WORLD PATENT & TRADEMARKOSAKA
DAIWA MINAMIMORIMACHI BLDG.,
2-6, 2-CHOME-KITA, TENJINBASHI,
KITA-KU,OSAKA 530-0041 JAPAN
WORLD TRADE CENTER BLDG. 21 F,HIROSHIMA
2-4-1, HAMAMATSU- CHO, MINATO-KU,
NOMURA REAL ESTATE HIROSHIMA BLDG. 4 F, 2-23 TATEMACHI, NAKA-KU, HIROSHIMA CITY, HIROSHIMA 730-0032, JAPANTo be opened
GLOBAL GATE 9F, 4-60-12 HIRAIKE-CHO, NAKAMURA-KU, NAGOYA-SHI, AICHI 453-6109, JAPAN
In the background of the HARAKENZO trademark is a global map wherein countries/regions are sized according to the number of patents registered there in 1991.
|Information on Developing Countries
(BRICs, VISTA, et cetera)
Patent engineering staff specialized in patent affairs : Kazuki MATSUMURA
Design/trademark staff specialized in design/trademark affairs : Nozomi KUROKAWA
OSAKA HEAD OFFICE [TEL]
OSAKA HEAD OFFICE [FAX]
TOKYO HEAD OFFICE [TEL]
TOKYO HEAD OFFICE [FAX]
: + 81-6-6351-4384
: + 81-6-6351-5664
: + 81-3-3433-5810
: + 81-3-3433-5281
§Information on Israeli Intellectual Property System§
1. General Information on Israel
Israel has a population of approximately 8.5 million (2016) in a land area nearly equal to that of Shikoku Island in Japan. The GDP of Israel amounts to approximately USD 270 billion (2013).
The main industries of Israel are of information communication, high-technology, medical and optical equipment, diamond machining, chemical products, textile, and financial/service business. In recent years, the high-tech industry is showing a remarkable expansion, and main export products are optical equipment, medical equipment, communication equipment, pharmaceuticals, etc.
Active players in such a high-tech industry are a number of venture businesses having an advanced technology in the field of information technology (IT), life science etc. There have been an increasing amount of movements such as establishment of local bases in Israel by major companies, M&As of venture businesses, capital participation etc.. Under such circumstances, the Israeli economy has been achieving a steady development even in late years. Accordingly, Israel is drawing attention as a place for companies, including Japanese companies, to find business chances.
In 2015, the total number of patent applications was 6,904, and the number of PCT applications was 5,901 - a 10% increase over the previous year. The per capita number of held patents is said to be the highest in the world. In the same year, the number of applications from Japan to the Israel Patent Office was 198, a slight decrease over the previous year.
||Total (including other countries)
|No. of patent applications (parentheses indicate PCT applications)
|Patents granted (parentheses indicate PCT application)
2. Outline of Intellectual Property System in Israel
Table 2 shows common items among different jurisdictions of the intellectual property system in Israel.
||System does not exist
||English, Hebrew, and Arabic
|Request for Examination
|Duration(from filing date)
||20 Years(Pharmaceuticals: Extendable for additional 5 years)
||5 Years(Renewal allowed twice, 5 years each time)
||10 Years(Renewal allowed every 10 years)
||Yes (3 months)
||Yes (3 months)
|Trial for Invalidation
3. Patent System
(1) Qualified Applicant
- Inventor and his/her successor
(2) Filing Documents
- (i) Application form
- (ii) Power of Attorney (certification is not required)
- (iii) Specification, Claims (multiple dependent claims are accepted), and Abstract. In a case of national entry of a PCT application, a copy of its international application is required.
- (iv) Drawings as necessary
- (v) Certified copy of priority document (to be submitted within 12 months from the filing date). English translation is to be submitted as requested by the Registrar
- (vi) Number of pages of filing documents
Applicant is required to pay 250 Israeli New Shekel (ILS) for every 50 pages at the time of filing an application. (1 ILS = 30.5 JPY [Dec. 2016])
Filing date can be secured without the payment at the time of filing the application. However, if the Applicant does not comply with a payment order, the application is deemed to be withdrawn.
- (vii) Number of claims
• Total number of claims is not limited.
