Patents

A patent protects a product or process that is new, inventive, useful and industrially applicable in any technological field.

The two main requirements that an invention has to meet for patent protection are novelty and inventiveness. The novelty requirement is met if an invention is not fully described in any single publicly available publication, which is relevant to its technical field.

Inventiveness is met if the invention cannot be constructed of the disclosure in one or more publicly available publications.

A patent is in fact a unique paper with technical and legal aspects that describe the invention and how to make it and define the scope of monopoly, respectively.

The patent system actually grants exclusive rights to its owner to prevent others from making the invention as defined in the patent without his or her permission. This is provided that the patent contributes to the advancement of technology to the benefit of the general public.

A patent is an intellectual property that grants its owner with exclusive rights for 20 years. Its importance is not just in its monopoly of making and selling the invention, but also as an asset with independent value because of the enormous importance we relate to the knowledge it contains. Such knowledge may be valuable to firms, factories and private people wishing to increase their holdings in intellectual property assets in general and particularly in a particular technological field.

Trademarks

A trademark is name or logo with shape or meaning that distinguishes the goods or service that carries it from other similar goods and services in the same or related fields of commerce or even completely distant ones.

There are different categories of trademarks, descriptive, hinting, imaginary and famous, and each one of them is required to prove its uniqueness in the minds of the customers buying the goods or services they mark.

Trademarks are in fact quality markers in the eyes of the public that uses them to identify the corresponding goods or service.

For example, famous marks as ‘Coca-Cola’ or the red and yellow ‘M’ of Mcdonalds are enough to identify the drinks and food they represent and value their quality.

Registration of trademarks is similar to that of patents, although the tests are different.

The vast exposure to visual content in the media makes trademarks assets on their own right for promoting goods and services. As a result, they allow their owners to trade them in the market according to acceptable valuation.

Recently developed international treaties and establishments provide easier simultaneous registration of a trademark in multiple countries. Famous marks accumulate reputation with use, so a mark owner is always recommended to use his or her mark to establish its connection with the goods or service it marks.

Designs

Designs protect industrially mass-produced products.

They are different fromsingly created art works.

A design protects the shape or outlines of a product.

Like trademarks, a design appeals to its visual identification with a product or company that produces it. For example, the shape of a bottle of perfume will recognize it with the perfume it contains or the label it carries. The same applies to soft or alcoholic drinks.

A design can protect different shapes in different fields of industry, from dresses in the fashion industry to pills in pharmaceutics.

With the growing exposure to visual content in the electronic media, the design becomes an independent asset that can be traded to increase exposure to goods it contains, and hence the reason for its registration in national acknowledged registers.

The use of design could be short in certain industrial fields such as fashion, and for this the registration system enables accelerated process to provide the protection required during the lifetime of the goods in the market.

Drafting

Writing a patent application requires several elements: understanding the invention, writing skills, accuracy, and a certain amount of vision.

Skills, knowing one’s way around and constant updating in the rules, regulations and rulings in IP (Intellectual Property) are necessary for appropriate drafting of applications, particularly the ‘claims’, and getting ahead of mishaps during prosecution. It’s easy to follow the acceptable pattern for an application as well as its structure of passages. The main difficulty is in describing the invention accurately on the one hand and broadly on the other hand.

We guide our clients through the steps of defining an invention, drafting and filing a patent application and its examination in a patent Office. Our services include:

  • meeting with the client and reviewing preliminary description of the invention.
  • performing search for potential relevant publications and analysis of the patentability of the invention.
  • discussion and review with the appropriate specialists within the office.
  • discussion with the clients and suggestions how to proceed.
  • drafting a patent application, reviewing and revising according to comments of the inventor.
  • filing the application in a patent Office.
  • monitoring the registration of the application and keeping the applicant and inventor updated.

Prosecution

Examination of a patent application is often complicated and long. Its purpose is to issue patent for the application that meets the provisions set in the Law and regulations.

The examination procedure includes correspondence between the applicant and a patent examiner in the patent Office. The examiner issues an action that details his or her reasons for approving or denying patentability of the invention as described and claimed in the application and other requests for amendments to the application.

The applicant responds by submitting supporting arguments for the patentability of the invention and amended version of its definition and description in the application. We provide counseling and representation services in the examination process of patent applications that include:

  • handling prosecution of patent applications.
  • responding to Office actions issued by a patent Office, reviewing objections and rejections of the examiner and responding to prove the patentability of the invention in the application.
  • addressing formal requirements of the Office in patent applications during examination.
  • monitoring dates and timelines during examination of an application and after issuance of patent.
  • petitioning for restoration of patent applications and revival of patents.
  • appealing for registration of patent and patent infringement.
  • providing opinion on patentability, infringement and freedom to operate based on registered patents and patent pending.

Counseling

Counselling in IP matters is done in every point of decision making. The inventor usually meets such points in passing between phases of developing his invention and protecting as exclusive IP.

Our office provides our clients with the counselling that is required in such points which include:

  • before contracting with our office.
  • in defining the invention for search of prior art.
  • after receiving the search results.
  • during prosecution of the patent application.
  • infringement of patent by third parties or challenging patentability of a patent protected invention.
  • in various actions of the client relating to his or her the invention.

Management

Managing IP assets essentially opens a broader perspective on the different activities involved in patenting inventions or protecting IP in general.

Our office manages portfolios of patents, trademarks and designs, keeps tracks on important deadlines, helps in raising funds and buying and selling IP assets and rights between owners and third parties.

We advise our clients on different issues that relate to prosecution of patents, trademarks and designs and provide express answering service within 24 hours from receiving an invitation to respond.

Managing IP assets essentially opens a broader perspective on the different activities involved in patenting inventions or protecting IP in general.

Our office manages portfolios of patents, trademarks and designs, keeps tracks on important deadlines, helps in raising funds and buying and selling IP assets and rights between owners and third parties.

We advise our clients on different issues that relate to prosecution of patents, trademarks and designs and provide express answering service within 24 hours from receiving an invitation to respond.

Development

An invention can usually be defined in a short and accurate sentence. Such sentence is often a good test for the focus and originality of the invention.

Defining an invention can be done in various ways. For example, by the technical problem it solves, how it works, its advantage over other solutions, or the part, module, material, compound, combination or composition that make it surprisingly unique. This makes a good start, but the way to full development is longer.

Our experts help our clients to develop their inventions to a potentially patentable invention. Our services in this aspect include:

  • technical development of a specific invention.
  • assisting in developing innovative solutions to the technical problems addressed by the inventor.
  • assisting in developing inventions not completely or fully developed by the inventor.
  • building a portfolio for protecting the inventive concept of the inventor.

International

Our international department is concerned with three major aspects of representation and counselling:

  • representing foreign clients who wish to protect their IP in Israel. We provide representation services in formal and substantial matters and monitor our clients IP right to maintain them in good position. This includes nationalizing foreign applications in Israel, handling their prosecution until issuance and monitoring important dates, payments and timelines.
  • representing local Israeli clients before patent Offices in other countries, communicating with foreign representatives, reporting to the clients and instructing the representatives to make actions to protect our clients IP.
  • preparing and filing international (PCT) applications, patents, and trademarks according to the Madrid protocol, for our local Israeli clients, making payment of Official fees and monitoring the activities done in the international patent application, providing opinion on search report and opinion on patentability issued by the examiner at the international phase.