The third renewal for Israel Patent Number 160368 to Pfizer titled “PACK CONTAINING MEDICAMENT AND DISPENSING DEVICE” should have been paid in August 2012 and wasn’t. The application lapsed six months later and the fact that it had lapsed published in March 2013. During July 2013 inquiries were made and in September 2013, a request for reinstatement was filed.
In this case, the first and second renewal fees were paid by the agent of record (Luzatto and Luzatto), but the applicant transferred the renewal to a renewal service to pay the third renewal. Now the renewal service was supposed to pay the third renewal and informed the patentee that it was paid. The agent of record noted that the patent had lapsed and made inquiries. Since the patentee could show intent to pay renewal fee and since the time that past from patent lapsing until request for reinstatement wasn’t more than a few months, Deputy Commissioner Ms Bracha allowed the patent to be reinstated.
Renewal services are difficult to compete with on price. On the other hand pharmaceutical patents are sometimes very valuable indeed. For a renewal agency, a patent is a number. For an agent who prosecuted it, the patent is often a little more tangible. One wonders if Pfizer changed renewal agencies after this development?
Superficially, this case bears some resemblance to the just reported lapsed patent for Baruch Cohen. Cohen’s patent was for a pack containing food, whereas Pfizer’s patent is for a pack containing a medicine. Both went abandoned due to lack of payment of the renewal fee. The differences are significant. I think both decisions are reasonable.