A niche blog dedicated to the issues that arise when supplementary protection certificates (SPCs) extend patents beyond their normal life -- and to the respective positions of patent owners, investors, competitors and consumers. The blog also addresses wider issues that may be of interest or use to those involved in the extension of patent rights. You can email The SPC Blog here

Thursday 16 January 2014

Israel's Amendment No. 11 now imminent

From Liad Whatstein (Shlomo Cohen & Co) comes news of Amendment No. 11 of the Israeli Patents Act which, Liad tells us, is expected to be enacted shortly --as soon as next week, unless there is an unexpected delay.  The Amendment introduces several important revisions in the Israeli Patent Term Extension (PTE) system. Here's the firm's overview, from which the following is extracted for your interest:
The unique Israeli PTE system is based on “external” linkages to PTEs or SPCs granted in 21 “Recognized Countries” (US, EU-15 (Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, Sweden and the United Kingdom), Australia, Iceland, Japan, Norway, and Switzerland). 
Eligibility to PTE and the calculation of the PTE period is based on multiple linkages: 
* The extension will be equal to the shortest extension granted to a Reference Patent in any of the Recognized Countries; 
* The PTE will expire no later than the first expiry date of a PTE of a Reference Patent in any of the Recognized Countries; 
* The extension must end no later than 14 years from the earliest date in which a regulatory approval was obtained in any of the Recognized Countries. 
* PTE in Israel will only be available if PTE/SPC was granted in the US and in at least one EU-15 country;
The result of these multiple linkages is that in most cases the de-facto extension period does not exceed two to three years. 
Amendment No. 11 of the Patents Act is the result of a bilateral agreement between Israel and the US. It has recently been approved by the Knesset (Israeli Parliament) Judiciary Committee and will be enacted shortly. 
Amendment No. 11 reduces the number of Recognized Countries to include only the US and the top five European markets (UK, France, Germany, Spain and Italy). It remains to be seen whether this reduction in the number of Recognized Countries will meaningfully extend in average Israeli PTEs.
Unfortunately, Amendment No. 11 also includes several provisions which further curtail the scope of PTE protection under Israeli law:
* An Israeli PTE will automatically expire when a Reference Patent is revoked or a PTE/SPC of a Reference Patent is revoked or withdrawn in any of the Recognized Countries; 
* If the basic term of the patent is about to expire and US/EU PTEs/SPCs have not yet been granted (i.e. no eligibility for PTE under the linkage mechanism), interim PTE orders will no longer be available; 
* Extensions of the deadline for filing the PTE petition (90 days after the date of regulatory approval in Israel) will not be granted; 
* Only one extension will be allowed during prosecution of the PTE petition; 
* A PTE petition must now be filed within 90 days of regulatory approval in Israel also if the patent application is still pending (previously, the deadline to file a PTE petition was extended until 90 days after patent grant); applicants will have a 90 days grace period from the date of the Amendment to file PTE petitions for pending patent applications. 
The pdf can also be downloaded here.

Thanks so much, Liad!

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