• Jeremy Rutman

First Filing

Updated: Feb 4


Inventions devised by Israeli inventors which have defense or nuclear applications must be filed in Israel first, where they are inspected and in some cases required to 'make a deal' with the government; other than these cases, Israeli inventors can actually file first in a number of regions, including the US, UK or elsewhere.


The US provisional is a popular first stop. This has some attractive features:

  • Low cost ($75 for micro entity, $150 small entity, $300 large entity)*

  • No specific format

  • Can be left unpublished, allowing for resubmission if necessary

  • Provides an initial year of coverage until next stage (nonprovisional or PCT)

  • Recognized worldwide for priority

  • never published

  • 'Patent Pending' label can be used

  • No declarations necessary

  • No request for a prior art search

  • No request for a patentability examination

  • Postponement by up to 1 year of the onset of the 20 years of possible patent life

  • No requirement for patent claims


But as mentioned the Israel Patent Office and other offices worldwide can also be used, each ultimately leading (for instance) to a PCT application which can then lead to national applications around the world. So what other considerations come into play?


The UK patent office (UK Intellectual Property Office or UKIPO), for instance, also gives an initial examination during the first year which can be useful as a kind of 'test for early knockout'. Likewise the Israel Patent Office gives Israeli applicants who first file in Israel the option of expedited examination.

Good examination results of such an early Israeli (or UK) application can be used with the Patent Prosecution Highway (PPH) agreements the Israeli Patent Office (or UKIPO) has with various other offices.

The 1000NIS search and examination from the Israel Patent Office is usually less costly than a full search and patentability opinion conducted through the PCT (which can run e.g. 3000NIS) .


For the Israel Patent Office to accept small entity status, a declaration has to be signed before a lawyer or patent practitioner; the US provisional, on the other hand, can simply be signed by the applicant, without the lawyer. Thus the Israel version requires another lawyer visit, and as has been written, every time a lawyer opens his door, a dollar leaves a client's pocket...

At the UK Intellectual Property Office there's no declaration required but rather a search fee (150£) and optional examination fee (another 100£).

Most modern patent offices including the US, UK and Israel allow online filing, in some cases giving discounts for doing so.

At later stages of the patent process, various offices will want access to the original priority document. A system called the 'digital access service' or DAS has been developed over the years to take care of document sharing between various patent offices.


A US provisional application or UK application is by default available (to the applicant/inventor/attorney only) via the digital access service (unless it is specifically requested not to be available), making subsequent steps easy. However if you file first in Israel and later file outside Israel (or file a PCT application using any Receiving Office other than the ILPO), you need to get a physical certified copy sent to the relevant patent office. Getting certified copies can be time consuming and (at the USPTO) is another $70 or so for the document and FedExing it to wherever it needs to go. This can also happen at the USPTO if the original 'Applicant Data Sheet' is filled in online instead of uploaded.

A US provisional is generally 'stuck in a drawer' and not published until subsequent steps (eg nonprovisional or PCT applications) are taken. Likewise at the UKIPO and ILPO, one can abandon the application and it will not publish.

The USPTO's electronic filing system or EFS gives the filer a filing receipt that shows the application number, the fees paid, and names and sizes of the documents filed. If the filer has a USPTO customer number, the newly-filed application is visible in the private section of the Patent Application Information Retrieval (PAIR) system. The IL and UK equivalents will email copies of filed documents back if requested, and documents are available online only at publication.


The Israel application may also be filed in Hebrew, which may be easier for some users.


Finally, there is a grace period allowed by some offices, whereby you can file a patent even after disclosing it in public. It is generally a bad idea to rely on this as different offices have different rules, and a case that may be allowable e.g. at the USPTO may be found invalid by the European Patent Office. The US grace period is 1 year while the Israel grace period is 6 months.


Some of the pros and cons concerning filing a US provisional vs. UK or IL filing as the first step in a filing plan are gathered in the following table:

US provisional

UK first filing

Israel first filing

Cost

Optional Examination

none

300NIS request, 700NIS if granted

Optional Search

none

Part of exam

Online access

​see filing immediately on PAIR

emailed copy

emailed copy

Subsequent availability

auto entry into DAS

auto entry into DAS

no auto DAS

Nonpublication possible?

Yes

withdrawal option for nonpublication

withdrawal option for nonpublication

Language

English

English

English, Hebrew

prior art publication grace period

1 year

None

6 months

* fees for micro entity/small entity/large entity, which can be paid after filing

** Small entity status requires declaration in front of lawyer/patent attorney



N.B. The ILPO may at some point adopt its own provisional patent - see https://www.gov.il/he/departments/news/provisional_survey_ilpo



REFERENCES

https://www.wipo.int/export/sites/www/pct/en/pct_strategies/the_third_way.pdf



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