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Background

Under Israeli patent law, a divisional patent application can be filed any time after the filing of an application until payment of the allowance fees or abandonment of the application.  Specifically, divisional applications can be filed under the following situations:

  1. Upon national phase entry of a PCT application in Israel with more than 50 claims directed to several different embodiments (i.e., in order to avoid payment of excess fees);
  2. In response to an Office Action in which a lack of unity is raised;
  3. Before payment of allowance fees for the parent application which was allowed with a narrow scope of protection; and/or
  4. Before the issuance of a final rejection (more preferably, in response to a Notice before Refusal).

Generally speaking, a divisional application should be directed to an aspect of the invention disclosed in the description but not claimed in a parent or other divisional application.

Dividing a divisional is allowed.

Requirements for Filing a Divisional Application in Israel

The following must be submitted when filing a divisional application:

  1. A copy of the specification and drawings from the parent application;
  2. A set of claims (the claims can be the original claims from the parent application, or preferably, a new set of claims);
  3. Payment of all the necessary official fees (as for a new filing); and
  4. A Power of Attorney.

Overlap (e.g., double patenting) rejections in Israel

As will be discussed in more detail below, until recently, the Examination Guidelines of the Israeli Patent Office (IPO) stated that an Examiner should issue an overlap (e.g., double patenting) rejections when two applications with same dates and same applicant (such as a parent application and a divisional application) contained one of the following: 

  1. Claims reciting identical subject matter;
  2. Claims reciting overlapping subject matter; or
  3. Claims in one application that were completely encompassed by the subject matter another application (e.g., a parent application might cover a genus of compounds but the divisional may contain claims to specific compound included in the genus for treating a disease or condition).

Unfortunately, unlike the U.S., Israeli patent law does not provide for the filing of a terminal disclaimer in response to an overlap (e.g. double patenting) rejection.

New Examination Guidelines

On February 10, 2020, the Israeli Patent Office issued amendments to the Examination Guidelines which include a specific amendment regarding items 2) and 3) above, namely, the overlap of subject matter involving two applications.  The amended Examination Guidelines expressly state that an Examiner is not to raise an overlap rejection in a divisional application owned by the same Applicant having claims of different scopes provided that the applications expire on the same day.  In other words, going forward, overlap (e.g., double patenting) rejections in divisional applications having the same filing dates and the same Applicant can only be raised by the Examiner when claims in both applications have identical scope.  Some examples will now be provided.

Example 1: No overlap (e.g., double patenting) rejection raised

Claims of parent/divisional application1: A+B+C  
Claims of Divisional application2: A+B+C+D or A+B+C1 or A+B  

Example 2: Overlap (e.g., double patenting) rejection raised

Claims of parent/divisional application1: A+B+C  
Claims of divisional application2: A+B+C  

The amendments to the Examination Guidelines became effective on February 10, 2020 and apply to all applications currently under examination regardless of filing date. 

Conclusion

It is expected that the amendments to the Examination Guidelines will make prosecution of divisional application easier for Applicants as Applicants will no longer be required to spend time, effort and money finding creative configurations of claim amendments to avoid overlap rejections.  However, Applicants should be aware that in view of these amendments, Examiners are more likely to closely examine the ownership of parent and divisional applications.  Applicants should make sure that if there are any changes in ownership of a patent family that they are quickly recorded with the IPO.

This post was written by Lisa Mueller and Yael Saidian of YSDN Patents (https://ysdnpatents.com)

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