• If the number of claims exceeds 50, the Applicant is required to pay 257 ILS for every claim beyond 50th claim.
- (viii) Claim format
Swiss-type claims (Use of X in the preparation of a medicament for the treatment of Z) are not allowed with the exception of cases in which the preparation method of the medicament itself has inventive step.
EPC 2000 style claims (X for use in/as Y) are allowed.
(3) Filing Language
- The Applicant can select the filing language from English, Hebrew, and Arabic.
(4) Routes for Filing
- (i) Paris route
- (ii) PCT route (transition period: 30 months from the priority date)
*Requests for restoration of right of priority (PCT Rule 49ter.2) via the prescribed procedures are allowed in a case where a) the international application date is within the period of two months after the date on which the priority period expired and b) the failure to file the international application in a timely manner occurred in spite of due care required by the circumstances having been taken.
- For national entry of the PCT application, application fees (2,031 ILS) are required.
(6) Process from Application to Registration
- (i) Formality Examination
After the application is filed, a formality examination is conducted. An application number is assigned to the application that complies with the requirements. If the application is granted a patent, the application number serves as a patent number.
- (ii) Application Publication
An application publication system for patent applications was put into effect on July 12, 2012. The right to demand compensation was also established.
Any application other than a PCT application for national entry is published after 18 months from the earliest priority date.
A PCT application for national entry is published after 45 days from the date on which the PCT application entered into a national phase in Israel.
As an exception, an application is not published if the application is abandoned within 7 days from the issue date of the notification of application publication.
- （iii）Notice Prior to Examination
After an average of 1 to 2 years from filing of an application, a Notice Prior to Examination is issued. The Applicant is then required to respond as follows.
• Disclosure of Prior Art Information
Israel has a system similar to the IDS in the U.S.A. The Applicant is required to submit the following information. English translation is necessary for non-English documents.
1. A list(s), prepared for each country where a corresponding application was filed, which contains (i) results of an examination(s) and (ii) a prior art document(s) cited in the examination(s)
2. A list of related prior art known by the Applicant
3. A copy (copies) of a non-patent document(s) among the documents mentioned in 1 and 2
4. A list of all the corresponding foreign application(s)
5. The earliest publication date of the corresponding foreign application(s)
The Applicant is obliged to submit prior art documents until the patent application filed in Israel (hereinafter referred to as “Israeli patent application”) is granted a patent.
- (iv) System for Requesting Examination
here is no system for requesting an examination of a patent application. No official fee is necessary to for examination to be started.
- (v) Types of Examination
Types of examination in Israel include standard substantive examination, modified examination, and advance examination. Patent Prosecution Highway (PPH) is also available.
The Israel Patent Office conducts cross-reference of the Dossier Information with the JPO.
(a) Standard substantive examination
After the Applicant filed a Response to the "Notice Prior to Examination", the application is assigned an Examiner, and a substantive examination is started.
(b) Modified Examination
Modified examination is a system under which, if a corresponding foreign patent application identical to an Israeli patent application is granted a patent, the Israeli patent application is regarded as satisfying the patent requirements such as the one for novelty and is granted a patent without undergoing a substantive examination. The modified examination is used for approximately 10 to 20% of the total applications.
(c) Green Application
An application for an invention useful for environmental improvement such as prevention of global warming, air pollution control, and water pollution control can be examined as a green application provided that the application meets the predetermined guidelines.
An application classified as a green application starts to be examined in three months from the date when the application is classified as the green application. Even in a case of a normal application which has been already filed, a request for classifying the normal application as a green application can be filed provided that the normal application has not been substantively examined yet. No payment is required for the request.
In 2016, 22 green applications were filed.
1. Timing for requesting modified examination
A request can be made at any time before a Notice of Allowance is issued.
2. Eligible party for filing request for modified examination
Only the Applicant can request a modified examination.
3. Required conditions for filing request for modified examination
• Either an Israeli patent application or a corresponding foreign patent claims priority of the other, or both the Israeli patent application and the corresponding foreign application claim priority of another corresponding foreign patent application.
