Long Abandoned Patent Reinstated As Applicant was Ill and Application had not Published.

revival 2

In general, an Israel patent that has gone abandoned can be reinstated within 12 months of going abandoned under Section 21a of the law, if the abandonment was unintentional. After a year it is more difficult to reinstate, but in exceptional circumstances, reinstatement is possible after longer periods under Section 164.

IL 194015 to Natapov, Perstnev, Perstnev and Vilacer titled “the Insulating Material” was rejected in May 2012, due to failure of the applicants to respond to the Notice Prior to Examination. It transpired that one inventor-applicant had passed away and one of the others, who filed a request for reinstatement, was previously ill and indisposed, leading to the patent application becoming abandoned and not reinstated earlier. For reasons of privacy, the nature of the applicant’s health issues were not published, but, suffice to say, the Deputy Commissioner found them convincing. Despite the mark being abandoned for over 3 years, the Deputy Commissioner saw fit to reinstate as the abandoned application had not published and so there was no issue of third parties relying on the abandonment as grounds for objecting to reinstatement.

The patent application was reinstated and the applicants were given four months to respond to the Notice Prior to Examination. The details of the inheritors of the dead inventor had to be listed in the register. However the Deputy Commissioner ruled that under Section 16a, the application could not be enforced against third parties who can be shown to have utilized the patent prior to its reinstatement and publication.

COMMENTS

This is not the first time that an application that has been abandoned for more than three years has been revived. See here for another example.

I had some Russian clients who came to me with a portfolio of half a dozen applications including two abandoned cases. I managed to get five of the six cases allowed, but not the first and long abandoned one (also about three years) despite fairly extensive health issues of the applicant that were backed with the appropriate documentation.

Obviously one can’t compare the specific health issues in the two cases, but ultimately the main reason that reinstatement was not possible in the case I handled was that there was a corresponding US case that had published, so arguably, at least theoretically, third parties might have relied on this being abandoned, since the US case was published and the Israel application, which was the priority document was referred to in the US file wrapper.

I actually foresaw this development and suggested that Applicant was willing to provide a non-transferable license to all such third parties using or with plans to use the application prior to reinstatement. Unfortunately, the Deputy Commissioner didn’t relate to this suggestion and the Applicant decided not to Appeal or at least was tardy and missed the date for so doing.

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