Renewal Timely Paid, but Israel Patent Lapsed Anyway

renewal (1)

Israel Patent No. 128935 for “Communication Method and Communication system Using a Specific Code” to Share-Management Data Actualization Technologies LTD. was last due for its third renewal, covering years 10-14, in March 2009. the renewal fee was timely paid on line, but the proof of payment was not submitted to the patent office and the patent lapsed.

The fact that the patent had lapsed was only recently discovered, when an attempt to pay the fourth renewal for years 14 to 18 was made.  Reinhold Cohn and Partners (RCIP), the Agents of Record, therefore petitioned to have the register corrected. Ms Jaqueline Bracha, the Deputy Commissioner ruled that the patentee or their representative were required to both pay the renewal fee and to submit proof of it having been paid. Consequently she considered the patent as having lapsed and refused to allow the register to be ‘corrected’.

She notes that the patentee may petition to have the patent reinstated, and, from the register it appears that this has happened.

COMMENT

As originally written, I erroneously  stated that Reinhold Cohn, the agent of record, made the renewal payment and did not submit proof of payment. It appears that the CEO of the Patentee made the third renewal payment and not a representative of RCIP.  Had I checked through the file wrapper, I would have realized this. I therefore unreservedly apologize to my colleagues at Reinhold Cohn for this mistake.

There are ramifications to having to revive instead of correcting a mistake. Reviving a lapsed patent is more expensive than correcting a mistake in the register. Possibly more significantly, if the patentee discovers an infringement between March 2009 and a decision to revive including publication for oppositions, they will not be able to sue for damages over the period that the patent is considered lapsed. An infringing party may oppose reinstatement, or request a license to continue to use the patent, claiming that the decision to utilize the technology was made in good faith, believing the patent had been abandoned.

Furthermore, I originally wrote that the decision is a correct one, but that one imagines that in the circumstances, a petition to revive the patent will be successful. However, an Attorney from the RCIP group pointed out that the website is misleading, in that someone paying on line, (but not a worker of an IP firm who would know the procedure), would not realize that, after providing details of the case in question, that there was a further need to print out the receipt of payment and to manually submit it. In this regard, I am forced to concur. After all, I have performed renewals on the USPTO making exactly that assumption.  I also have found aspects of the Israel Patent Office online payment confusing, such as under what circumstances one is entitled to pay a reduced fee.

I understand that Reinhold Cohn are planning to appeal this ruling to the courts, and I await the result of the appeal with interest.

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