you can get one patent per invention.  So you can't get two claims of the same scope in two different patents.

Where the difficulty has arisen is when the claims of an applicant's separate applications are of different, but nevertheless overlapping, scope.  To illustrate, suppose a parent application claims a single chemical compound, and a related child application claims a genus of compounds that encompasses that compound.  In the U.S., such a situation would give rise not to a statutory double-patenting rejection under § 101 (since the claims are not of identical scope), but to an obviousness-type double-patent rejection.  And the response in the U.S. would be to file a terminal disclaimer, which would achieve two things:  it would ensure that the two patents expire at the same time (generally not an issue since June 1995, when the U.S. switched to a 20-years-from-earliest-filing-date-system); and it would ensure that the patents must be co-owned for the later-issuing patent to be enforceable.

In Israel, until now, that same set of facts would also result in the ILPTO rejecting the child claim(s), and the assertion made by the ILPTO would be that the child claim(s) "overlap" with the parent claim(s).  The problem is that whereas in the U.S., it's recognized that obviousness-type double-patenting is a judicially created-doctrine, in Israel, there is no comparable case law.  Thus, despite the fact that the statute seems to be clear that only identical claims in two of an applicant's applications are forbidden (section 13 says that it's the claims that define the invention, which would seem to mean that as long as the claims aren't of identical scope, section 2 doesn't apply), the ILPTO has for years taken the view that section 2 precludes the allowance of such "overlapping" claims.  In other words, the ILPTO conflates statutory double-patenting with obviousness-type double-patenting.  As one might expect, this practice has not been without criticism, see, e.g., here, here, here, and here.

Although it has been proposed that the ILPTO adopt a terminal disclaimer practice like that in the U.S., until now the only way for an applicant to overcome an "overlap" rejection has been to either remove the offending matter from the claims of one of the applications (either by deleting one or more positive recitations from the offending claim(s), or introducing one or more provisos), or to show that the offending claims constitute a non-obvious selection over the earlier claims.  (The latter option shows the paucity of the logical underpinnings of the ILPTO's position:  if the statute requires that there be no overlap between the scope of the claims in an applicant's different applications, a showing of non-obviousness doesn't obviate the double-patenting problem.)

The ILPTO's approach to "overlap" has been vexing for pharma and biotech applicants in Israel.  For example, if an examiner is willing to allow claims of a narrower scope than the applicant believes it is entitled, in the U.S. the applicant will take the allowance of the narrower claims now, and fight for the broader claims in a continuation, knowing that it may be necessary to file terminal disclaimer to get around the claims of the parent case.  But in Israel, taking the narrower claims in the parent case might presage an "overlap" rejection, which at best would necessitate figuring out a way to eliminate that "overlap," a task that sometimes requires a significant investment of time, and in some cases might not be easily or satisfactorily accomplished.

The ILPTO's obsession with overlap hasn't been a headache just for applicants and their patent counsel.  It's also been a source of wasted examiner time, as examiners have been instructed to conduct search-and-destroy mission against "overlap" as part of their job.

It was apparently this last aspect of the practice that finally got the attention of the powers-that-be at the Israel PTO.  In a notice published on December 29, 2019, regarding proposed revisions to the Examination Guidelines (the ILPTO's equivalent of the MPEP), the ILPTO proposes to forego raising "overlap" rejections in cases of patent applications, or a patent application and a patent, which are (a) owned by the same entity and (b) have the same filing date, provided that the two documents do not contain claims of "literally or substantively" identical scope.  This means that the ILPTO plans to stop raising "overlap" rejections in cases of parent and divisional applications, as long as the claims are of different scopes.

The specific proposed amended wording of the Examination Guidelines regarding "overlap" (in Hebrew) can be found here beginning at page 30.  The ILPTO has asked for comments on the proposed revisions to the Guidelines, to be sent to Patentim_Bhina@justice.gov.il by January 29, 2020.  It is expected that this proposal will be formally implemented soon thereafter; rumor has it that the ILPTO is in fact already implementing this change.

* Daniel Feigelson is a patent practitioner based in Israel, who from time to time writes about U.S. and Israel patent issues at www.iliplaw.com.

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