Reviving Lapsed Patents – Wisconsin

deadline

There have been a recent slew of decisions concerning reinstatement of lapsed patents. I will try to sum these up briefly to give an idea of Israel Patent Office Policy regarding this issue:

Concerning 164275 to Wisconsin Alumni Research Foundation, the patent was allowed on 29 June 2010 and the first and second renewal fees for years one to ten were due by 29 September 2010.  Since these fees were not paid, the application lapsed some six months later, and the fact that the application had lapsed published in the July 2011 journal. On attempting to pay the  third extension fee for years ten to fourteen, the patentees discovered that the application had lapsed. This unfortunate state of affairs was attributed to a clerical error in noting that a renewals service, CPA, was not responsible for the first two payments which were due on allowance.

The combination of the time passed and the fact that Mr McBride, the lawyer representing the applicant in the US did not sign an affidavit before an Israeli lawyer, a diplomat or at an Israeli consulate, and also failed to sign the affidavit before a US attorney. The affidavit was submitted a couple of months after the chain of events was known to Mr McBride. In the circumstances, the request was not allowed.

COMMENT

there were three problems identified, and it is not clear if the specific circumstances would have been considered as reasonable, had they been properly verified with an affidavit signed before an Israeli Official or a US Attorney and immediately submitted. It is not clear if the two months delay was the critical issue or if the lack of endorsement was the issue. Could it be that the three facts all contributed, and a speedier submission of a non-signed affidavit, or a tardily filed non-endorsed submission for something that had lapsed by less than a year would be allowed?

As a decision, this case does a lot to teach how submissions to revive should be submitted, but does not indicate the seriousness of each lacuna.

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