The burden of proof to reinstate a patent which has lapsed due to not paying the first renewal

Renewal

This month there were four rulings by the Deputy Commissioner, Ms Jacqueline Bracha, that relate to reinstating patents that lapsed due to the first renewal not being paid. Two of the cases involved professional representation and two were handled by the applicant of CEO of applicant directly. To try and develop an understanding of circumstances that the patent office consider reasonable, it seemed instructive to compare and contrast the cases.

 It appears that where professional agents are used, the Israel Patent Office requires more details of agent of records’ docketing procedure where there clearly was one, whereas a case going abandoned where there is nothing in writing between applicant and agent and clear evidence that patentee was slimming down portfolio due to financial constraints was nevertheless allowed to be revived. Where applicant acted alone, in one case the personal reasons for applicant not timely paying fee were considered acceptable. In the other case, the patentee was only a couple of months late but was referred to the regulations.

IL 158566 to GE Medical Systems Global technology Company LLC was allowed on 18 August 2010. After the certificate issuing, the first and second renewals renewal should have been paid within three months. Due to a clerical error by the firm handling the prosecution (Seligsohn Gabrieli & Co.), the renewals were not paid and the patent thus lapsed after the six month grace period passed. The error was discovered when the renewal service provider employed to handle subsequent renewals attempted to pay the third renewal.

 From the affidavit filed, apparently the file was erroneously transferred from the active archive to the closed archive on the patent certificate issuing, instead of only after paying the renewals, as was the standard procedure of the agent of record. The request to reinstate the patent was filed on 7 November 2013, and the Deputy Commissioner, Ms Jaqueline Bracha was convinced that the patentee never intended to abandon the patent and that steps were taken to rectify the situation immediately on that the patentee discovered the problem. The affidavit did not describe how the renewal payment process was handled, only that the file should have been archived only after paying the fee. Therefore the Deputy Commissioner could not ascertain the reasonableness of the error, and has given the agent of record 14 days to provide more details.

COMMENT

General Electric is a big entity. It is clear from the ruling (and I know from my time at S&G) that there was a standard policy in place to pay the first renewal (and second if it was due on issuance) and then subsequent renewals were paid by a renewal service.

I think this request for additional clarification is a little superfluous. What Ms Bracha is asking is for an affidavit regarding what happened four years earlier. That the file was archived despite the renewal fee not being paid is clear. Whether the clerk missed the date or the date wasn’t properly entered into the system seems at best irrelevant. It is not inconceivable that at least one of the people working the system, whether the patent attorney responsible, the administrative support staff and/or the docketing clerk who were working for Seligsohn & Gabrieli in August 2010 is no longer working for the firm.   In the middle of August, one or two of the personnel concerned may well have been on holiday. On receipt of the certificate, the renewal should have been paid or at least docketed for payment during the coming three months and then the file should have been archived after receipt of renewal certificate subsequent to paying of the fee. That did not happen. Instead, the file was archived after receipt of the certificate. These things happen.

If hypothetically my esteemed colleague, Mr Thee, the senior patent attorney at Seligsohn, Gabrieli & Co., under whose tutelage I qualified and worked during the years 2001 to 2004, were to file an affidavit that four years ago he was a mere 76 year old and just can’t remember what happened with this specific GE patent, should that be considered insufficient? Let’s assume for argument’s sake that in August 2012 two GE patents issued and a secretary renewed one and on seeing the second number in the docket assumed that was the one he/she had just handled it, would that be considered insufficient?

In a separate case, IL 168522, the agent of record (Dr Yoram Savion) did not pay the first renewal. There is nothing in writing between the agent of record and the applicant ordering this patent to be maintained or to be abandoned. What is clear is that other cases were expressedly abandoned due to financial constraints. The CEO of the patentee claims that he did not intend to abandon this and Dr Savion cannot confirm or deny that this was the case since there is nothing in writing regarding whether the renewal should be paid or not.

Apart from the obvious lack of documentation, either the CEO did not tell the agent to pay the fees and the agent did not clear this and the case went abandoned without anyone noticing, or the CEO told the agent to pay the fees and the agent forgot to do so and neither side noted that this was never billed for. Either way, it seems a little unfair that the GE case reported previously requires additional clarification, whereas this one was allowed to be published for reinstatement purposes.

In 1996651, the patentee, Uriel Naboth failed to pay the first renewal. It is not clear from the ruling how or when he realized, but he petitioned the patent office that the failure was due to compelling personal reasons. The case was reinstated.

Finally, in IL 199803 to Lev Technologies LTD., the patent issued in November 2012 and the renewal should have been paid by February 2013. The six month grace period lapsed in September 2013. The patentee’s excuse was that he was not sent a request to pay the reminder so did not do so. The patentee intended working the patent for the full 20 years, and, it was only on printing out the patent status that he realized that something was wrong, and at the urging of the patent office drafted an affidavit explaining this. Ms Bracha ruled that previous case law (e.g. IL 185526 to Haled Aquad and others) require the patentee to make some effort to follow renewals and that the requirement to pay renewals is on the back of the Certificate of Patent. In the circumstances, she did not feel that the requirements of Section 60 were fulfilled and rejected the request, referring the patentee to Section 90 of the regulations.

GENERAL COMMENT

Here is a suggestion. Clearly in the vast majority of cases where the patentee has paid the issue fees three months earlier, the applicant wants to pay the first renewals. This is income for the patent office. On the other hand, appeals are expensive for the patent office since an adjudicator has to weigh up evidence and decide the case. Wouldn’t it make sense for the patent office to send an additional reminder regarding the first renewal? Maybe the patent office could usefully send a reminder concerning the publication fees if these are not promptly paid. Both actions are typically carried out by support staff, not by the attorneys. It seems mistakes happen. I suspect that the additional routine paperwork of the patent office that I am suggesting (which, can, of course, be by email), would generate sufficient income to the patent office and save sufficient adjudicator’s time, that it would be profitable for the Israel Patent Office. I must admit, I am getting fed up of reporting these cases as well.

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