Late National Phase Entry into Israel Ruling

In IL 160405 to Isle Firestop Ltd., the Applicant missed the 30th month deadline for entering the National Phase in Israel.

Israel only allows late entry into the National Phase where Due Care was exerted by the Applicant, and has one of the highest standards for due care. We were not surprised therefore, that the application was rejected.

the ruling has some interesting features however. The Applicant claimed that the PCT filing was illegally filed by the inventors and not by the employer who holds rights to the patent under Israel Law. Based on this, the Applicant claimed that an extension of time was due, since clarifying who owned the rights took time. The Deputy Commissioner of Patents was not swayed by the argument, pointing out that the legitimate applicant did nothing to facilitate filing diredctly in Israel or via the PCT mechanism himself. Since the PCT had published it was too late to file in Israel, not via the PCT mechanism.  

An interesting type of estoppel has been created in the ruling, in that by virtue of attempting to get an extension to the PCT, the Deputy Commissioner of Patents Shmulovich has ruled that the legitimate applicant has de facto shown his acceptance of the PCT filing and therefore cannot subsequently claim that the PCT filing was against his wishes and that the publication thereof was beyond his control – and not to be considered prior art, which, in certain circumstances gives discretion to the Patent Office to ignore the publication.

Essentially the ruling is that one has to stick to one factual account, although can bring contradictory legal arguments. This is in line with general Israel Civil Legal Procedure, and is a reasonable position.

for other cases concerning missed 30 month extensions, see:

Israel Patent Office Tightens Up Practice Re PCT National Phase Entry Deadlines

Finally, we note a similarity re the difference between legitimacy of ownership and ligitimacy of filing with a recent House of Lords Decision re Yeda, see: http://business.timesonline.co.uk/tol/business/law/reports/article2767162.ece 



Categories: Blogroll, Intellectual Property, IPO, Israel, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, Israel Related, News, Opinion, Patents, PCT

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