Israel Patent Application revived over three years after becoming abandoned

revival

This decision relates to IL Patent No. 157563 to ICOS Corporation which became abandoned due to official communications being sent to a previous representative and not to the correct agent of record. The new agent, Luzzatto et Luzzatto, filed a request to correct the error in the patent record under Section 170 of the Law to show the case as not having been abandoned, and/or a request for an extension of the one year period for requesting a reconsideration hearing after an application has been abandoned under Sections 164 and 21a of the Israel Patent Law.

History

The application in question is a national phase entry of PCT/US/2002/006452, filed in March 2002. A Notice Prior to Examination was sent to the Agent of Record on 20 December 2006. A response to the Notice Prior to Examination was filed on 20 June 2007, and on 3 September 2007, a first Examination Report issued.

In November 2007, Luzzatto et Luzzatto (L&L) requested that the application be transferred to them for further prosecution, but the then Deputy Commissioner refused this prior to a POA from the applicant appointing L&L as agents of record. On 1 January 2008, L&L submitted a request for an Extension to respond to the substantive office action, to which they attached a photocopy of the signed Power of Attorney. A month later, L&L submitted a response and the original POA. Due to an error in the Israel Patent Office, the change of Agent of Record was not recorded as a new address of record, and a second Office Action was sent to the original address of record. In due course, a Notice of Imminent Abandonment was also sent to the original agent of record, followed, a month later by a notice of abandonment on 18 August 2009.

On 7 December 2011, L&L requested that the address of record be updated, which it was on 16 February 2012. On 8 November 2012, L&L requested that the notice of abandonment be withdrawn and that the second Office Action be forwarded to them to respond to. Due to the time that had passed, the senior examiner refused this request.

Applicant’s Claims

L&L essentially argued that they never received the office action or notice of abandonment, and should have, since they were the agent of record. Prior to December 2011, they were unaware that they weren’t receiving mail from the patent office, and thus their actions in November 2012 were within a year of first learning that something was wrong, and should be considered timely. The delay of 12 months was attributed to a combination of the Israel Patent Office’s activities to scan files into electronic documents, which resulted in the file originally not being available for inspection, and a further delay due to L&L moving offices (presumably this refers to their Jerusalem office being relocated).

The Law

In her ruling, Ms Jacqueline Bracha, the deputy commissioner cited Section 21 to the effect that subsequent to a Notice of Abandonment issuing, the applicant has a year to appeal the decision by requesting a hearing before the commissioner or deputy commissioner. Under Section 164, this and most other deadlines are extendible at the commissioner’s discretion subject to good cause being shown.

After accepting that she had the authority to revive the application, Ms Bracha saw fit to address the issue of correcting the records under Section 170 of the law. Here she considered the law allowed corrections where there are no other procedures, and in this case, this was inapplicable due to the existence of Section 21a. Furthermore, in contradistinction to IL 166280 Teva vs. Abbot biotechnology (cited by L&L as analogous), where a single mistake was promptly corrected, in this case, there were a number of mistakes that she attributed variously to the applicant and Applicant’s representative and to the Israel Patent Office, that resulted in the case being abandoned for over three years. Furthermore, Ms Bracha remained unconvinced that there was an error to be corrected in the application being considered abandoned, so she rejected the option of correcting the records under Section 170.

Turning to the revival option, citing Opposition IL 110548 Shmuel Sadovski vs. Hogla Kimberly Marketing LTD. Ms Bracha noted that regarding Revivals, the relevant considerations are the time passed and the underlying reasons for the delay. In this regard, Ms Bracha noted that the time passed not only provides an indication of the reasonableness of the Applicant’s behaviour, but also affects the likelihood of third parties relying on the case being abandoned. In this regard, it will be noted that the PCT application of which this is a national phase entry, published back in 2002.

Whilst not abrogating the partial responsibility of the Israel Patent Office, Ms Bracha considered the Agent of Record as being partially responsible for the application going abandoned. In this regard, she understands the regulation concerning each submission relating to one topic only as indicating that the applicant acted incorrectly in submitting a POA together with a substantive response and therefore shared responsibility with the Examiner who failed to forward the POA to the relevant department. Furthermore, neither applicant not agent inquired into the four years of delays from when the POA was filed until they discovered that something was wrong. She noted that the agent of record assumed that the ball was in the patent office’s court and didn’t track responses to POAs filed. In this regard, where a POA changing representative is dealt with, the patent office notifies both former and new representative.

The new representative received notice of change of representative in February 2012, and only 10 months later, and 11 months from learning that the case had gone abandoned, took action to revive. She noted that L&L could have acted more promptly. Indeed, even without receiving a copy of the file, the applicant could have made a request for reinstatement.

Nevertheless, in addition to the mistakes and lack of follow up of the agent of record, the patent office had also made mistakes, and she felt that the applicant had rights that would be forfeited if she failed to allow reinstatement. However, the public had rights as well and if an application is considered long abandoned, revival could discriminate against those who had assumed that the case was abandoned and made preparations to utilize the claimed invention.

In light of the above, Ms Bracha allowed the revival but granted a non-transferable license to third parties that had already acted to utilize the patent. Furthermore, the applicant is required to pay extension fees from a year after the file was closed until the request for revival was filed.

Decision of Ms J Bracha concerning revival of IL 157563, issued 21 October 2013

COMMENTS

The courts have long accepted faxed POAs and copies of POAs, so one wonders why the Israel Patent Office insisted on an original in this case.

An obvious question that jumps to mind is why the previous agent of record did not see fit to forward any of the letters from the patent office to the client or to Luzzatto et Luzzatto, or indeed, to return to the patent office. Clearly, they considered themselves NOT the agent of record, but as the patent office saw otherwise, they appear to have had at least a moral and ethical duty to act. At present, the file wrapper is not available on the Israel Patent Office website, so I do not know who filed the original application and ignored the subsequent correspondence. Note, even when a client tell me that they are not interested in prosecuting an application, I forward the Office Actions and the Notice of Abandonment as a courtesy.

As far as allowing reviving is concerned, but not allowing the record to be corrected, Ms Bracha is being consistent with earlier decisions of hers, such as this one.

On behalf of a client, I have been trying to revive a patent application that was abandoned over three years prior to the request to revive being filed. I did not write the application, nor was I involved when it became abandoned. The case is before Ms Bracha now. Each case is, of course, different. Still it is comforting to know that the patent office does sometimes show flexibility with reviving cases that have been abandoned more than a year.

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