• Claims of an Israeli patent application correspond to those of one corresponding patent, and the number of claims of the Israeli patent application is smaller than the number of claims of the corresponding patent. That is, the Israeli patent application is encompassed in the corresponding patent.
• A corresponding foreign patent is granted in one of the following countries: Australia, Austria, Canada, Denmark, European Patent Office, Germany, Japan, Norway, Russia, Sweden, the U.K., and the U.S.A.
• It is possible to request a modified examination based on the claims of the PCT patent application that received a positive view in a written opinion of the international searching authority and/or an international preliminary report.
• It is also possible to request a modified examination for a divisional application.
4. Procedural requirements for filing request for modified examination
• A request for a modified examination should be made in writing.
• The Applicant is required to submit Israeli-official-language translations of (i) a Notification of Decision to Grant a Patent or Certificate of Grant of a corresponding foreign application and (ii) claims, specification and drawings of the corresponding patent. If these are prepared in English, no translation is necessary.
• No additional fee is necessary for requesting a modified examination.
• It is possible to request suspension of examination of an Israeli patent application before a corresponding foreign patent application is granted a patent. The Applicant is required to submit a reason(s) for requesting suspension of examination and to pay a fee. However, if the suspension of examination holds the Israeli patent application in pending for an unreasonable period of time, the Examiner conducts examination.
• Modified examination is not necessarily granted to all the Israeli patent applications whose corresponding foreign patent applications are granted a patent. The Examiner is entitled to refuse a request for a modified examination (for example, in a case where the Examiner considers that the Israeli patent application does not comply with patent requirements etc.). If a request for a modified examination is refused, standard examination will be conducted.
(c) Advance Examination
According to the Israel patent practice, in principle, examination is conducted in the order in which applications are filed. However, it is possible to request an advance examination by submitting a proper reason for the request and paying a fee. When the request is granted, the issuance of a Notice Prior to Examination is accelerated, and the examination is accordingly advanced. This may lead to the start of the examination within 1 month. Requests for advance examination have been increasing in recent years, with the number of requests totaling 160 in 2015.
1. Eligible party for filing request for advance examination
The Applicant and a third party can request an advance examination.
2. Required conditions for filing request for advance examination
It is possible to request an advance examination for all applications.
3. Reasons for filing request for advance examination
No specific reason for filing a request for advance examination is defined. Typically given reasons are as follows:
• Third party is infringing or is soon to infringe the invention for which an application is to be filed.
• Business has already been started in Israel or is scheduled to be started in the near future.
• The Applicant may suffer substantial financial damage due to not owning a patent right.
(d) Patent Prosecution Highway (PPH)
Israel's PPH program involves 21 countries around the world.With regards to Japan in particular, the PPH is available for the following types of applications.
1. Patent application deemed patentable after examination by the JPO or the Israel Patent Office
2. PCT application deemed patentable by the Japan Patent Office or the Israel Patent Office serving as an international searching authority or an international preliminary examination organization
• A request for PPH can be filed any time before the first Office Action is issued
• The claims need to sufficiently correspond to patentable claims of a corresponding application.
In 2016, applications utilizing the PPH in Israel numbered 462, which is a huge increase over the previous year (309 applications).
(e) Green patent applications
Inventions that are useful for improving the environment by prevention global warming, air and water pollution, etc., can be examined as "green patent applications" if they satisfy certain requirements.
If an application is classified as a green patent application, the examination process starts within 3 months from the day it was classified. Before the substantive examination has started, it is possible to request the classification as a green patent application even if the application has already been filed as a normal patent application. The request does not incur an official fee.
In 2016 the number of applications that utilized this system was 22.
- (vi) Patentability Requirements etc.
(a) Unpatentable Reasons etc.
1. methods for treatment and diagnosis of the human body
2. mere provision of information
3. methods that entirely depend on mentality
4. mere computer programs
5. inventions that may be opposed to public order and morality
6. new species of animals or plants (plants may be protected by Seeds and Seedlings Law)
7. inventions relating to business
(b) Unity of Invention
In a case where an Examiner concludes that the claims encompass a plurality of inventions, the Applicant may be required to elect one invention prior to the start of a substantive examination (restriction requirement).
