More lapsed patents allowed for reinstatement

approved

Although perhaps not all my avid readers will concur, I do try to blog comprehensively on all Israel Patent Office decisions and court rulings concerning IP. One of the generally less entertaining type of decision that I wade through relates to reinstatement of lapsed patents.

In IL 205893, the patent issued on 1 April 2013 and the renewal payment was timely made on 22 April 2013. It was a case I handle. I must admit, it is more fun writing up cases where other firms missed the deadline or something else went wrong rather than reviewing my mistakes.

Recently, having a couple of quiet days, I went through all my cases comparing my files with the status on the patent office website and realized that this patent was listed as having lapsed. In this case I have proof of timely payment and a copy of the covering letter to the patent office. What I don’t have is proof that the payment and letter were submitted.

In the circumstances, I had to file a request for reinstatement which was promptly accepted.

There have been a number of similar cases in recent times. Sometimes the patentee pays on-line and assumes that he does not need to print out the receipt of payment and hand file it. Perhaps partially due to this blog, the patent office now has a large reminder notice that this is the required procedure. It doesn’t help me as I know that is the procedure. I simply can’t prove that I actually followed the rule.

What did surprise me was that along with the decision to allow the case to publish for opposition purposes, I received a request to pay the first renewal fee. This was odd as I had attached a dated payment slip to show that the renewal was timely paid together with the fee for reinstatement and a covering letter. I queried this and it turns out that since we are in a different calendar year, the paid fee cannot now be processed and I need to pay again (now an additional 15 shekels), and can request a refund for the fee paid. This seems a lot of unnecessary aggravation all round, as it creates work for the patent office as well as for me.

What seems like a useful development would be for the patent office to link the on-line payment with an online reporting mechanism. Maybe this will happen one day. I know that the Israel Patent Office is able to see at a glance which cases each firm handles. If we could see the same interface together with an action list and deadline, i.e. a patent office generated docket, that would be grand. I suspect US attorneys have this in private PAIR. I know that there are plans to allow online filing and we are getting there. It will just take time.

In another decision, re 206874, the renewal fee was not paid despite client’s instructions for it to be paid. Since it was not paid by mistake, and the firm was able to provide evidence of reasonable docketing procedures, just something went wrong due to human error, the case was allowed to be reinstated.

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