Israel Patent Attorney Exam common mistakes
Israel Patent Attorney Exam · Understand the traps and how to avoid them.
Treating novelty and inventive step as one combined test: the candidate argues 'this combination is obvious' when the examiner only raised lack of novelty, or concedes novelty without addressing the separate inventive-step objection.
Israeli practice under Sections 4 and 5 of the Patents Law, 5727-1967 keeps novelty and inventive step as distinct statutory requirements, but candidates who studied from foreign outlines often merge them into a single 'is it patentable' analysis and answer the wrong objection.
What to do instead
For every objection, first label it: novelty (Section 4), inventive step (Section 5), industrial applicability, or excluded subject matter. Draft a one-line answer per ground before writing prose, and in exam answers explicitly state that prior art anticipating under Section 4 does not automatically defeat inventive step and vice versa.
Answering a priority question without checking the twelve-month window and the identity-of-invention requirement: the candidate assumes any earlier application supports priority for any later claim.
Candidates memorise 'priority exists' and forget that priority is claim-by-claim and requires the subject matter to be disclosed in the earlier application; they also confuse the Paris Convention twelve-month period with the PCT twelve-month priority period and with the thirty-month national phase entry.
What to do instead
On any priority fact pattern, write three checkpoints: (1) the filing date of the first application and whether the later filing falls within twelve months; (2) whether each claim's subject matter is supported by the earlier disclosure; (3) whether the earlier application was for the same invention. Then state which claims lose priority and the consequence for intervening prior art.
Drafting claims that mix categories or use functional language without structural support: a claim recites 'means for improving efficiency' or combines a product and a method step, and the candidate does not notice the unity or clarity problem.
Candidates write claims as a summary of the invention rather than as a legal definition of the monopoly, so they import embodiments, results, and advantages into the claims and never test each claim against the clarity, support, and unity requirements.
What to do instead
After drafting, run a claim audit: one category per independent claim, every functional term tied to a structure or step in the specification, each dependent claim adding a single limitation, and a one-sentence unity rationale for each independent claim. Mark any term that the specification does not define.
Amending claims during prosecution or opposition without checking whether the amendment adds matter or broadens the scope: the candidate deletes a limitation to overcome a novelty objection and treats it as a routine fix.
Amendment practice is governed by strict rules on added subject matter and on the permissible scope of amendment, and candidates apply a general 'you can always narrow' instinct without verifying that the amended claim is supported by the application as filed and does not extend protection.
What to do instead
For every proposed amendment, cite the literal or clearly implied basis in the application as filed, and compare the amended claim's scope with the granted or published claim. If the basis is only an unstated generalisation, reject the amendment and propose a narrower fallback position.
Confusing opposition with cancellation or with examination appeal: the candidate files an opposition after grant in the wrong forum or within the wrong period, or advises a client to 'oppose' a decision of the examiner.
Israeli procedure separates pre-grant and post-grant challenges, and candidates conflate the Registrar's examination objections, the opposition window, and cancellation proceedings, so they choose the wrong procedure and the wrong deadline.
What to do instead
Build a one-page procedural map: examination objection, response and hearing before the Registrar, opposition to grant within the statutory period, cancellation action, and appeal to the court. For each, note who may file, the trigger event, the deadline, and the available grounds, and practise classifying fact patterns into this map.
Giving a remedies answer that lists damages, injunction, and account of profits without linking each to the statutory basis, the knowledge requirement, and the limitation period.
Candidates treat remedies as a checklist and omit the elements that decide the case: whether infringement was innocent, whether the plaintiff delayed, whether the remedy is interim or final, and which court has jurisdiction.
What to do instead
Structure every remedies answer as: finding of infringement, entitlement to relief, the specific remedy sought, the defences that reduce or bar it (including delay and estoppel-type arguments), and the limitation period. Add one sentence on interim relief and one on the forum.
Treating supplementary protection certificates and patent term extensions as automatic: the candidate states that a pharmaceutical patent 'gets an extension' without checking the marketing authorisation date, the remaining term, and the eligibility of the product.
Term extension rules are technical and jurisdiction-specific, and candidates generalise from a single example or from foreign SPC regimes without verifying the Israeli conditions and the calculation method.
What to do instead
For any term-extension question, write the eligibility conditions, the trigger date (the first marketing authorisation), the calculation formula, and the cap on total term. Show the arithmetic explicitly and state what happens if the authorisation is granted before or after patent expiry.
Ignoring the overlap between patent and other IP rights: the candidate advises only on patent protection for a product shape or a software interface and never considers registered designs, trademarks, copyright, or trade secrets.
Candidates study each IP domain in isolation and do not build the habit of a multi-right strategy, so they miss cumulative protection, the different terms, and the different infringement tests.
What to do instead
For every client scenario, produce a short rights matrix: patent, design, trademark, copyright, trade secret, each with subject matter, term, registration requirement, and infringement test. Then recommend a layered strategy and note where one right's disclosure destroys another's novelty.
Breaching client privilege or conflicts rules in an ethics question: the candidate discloses a former client's information to a new client, or accepts a matter adverse to a current client, and justifies it as 'the information was already public' or 'the matters are unrelated'.
Ethics questions are usually fact-rich and candidates answer from general fairness intuitions rather than applying the specific duties of confidentiality, loyalty, and conflict checking that govern patent attorneys.
What to do instead
Apply a fixed sequence: identify the client, check whether the new matter is adverse, check whether confidential information from the prior matter is relevant, then decide whether consent, screening, or refusal is required. State the duty breached and the consequence, not just the fair outcome.
Citing evidence or case law without identifying its source, date, or the proposition it supports, and treating an uncited assertion as established: the candidate writes 'it is well known that...' in an appeal or opposition argument.
Candidates memorise conclusions rather than the reasoning and provenance, and under time pressure they assert rules without anchoring them to a statute, a regulation, or a decision, which loses marks in evidence and appeals questions.
What to do instead
For every legal proposition, write the authority next to it: section number, regulation, or decision with date. In evidence questions, state who bears the burden, what standard applies, and what the evidence must establish. If you cannot recall the authority, say so and analyse the issue conditionally.