Engraved Basic Concepts
- In many cases, an invention is developed in our places and an application for patent registration is submitted on its basis in Israel. The application is local and is discussed by the local competent authorities. However, we live in the era of the global village, in which many inventions are protected simultaneously in several countries, and it is possible to register a patent in Israel on the basis of the protection granted to it in foreign countries, which are recognized by Israeli law; or to extend the protection given to it here on a basis made abroad.
- Indeed, the Patents Law, 5727-1967 (hereinafter: the Patents Law or the Law) allows the registration of a patent in Israel on the basis of the existence of a patent registered outside it, as well as the extension of the validity of a patent in Israel on the basis of relevant developments in relation to patents overseas.
Here a distinction must be made between a "basic patent" and a "reference patent", both of which are defined in section 64A of the Law. A basic patent is "the patent that protects any material, a process for the manufacture of a substance, the use of a substance or a medical preparation containing a substance, or a process for the manufacture of a medical preparation containing a substance, or medical equipment that is subject to licensing in Israel." The basic patent is therefore recognized and registered in Israel.
The Ottoman Settlement [Old Version] 1916 "Reference Patent" reflects a reference point that looks outside of Israel, to the recognition given there. It is defined as "any patent in a recognized country that protects the material, the process for the manufacture of the substance or the use of the substance, or the medical preparation containing the substance, or the process for the production of the medical product containing the substance, or the medical equipment, which is claimed in a basic patent in the State of Israel, whether or not the said patent is parallel to the basic patent" (ibid.).
- 12-34-56-78 Chekhov v. State of Israel, P.D. 51 (2) Against this background, a situation may arise in which an order extending the validity of the reference patent may arise abroad. This situation is also defined in the Law (ibid.), and it is determined that it is "an order or approval ordering an extension, by one or more days, of the validity of a reference patent in relation to a medical preparation containing the substance or in relation to medical equipment, which is protected by the reference patent." The law further establishes certain conditions that allow recognition of the extension order, and distinguishes between an extension granted in the United States and an extension granted in recognized European countries.
On the basis of this extension, which is granted abroad in the relevant countries, an application may be submitted to extend the period of protection of the patent in Israel. If the Registrar of Patents is convinced that the conditions set forth in the law have been met, it must extend the period of validity of the basic patent (section 64B of the Law).
- Section 64D of the Law determines the conditions for granting an extension order of the validity of the patent in Israel:
64D. Conditions for Granting an Extension Order