Sometimes we receive inquiries regarding the admissibility of requesting examination under the Patent Prosecution Highway ("PPH") based on the claim sets of two corresponding applications in a single Israel patent application.
In Israel one can file a single application based on the claim sets of two corresponding foreign applications. Once the foreign applications have been allowed, the applicant can then request accelerated examination under the PPH based on both allowed applications provided that examination of the Israel application has not begun.
It should be noted however, that examination under the PPH only speeds up the examination process, it does not overcome issues of novelty (Section 4 of the Israel Patent Law), inventive step (Section 5 of the Israel Patent Law), or unity of invention (Section 8 of the Israel Patent Law).
As such, once examination begins, the Examiner may reject the application for lack of novelty and/or inventive step, or the Examiner may determine that there are two, or more inventions present (lack of unity of invention).
If it is determined that two or more inventions are present, the applicant will have to restrict the application to the first claim set, while retaining the right to file a divisional application with the second and subsequent claim sets.
We would therefore advise putting the preferred claim set first. Note that in all cases where there are multiple independent claims present we would advise putting the preferred claim set first for the same reason.
Once both foreign applications issue, the applicant can request a modified examination (Section 17(c) of the Law) based on both patents, should this still be relevant and all the necessary conditions be present. It is important to be aware that while a PPH request cannot overcome a rejection based novelty and/or inventive step, a modified examination request can in most cases overcome these rejections.
Like a PPH request however, a modified examination request will not overcome a determination that unity of invention is not present. That, however, is a matter for separate discussion.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