(c) Novelty, Inventive Step, and Industrial Applicability
An invention known anywhere in the world prior to the application date (or priority date) is regarded as lacking novelty. This applies to publicly known inventions, publicly used inventions, and inventions described in publications. No invention will be regarded as lacking industrial applicability.
(d) Exceptions to Loss of Novelty
An invention will be deemed immune from novelty loss regarded as novel if:
1. the invention is disclosed against the will of a person who is entitled to a patent right.
2. the invention is made public by a person who is entitled to a patent right or his/her successor within 6 months prior to the application date. Note, however, that “public” in this case only encompasses an exhibition held in Israel and an exhibition officially recognized in a member country/countries of Paris Convention.
- (viii) Divisional Application
1. The Applicant can file a divisional application for the invention(s) that was not elected in compliance with the restriction requirement. Such a divisional application needs to be filed in response to the restriction requirement. (Extension of term is allowed with the payment of an extension fee)
2. Any divisional application(s) other than that filed in compliance with the restriction requirement can be filed before a Notice of Allowance is issued.
3. Divisional application should be made only from a parent application. No further divisional application can be made from a divisional application etc.
- (ix) Notification of Reasons for Refusal (Office Action)
(c) Length of Time Until Issuance of 1st OA
(a) Number of times an Office Action may be issued and period in which response may be filed
There is no limitation on the number of times an Office Action may be issued. The Applicant is given 4 months to respond to the Office Action.
(b) Extension of term to respond to Office Action
The payment of an extension fee may correspond to the following extensions. The up to 6months of time extension for a response to a Notice Prior to Examination is not included in the 15 and 12 months below.
• For applications with a start of the examination before March 27, 2017, up to 6 months of time extension are available. While up to 6 months are available per Office Action, the total extended period may not exceed 15 months. • For applications with a start of the examination on or after March 27, 2017, up to 4 months of time extension are available. While up to 4 months are available per Office Action, the total extended period may not exceed 12 months
If the Applicant fails to respond or pay the extension fee, a Notice Prior to Refusal is issued five months after the initial due date. If the Applicant still fails to respond within one month of the issuance of the Notice Prior to Refusal, the refusal of the application is made final.
|Electrical, IT, Medical Devices
- (x) Amendment
The Applicant can make an amendment(s) to the claim(s) and/or the specification at any time before a Notice of Allowance is issued. Even after the Notice of Allowance is issued, the Applicant can still make an amendment(s) within the scope of a claim(s). Amendments after the issuance of the Notice of Allowance are often made during an opposition period in order for the patent to be made strong.
- (xi) Decision of Refusal
An appeal against a Decision of Refusal can be filed to the Registrar within 1 month from the date of the Decision of Refusal.
- (xiii) Trials for invalidation
Can be requested any time after grant.
(7) Duration of Patent Right
- The duration of a patent right is 20 years from the filing date. The duration of a pharmaceutical invention can be extended up to the maximum of 5 years.
4. Design System
(1) Conventions and Agreements
- Israel is a member country of the Paris Convention, the TRIPS Agreement, and Berne Convention.
(2) Filing Documents
- 1 Application form
- 2 Drawings: Perspective views are unnecessary (models, samples, or photographs are acceptable)
- 3 Power of Attorney
- 4 Certified copy of priority document (if necessary)
(3) Process from Application to Registration
- (i) Unity
In Israel, one application needs to be filed for one design. It is possible to file, in one application, designs to be applied to a series of articles with a common characteristic (designs for a set of articles), which articles are sold and used in unity.
*Note: It has now become possible to file a single application containing multiple designs. However, as when filing individual applications for individual designs, each design in a single application will be assigned a different application number, and application fees will be charged per design.
- (ii) Application Publication
Israel does not employ an application publication system for design applications.
- (iii) Substantive Examination
1 Israel does not employ a system for requesting a substantive examination for a design application. All design applications are the subjects of the substantive examination.
2 A design is required to have novelty, and not to be opposed to laws and public order and morality. Novelty of a design is judged based on whether the design is publicly known in Israel.
*Note: See (5) for information regarding changes to the guidelines for judging novelty.
- (iv) Unique System for Design
Israel employs a partial design system. A secret design system is not employed.
