FAQs

A patent is a legal document issued to an applicant who owns the right to an invention (by virtue of being the inventor or having acquired the rights to the invention from the inventor). The patent grants its owner exclusive rights to practice the invention for 20 years from the date of the first application.

Like in all legal proceedings, the interested party may act directly on their behalf and do not need to be represented by a patent attorney. However, a patent attorney is a professional who is experienced with drafting patent applications, prosecuting them from their filing to the patent’s issuance, and performing any related activities. Therefore, a patent attorney is typically the person who can get the best results for the inventor or the applicant and obtain the grant of a better patent than an inexperienced applicant.

A patent attorney should be consulted as early as possible, even in the preliminary stages when the inventor is still debating various aspects of his/her invention. An experienced patent attorney will guide the inventor, answer questions and offer comments, all of which may help the inventor proceed in the right direction with his/her invention. This will often save time that may go wasted on pursuing directions that will not lead to a viable solution.

Any device, method, and process, which is novel and inventive may be protected by patents, provided it fulfills the statute’s requirements. Not all countries have the same patentability provisions, which should be considered when planning the protection for an invention. For instance, most countries do not allow for patent protection of methods of treatment of the human body (the USA is a noteworthy exception).

The protection afforded by a granted patent results in the patent owner’s exclusivity to perform what is protected by it in its claims, as long as a patent is in force. In important countries, this protection extends beyond the simple reading of claim language when, for instance, in important jurisdictions, the direct product of the patented process is protected by the patent, even though it may not be claimed explicitly in its claims. Accordingly, protection prevents competitors from manufacturing, selling, and importing the patented product into a country where the patent is in force.

A provisional patent application is a type of application that is not examined and cannot result in an issued patent but provides priority rights for its applicant to file corresponding patent applications in all countries signatories to the Paris Convention within 12 months from its filing date. A provisional patent application expires automatically at the end of the 12-month period and cannot be revived.

As opposed to a provisional patent application, a standard patent application is a patent application that can be prosecuted to grant and may result in a valid granted patent. While provisional patent applications are not examined and, therefore, from the formal point of view, there is little or no importance to a rigorous fulfillment of the rules governing how patent applications should be drafted, a standard patent application must be drafted and according to those rules. This does not mean that the provisional patent application is relieved of the need to contain all the substantive information needed to support a priority claim and the issuance of a patent claiming that priority.

Unfortunately, patent protection is territorial, which means that patent protection exists only in the countries where a patent application has been filed, and a patent has been issued thereon. If you only filed a patent application in Israel, your invention will be covered by it in Israel and free for the whole world to practice in other countries.

An international patent application (also referred to as a “PCT” application) is an application filed under the Patent Cooperation Treaty, an international agreement signed by 153 countries. This agreement allows performing initial stages of the patent examination by a designated international Examiner, leading to the issuance of an international preliminary examination report that serves as a nonbinding opinion. The maximum length of the international proceeding is 18 months, at the end of which national phase applications derived from the international patent application must be filed.

With some exceptions, there are no limitations regarding the country in which your patent application can be filed. However, most often, it makes sense to file an application in the country where you live and operate. Still, a decision on the counter in which to file should be taken on a case-by-case basis. Limitations that may apply, which may force you to file in a specific country, include subject matter that cannot be filed as a first application outside the country where you operate, such as inventions relating to armaments and atomic energy. Furthermore, some countries require that approval (also referred to as “Foreign Filing License”) be requested and granted to their citizens or subjects if they wish to file the invention as the first application in a country other than the country of citizenship or the country where the invention was made. Notable examples are the USA and the UK.

The software itself is not an invention, and is protected by copyright. However, software inventions typically comprise systems and processes actuated by software, which may well be patentable. This is an area requiring particular knowledge and experience from the patent attorney, in order to meet the ever-evolving requirements of different countries.

Patents are a necessary tool to maintain exclusivity. If you make an invention and you do not cover it with a patent application that will eventually result in a granted patent, then your ability to stop a competitor from copying your invention and profiting from it, without any remuneration given to you, is limited if not null. Therefore, patents are the only effective way to protect your inventions from being taken from you and used by others.

A PCT application is an international patent application filed under the Patent Cooperation Treaty, which is an international agreement signed by 153 countries. This agreement allows performing initial stages of the patent examination by a designated international Examiner, leading to the issuance of an international preliminary examination report that serves as a nonbinding opinion. The maximum length of the international proceeding is 18 months, at the end of which national phase applications derived from the international patent application must be filed.

You don’t, but in many cases, the patent search should be carried out by a patent attorney, and specifically the patent attorney who will draft your patent application. The widespread practice of performing searches through patent searching companies leads to a disconnect between the search results and the intent of the patent attorney who plans how to protect your invention. Accordingly, it is often most desirable to entrust the patent attorney with the search.

There are several points in time when a patent search is recommended. The first one is when you think that you may have a patentable invention, and you wish to strengthen that understanding, as well as attempt to better define the breadth of your claimable invention. Other searches may become recommended for business purposes, such as performing more in-depth searches than the original preliminary search before investing in expensive equipment, performing FTO (Freedom To Operate) searches before launching a product on the market, etc.

A patent application may only lead to a valid patent if the invention is novel. Novelty means that the invention has not been disclosed without limitation to people other than the people within your organization. A typical mistake is providing details of your invention to others, whether for the purpose of consultation or when seeking seed investment or for any other reason, without taking appropriate precautions like having the people to whom you are disclosing your invention sign a secrecy agreement (typically referred to as an “NDA”) that makes it clear that the disclosure is made to them for a specific purpose and should be kept entirely confidential.

Patent attorneys have a duty to keep all information conveyed to them by a client confidential. Accordingly, there is no need to request that an NDA be signed by the patent attorney you are consulting with. Patent attorney-client relationships require a high degree of confidence. If you don’t feel confident that your patent attorney will keep the information you’re giving him/her a secret, instead of asking him/her to sign an NDA, find a patent attorney you feel is reliable.

The moment a patent application is filed and provided that it contains all the required technical details needed to support the applicant’s claims, without which no valid patent can issue, it is safe to expose your invention. However, you should keep in mind that your patent application will remain secret for 18 months from its filing date. Therefore, you should limit the exposure to what is actually needed for business purposes since premature exposure to competitors may entail undesirable results.

An invention made by an employee belongs to the employer unless the invention is not a so-called “service invention,” meaning that the invention was not made as a result of the employee’s service and during the time he was employed. Disputes as to whether an invention is a service invention belonging to the employer or not a service invention belonging to the inventor can be resolved according to established legal rules.