1) The applicant's duty to disclose prior art references to the Patent Office has been expanded. In addition to the applicant's duty to provide the Patent Office with a list of references cited in other jurisdictions the applicant has the duty to provide to the Patent Office a list of publications published prior to the date of the application, known to the applicant and directly relating to the invention. Other amendments codify the Nazareth District Court decision reported in our Information Letter N.S. 182 that the duty to inform the Patent Office of references is ongoing and does not cease until the application is accepted. If the applicant intentionally does not comply with the duty to disclose references or submits deceptive information, the Registrar or the court may prevent the grant of or revoke the patent, grant a compulsory license or shorten the patent term. The court may also impose a fine under the penal law.

2) Functional claiming has been codified and the law now provides that any feature of the invention can be expressed in a claim in the form of a "means for performing a function" or as a step for the performance of a function. It is not required to specify the structure, material or operations required for the performance of the function as long as the structure, material or operations have been described in the specification. This provision is similar to Section 112 of the U.S. patent statute which also provides for functional claiming. We have been advised that in Israel the means plus function element of the claim may be the sole point of novelty. This is unlike the situation in the U.S. where the means plus function element of the claim cannot be the sole point of novelty.

3) Internal priority will be permitted within 12 months of the filing of the first application in Israel.

4) If two or more applications claim the same subject matter, in order to avoid delaying the prosecution of the second application, divisional applications may be filed for the non-overlapping subject matter.

5) Contrary to the 1986 decision in Ambats Ltd. and Another v. Shechter, that held that "no party may move to revoke a patent after the period of limitation set forth in the Israeli statute of limitations has expired, namely, seven years from the date of filing", the patent law has been amended to state that the seven year statute of limitations does not apply to patent revocation proceedings.

1) Israel will become a member of the PCT.

2) Israel will adhere to the Budapest Treaty on International Recognition of Deposited Microorganisms and will permit reference to a deposit made under the Budapest Treaty to meet part of the description requirement of an invention that concerns biological material, a method for the production of the biological material or the use of biological material.

3) For some time, the Patent Office has been willing to grant patents under a "modified" procedure if the applicant is willing to amend the application to conform to a patent granted in a strict examination jurisdiction. There has, however, been a doubt as to whether this procedure complied with the requirement of the law that the application be "examined" by the Israeli patent examiners. Under the amendment to the law, modified examination of an application will be codified. Modified examination will be permitted where a patent has been granted on an application for the same invention in a jurisdiction which is included in a list that will be published by the Registrar. The applicant seeking modified examination must submit a copy of the patented claims translated into the language in which the application was filed in Israel. The Israeli application may not be accepted if the applicant fails to comply with all of the procedural requirements or if there exists a specific ground for not accepting the application.