- (v) Response to Notification of Reasons for Refusal (Office Action) and Appeal
The term for responding to an Office Action is 12 months. In a case where the Registrar issues the final refusal, the Applicant can request oral proceedings within 1 month from the notification of the final refusal. For the Registrar's refusal after the oral proceedings, the Applicant can file an appeal in a district court within 1 month from the refusal.
- (vi) Registration
The duration of a design right is 5 years from the filing date. It is possible to extend the duration twice every five years by filing a renewal application (up to the maxim of 15 years). The effect of a design right extends to a registered design and a design similar to the registered design.
*Please refer to section (5) regarding changes to the period of duration of right.
(4) Exercise of Rights
- (i) Scope of validity
The owner of a registered design holds exclusive rights to the design and to similar designs.
Whether or not a design is "similar" is determined based a consumer's visual impression thereof.
- (ii) Licensing
Registration is obligatory.
(5) Revisions to the Israel Design Law (August 2018)
On July 26, 2017 the Israeli Knesset (parliament) unanimously approved a new Design Law (hereafter referred to as "new law"). This new law, which replaces the former Patent and Design Law established in 1924, came into effect on August 7, 2018.
The major aim of the new law is to expand protections for design rights in a wide variety of industrial fields not considered under the former law (such as graphic symbols, screen displays, and other creations falling under "modern designs"). With the establishment of the new law, Israel will be eligible for inclusion in the Hague Agreement for the International Registration of Industrial Designs. Apart from making graphic symbols (excluding fonts) and screen displays subject to protections, the major changes are as follows:
(i) Duration of period
The period of duration for design rights following establishment of the new law is 25 years. Also, design rights that could previously have their periods of duration extended by up to 15 years under the former law are now eligible for renewals of period up to 18 years.
(ii) Protections for unregistered designs
Unregistered designs may also receive a period of protection for up to three years from the date of public knowledge of the design, in order to curb imitations.
Under the former law, guidelines restricted the geographical scope of judgements of novelty to within Israel. Under the new law, the guidelines for judging novelty have been expanded to include the entire world, so if a design is publicly known outside of Israel, it will be judged to lack novelty.
(iv) Exceptions to lack of novelty
If the applicant themselves has made a design publicly known, or if a third party has made a design publicly known based on information received from the applicant, a design application will be treated as having an exception to lack of novelty providing it is filed within 12 months from the date that the design became publicly known.
5. Trademark System
(1) Conventions and Agreements
- Israel is a member country of the Paris Convention, the TRIPS Agreement, the Madrid Protocol, and the Nice Agreement.
(2) Filing Documents
- 1 Application form: Application form should include bibliographic data, goods or services, and their classifications (international classifications are not employed). Israel adopts multi-class application system. Electronic filing is accepted.
- 2 Power of Attorney (certification is not required)
- 3 One copy of Specimen of Trademark (use of standard characters is allowed)
- 4 Certified copy of priority document (this document is required to be submitted within 3 months from the filing date)
- 5 Translation of priority document (this document is required to be submitted within 3 months from the filing date)
(3) Scope of Protection
- It is possible to register trademarks, service marks, collective trademarks, certification trademarks, and three-dimensional trademarks, as well as new trademarks consisting of only sound, scent, or colors.
(4) Process from Application to Registration and Cancellation System
- (i) Application Publication
Israel does not employ an application publication system for trademark applications.
- (ii) Substantive Examination
1 Israel does not employ a system for requesting a substantive examination for a trademark application. All trademark applications are the subjects to substantive examination.
2 Examination is made on the basis of (i) distinctiveness and (ii) similarity to the existing registered trademarks.
3 Main reasons for non-registration are as follows:
• marks that lack distinctiveness
• marks that are opposed to public order and molarity
• marks that are identical or similar to prior trademarks registered by others
• marks that cause misconception of place of origin
• marks that may be presumed to have a relationship with the president
*Israel's system allows for amendments to give a trademark distinctiveness (in accordance with the registrar's amendment instructions)
4 It is not required that marks be registered in the original country.
- (iii) Response to Notification of Reasons for Refusal (Office Action) and Appeal
The term for responding to an Office Action is 3 months. In a case where a Decision of Refusal is issued, the Applicant can file an appeal in the Supreme Court.
