Israel First

First filing of patents and trademarks in Israel provides the applicants significant and unprecedented advantages, not only within the State of Israel, but throughout the world. Israel has become a platform for global registration of IP rights.

Israel is a small market, a “drop in the ocean” compared to countries such as the US and China. Why, then, do many foreign companies protect their Intellectual Property (IP) rights in Israel?

One of the main reasons is that Israel is known as a global center of research and development in various fields (Israel as a Start-up nation), thus the registration of IP rights in Israel, provides these foreign companies with a monopoly pedestal compared to their competitors, first and foremost in the local Israeli market.

Another reason is that the Israeli Patent, Trademark and Designs Office (ILPTO) provides a very fast and efficient registration of IP rights. Moreover, based on the registration in Israel, the registration process can be accelerated in many other countries as well, this is due to some bilateral agreements in which Israel is a party to.

Today, more and more foreign companies consider the registration of IP rights in Israel, to be a part of a broad global strategy for registration of IP rights. Filing the first filed application in Israel, provides the applicants significant and unprecedented advantages, not only within the State of Israel, but throughout the world. Two IP fields in which an applicant would most probably wish to try the “Israel First” strategy are patents and trademarks.

Patents - fast examination and great certainty

The patent registration process is usually a long and expensive procedure which involves much uncertainty. At the same time, due to the novelty condition, applicants are forced to file their patent application before they can disclose their invention or try to externally fund it. This is often an obstacle to young and new fund-less entrepreneurs and companies. The ILPTO allows an individual (or an entity) who submits their first patent application in Israel to request (and automatically receive) an approval for an expedited examination of the patent application. In order to obtain this expedited examination, one wouldn’t have to provide any additional explanation or reasonable “justification”, rather just to pay the marginal fee. Thus, whereas in a “regular track”, one would have to wait approximately two to four years for his patent to be initially examined, with the expedited examination procedure one will receive his first office action within only three months (!)

One would ask, how is the “first filing in Israel” strategy beneficial to a company that has no need in receiving protection or monopoly for its invention in Israel. Well, on the basis of the patent registration in Israel, the company will be able to expedite the registration of its patent applications in other countries, using the international agreements between countries (GPPH – Global Patent Prosecution Highway), such as the USA, Europe and other countries in Asia. Choosing this path, patent examiners around the globe can make use of work products from the ILPTO allowing them to expedite the examination in their own country as well. This advantage is an important variable in any strategy for managing global IP rights.

According to the Paris Convention and the PCT Convention, applicants must submit their patent application for registration in other countries within one year from the first filing date. In addition, upon payment of an appropriate fee, the applicant can request an extension of one and a half years (PCT). When applicants choose the path of first filing of their patent in Israel, they will receive greater certainty regarding the registration of their patent in other countries, which will allow them to make better decisions when deciding in which countries to file their patent application.

Currently, the ILPTO grants the fastest examination time-line in the world and doing so, it does not require the applicant to have an Israeli citizenship, thus all applicants worldwide can make use of this option. To summarize, the ILPTO is used as a stepping stone for expedited examinations of patents worldwide.

Trademarks – fastest registration ever

Just like in the field of patents, the ILPTO is a pioneer in the field of trademarks as well. The ILPTO enables an expedited examination which begins within just a few days (!) making the ILPTO the quickest examination authority in the world. Just like in the patent strategy, there’s no need to hold an Israeli citizenship in order to benefit from this unique expedited examination, therefore many foreign companies can use this procedure.

Trademarks, unlike patents and designs, require use in commerce in order to stay in force. In some countries non-use can make the trademark vulnerable to cancellation while in others, such in the US, the applicant is required to proof use of the mark even before it is registered and also upon the timely renewals.

The preliminary condition to proof use in the US, bears additional time and fees. The registration of the trademark in Israel can assist with that. Should the US application be filed based on a foreign registration (such as an Israeli one), there is no need to file evidence of use prior to the registration (but rather only 6 years after the registration and upon the timely renewals). This saves time and money but moreover allows the applicant to register the trademark in the US without showing use of the mark in the US prior to the registration.

How does it work? - very simple. The applicant of the trademark application submits his application in Israel and simultaneously submits an affidavit stating that it intends to submit the trademark for registration in other countries as well. Upon submission of the affidavit and payment of the appropriate fee (which is about half of the application filing fee), the application will be approved for expedited examination. The applicant then waits only a few days (!) instead of waiting about 6 months for the examination to begin.

Significant benefits

There are several advantages to the registration of your trademark in Israel first. First, more certainty. The rapid examination of the trademark examiners in Israel does not affect the quality of the examination; therefore, if no office action has been received regarding the trademark being ‘generic’ or ‘descriptive’, it contributes to the certainty of the applicant regarding other registrations of the trademark in other countries.

Second advantage is time. On the basis of the registration in Israel, registration in other countries could be requested quickly and easily. For instance, if an applicant files its second trademark application in Europe within six months (from the date of submission in Israel), it will be granted an automatic and retroactive priority from the first trademark filed in Israel. In other words, the European application will obtain the filing date of the Israeli application. This way the applicant has more time, six months, in which he can wait and hold on to the additional expenses of foreign filings.

Third advantage is cost savings. Registration of a trademark in the US, which is filed on the basis of a registered trademark in Israel, does not require filing preliminary evidence of use. In other words, the applicant doesn’t need to provide use of the trademark within the US prior to registration, and therefore saves the fees incurred with said procedure.

In light of the above, it appears that even though the Israeli market is indeed a “drop in the ocean,” it is one with proper management of IP, along with efficient and unprecedented expedited procedures provided by the ILPTO. Initial registration in Israel will grant the applicant significant and unprecedented advantages not only in Israel, but also worldwide.

Disclaimer – The views expressed in this article are the personal views of the author and are purely informative in nature.