What happens when a patent attorney makes a mistake regarding the law?

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Israel Patent 184177 to Katru Eco-Energy Group Pte. Ltd. titled “Omni-directional Wind turbine” lapsed since the second renewal wasn’t paid in a timely manner. The application was filed in Israel on 24 June 2007 but claimed priority from an international patent application (PCT) filed on 14 December 2005.

The second renewal was due on 14 December 2011, i.e. 6 years from the International Filing Date, NOT six years from the national phase entry into Israel. The local agent of the applicant tried to pay the second renewal six years from the National phase entry date, and claimed that it was a mistake on his part, and the applicant wanted to keep the patent alive. Indeed, he discovered the mistake when trying to pay the renewal. Agent for Applicant claimed that the patent certificate was misleading.

Unfortunately, the evidence regarding wanting to keep the patent alive postdated the patent lapsing, so the Deputy Commissioner, Ms Jaqueline Bracha gave it little weight.

Ms Bracha pointed out that the PCT Agreement, the Israel Law and the first renewal certificate all indicated clearly that the renewal date was six years from the National Phase Entry date.  She was not convinced that this was a reasonable mistake for a patent attorney to make and refused to allow the patent to be reinstated.

COMMENT

I suspect that unfortunately, once licensed, many patent attorneys do not refer to the PCT law or indeed to the Israel Patent Law unless trying to solve a problem. I find it not unreasonable that a patent attorney may make a genuine mistake of this kind, particularly if the attorney handles few incoming applications and specializes in representing local clients who may not file in Israel at all.

I wonder if this would have been allowed if the patent attorney had claimed a docketing error, i.e. he or a paralegal had inadvertently docketed this for six years from national phase entry instead of claiming ignorance of the Law?

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