1. The term for responding to an Office Action is 3 months.
2. Disclaimers are allowed.
3. In a case where a Decision of Refusal is issued, the Applicant can file an appeal with the Supreme Court.
- (iv) Opposition
The Applicant can file an opposition within 3 months from the publication date of the application.
- (v) Registration
The duration of a trademark right is 10 years from the filing date, and renewal is allowed in 10-year increments. Certificate of use is not required at the time of renewal.
- (vi) Cancellation System
1 Cancellation system due to non-use
If a registered trademark is not used for 3 years after the registration, the registration of trademark can be cancelled by the request of the interested party.
2 Registration cancellation system
The interested party can file a request for cancellation of the registration of a trademark within 5 years from the registration for the reason that the trademark applies to the grounds of unregistrability.
(5) Exercise of Rights
- (i) Scope of validity
Under Israel's trademark system, the owner of a registered trademark cannot exercise trademark rights against the use of a trademark similar to the registered trademark in connection with goods or services similar to the designated goods or designated services.
- (ii) Licensing
Registration is obligatory.
6. Copyright System
(1) Conventions and Agreements
- Israel is a member country of the Berne Convention, Rome Convention, Geneva Phonograms Convention, and the Universal Copyright Convention (Convention of 1952).
(2) Copyright Act
- Israel's new Copyright Act was established in 2007 and came into effect in 2008. The major point of this revised law was to introduce US "fair use" provisions with regards to copyright limitations. British "fair dealing" provisions had been employed previously.
- ■Article 19 of the Copyright Act - Fair Use
(a) Fair use of a work is permitted for purposes such as: private study, research, criticism, review, journalistic reporting, quotation, or instruction and examination by an educational institution.
(b) In determining whether a use made of a work is fair within the meaning of this section the factors to be considered shall include, inter alia, all of the following:
(1) The purpose and character of the use;
(2) The character of the work used;
(3) The scope of the use, quantitatively and qualitatively, in relation to the work as a whole;
(4) The impact of the use on the value of the work and its potential market.
- ■In addition to the above, the Copyright Act also includes the following rules on copyright limitations:
Article 20: Use of works in juridical or administrative procedures
Article 21: Reproduction of a work deposited for public inspection
Article 22: Incidental use of a work
Article 23: Broadcast or copying of work in public place
Article 24: Computer programs
Article 25: Recording for purposes of broadcast
Article 26: Temporary copies
Article 27: Additional artistic work made by the author
Article 28: Renovation and reconstruction of buildings
Article 29: Public performance in an educational institution
Article 30: Permitted uses in libraries and archives
Article 31: Regulations regarding educational institutions, libraries and archives
Article 32: Manufacture of sound recordings as against royalty payment5 Translation of priority document (this document is required to be submitted within 3 months from the filing date)
1 Mini-guide for Industrial Property Systems (external link provided in the JPO homepage)
2 Japan Patent Attorneys Association
3 Patent News No. 13686 and No. 13687 by Research Institute of Economy, Trade and Industry
4 "Report on Provisions Limiting Rights in Other Foreign Countries" - separate volume included with "Report on Systems for Copyright Distribution/Agreements: Report on Provisions Limiting Rights In Copyright Systems" (March, 2009) [Japanese-language Reference] - Research Group regarding Provisions Limiting Rights in Copyright Systems; Mitsubishi UFJ Research & Consulting
Patent and Trademark Attorney
||Kazuki MATSUMURA, born in 1967, obtained a MS in Animal science and technology from Tohoku University. The targets of his research include Animal products chemistry, Immunology and Food chemistry. His specialty covers Biochemistry and Food ingredients. He is presently a member of JPAA.
Technology is steadily advancing, and the law is often reformed with increased importance of protecting and utilizing intellectual property.
To cope with these circumstances accurately, I make efforts to answer our client's request and to contribute to industrial development by continuing earnest studies and doing my work sincerely.
|Osaka Legal Department Trademark Division Assistant Manager
Majored in Law
I will make every effort to fulfill our clients' expectations, keeping in mind to always smile.