Israel Patent Number 199837 titled “DIRECT EXCHANGE GEOTHERMAL HEATING/COOLING SYSTEM” to Earth to Air Systems LLC is a National Phase Entry of A PCT application dated 18 January 2008 and the second renewal, covering years 6-10 thus fell due on 18 January 2014, which, being a Shabbat, was deferred to 19 January 2014.
The renewal was handled by a renewal company, and, due to an administration error, the renewal payment and a covering letter were only sent to the Israel Patent Office on 20 January 2014, i.e. one day late. The renewal was received but, due to the missing extension fee, the patent office database was updated, however, proof of payment was published in the electronic file accessible via the patent office database. The patent office should have informed the applicant about the wrong payment but apparently this did not occur.
Six months later, the patent lapsed and the fact that it has lapsed is supposed to publish in September 2014 journal. In August 2014 the fact that the patent had lapsed already appeared in the on-line database of the patent in the patent office.
The Applicant for restoration argues that the patent lapsed due to a patent office mistake and that the patent office should have accepted the payment as of the date it was paid, even if there was an outstanding extension fee to be paid and therefore the patent office should reinstate the patent retroactively rather than requiring it to publish for restoration purposes. (similarly, presumably the fees should reflect the mistake and only the one month’s extension fee should be payable and not the request for reinstatement, etc. – MF).
The Deputy Commissioner, Ms Bracha, ruled that under Section 170 of the Law she could correct the journal. The patent was not renewed in a timely manner due to a mistake of the patent office. The renewal payment reached the patent office but the databases were not updated and the patentee was not informed that there was an outstanding extension fee due. In addition to Section 170, Ms Bracha related to Y Zamir “Civil Authorization,” Vol. 2 page 1991 (1996).
Although the fact that the patent had lapsed was published a month earlier in the patent office database, Ms Bracha did not think that the public had relied on the patent having lapsed and it is reasonable to simply correct the database. So, instead of publishing that the patent has lapsed in the September journal, the patent office was publish the correction to the record in the journal, allowing the public to oppose the decision.
Ms Bracha went on to note that the result is the same, in that the public can oppose the decision, and if the applicant had requested reinstatement under Section 60 of the Law instead of correction of the record under section 170, in the circumstances the reinstatement would have been accepted, but the decision would publish for opposition purposes.
As a footnote, Ms Bracha rejected the patentees contention that the renewal should have been allowed despite the missing fee. The Deputy Commissioner sees Section 57 of the Law differently from the agent of the applicant (Luzzatto et Luzzatto).
Section 57 reads as follows:
“if the renewal fee is not timely paid, it may be paid within six months together with the appropriate extension fee and after having done so, it will be considered as if it was paid in a timely manner under Section 56 and the patent will be considered as not having lapsed.
The underlined section is the basis of the Deputy Commissioner’s reasoning that for a late renewal to be considered as timely paid, the relevant extension fee has to be paid. The Applicant cited Regulation 6 of the patent regulations 1968 to the effect that:
The patent office won’t do anything requiring a fee until the fee is paid, but failure to pay all or some of the fee won’t cancel the application, process or registration unless specifically legislated differently.
Ms Bracha does not consider this regulation as being able to contradict the main legislation. furthermore, the regulation itself notes that it is only effective in cases “unless specifically legislated differently”. Either way, section 56 and 57 trump this.
The record is corrected and the correction is published, allowing the public to object to the correction.