Thursday, August 23, 2007

Patents: US `Continuation in Part` (CIP) Patent, as a Basis for an Accelerated Examination Process in Israel

The Israel Commissioner of Patents held (20 August 2007) that a CIP patent is slightly different than a regular patent and would not be easily the basis of a request for an accelerated examination of an Israeli patent application, claiming priority of that equivalent CIP.

Patent application No. 136482 was filed on 31 May 2000 claiming priority of a US patent application No. 09/329374 (Patent No. 6218584) dated 10 June 1999 which forms a link in the chain of CIP applications. The Israeli application was accepted and published within Israel Patents and Designs Gazette on March 12, 2006.

Within the opposition procedure, the opponent filed a motion to dismiss the Israeli application, since its notice of acceptance was based on Article 17 [c] of the Israel Patent Act of 1967. Under Article 17 [c] the process of examination of an Israeli patent application can be shortened significantly, if a proper search was already been carried out for the same invention in one of 12 specified countries (such as US, UK, Japan etc.) and a patent was already granted. In which case, the invention would deemed by the Israeli Patent office to be novel, non-obvious and having unity of invention and adequately drafted claims and specifications.

The opponent claimed that a CIP application cannot be used for purposes of Article 17 [c] as the validity of the claims in terms of novelty and non-obviousness in such applications are not adequately verified by the USPTO as a matter of law, and yet for US purposes, these claims enjoy the priority date of the parent application. The opponent further claimed that as the Israeli law does not provide for a similar status to CIP patents, any previous publication of applications within the CIP chain, including the parent application, can be used as a reference against the Israeli application claiming priority of the CIP patent.

The Israel Commissioner of Patents held that in principle, a CIP patent can be the basis of a request for an accelerated patent examination of an equivalent Israeli patent application, under Article 17 [c]. This determination, in fact, upholds Commissioner Regulations (No.33) dated 19 October 2004.

However, the Commissioner proceeded to explain that the presumption under Article 17(c) as to novelty and non-obviousness of the Israeli application claiming priority of a CIP patent cannot, a priori, be established. All previous applications within the CIP chain which were published, must be carefully examined against such an Israeli application. It was further asserted that a request for an accelerated examination process under Article 17 [c], will be accepted only if none of the earlier applications within the CIP chain were published in the US, previous to the priority date to which the Israeli application is entitled.

In this case, a few publications of application within the CIP chain were found to carry a date prior to the priority date claimed for the Israeli application, and therefore a request under Article 17[c] should have been rejected. However, the Commissioner held that since an opposition was filed against this patent application, during which questions of novelty and non obviousness will be determined, there is no relevance to the fact that rule 17 [c] was wrongly applied.

Yaara Shoshani, Appelfeld Zer Fisher
23 August, 2007

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