Lapsed Patent Revived 15 Months After Lapsing

revival    Revival3

Israel Patent Number 211582 “PROCESS FOR THE PRODUCTION OF HIGH-PURITY MAGNESIUM HYDROXIDE” to SERVICIOS ADMINISTRATIVOS PENOLES, S.A. DE C.V was filed on 5 September 2008 and a National Phase Application of the PCT was filed in Israel on 6 June 2011.

On 25 December 2013, this Application and others that were filed by Fisher Weiler were transferred to Pearl Cohen (PCZL Bratz). The request to transfer the file was made on 7 January 2014 but actually occurred only on towards the end of January 2014.

A Notice Before Closure of the file was sent on 20 January 2014 following no response to the Notice Prior to Examination that apparently was never received by Fisher Weiler.
As no response to the notice before closure was received, the file was closed on 25 February 2014 and a notice to that effect was sent to the attorneys of record. This letter was not dealt with appropriately by the attorneys of record and the file was closed.

15 months later, Pearl Cohen requested an extension to reopen the case.
Ms Bracha conducted a hearing and concluded that a rare combination of events resulted in this happening and this case could not be considered as either intentional abandonment or negligence on the part of the attorneys. The application went abandoned due to the delay in registering the new address, and ‘the Notice of Abandonment not being dealt with appropriately’ resulting in the file being closed. After this event, the internal procedures at Pearl Cohen (PCZL Bratz) were changed.

In the circumstances, Ms Bracha has ruled that the case should be returned to Examination and the 12 month period for review should be extended. Any third parties relying on the application being abandoned shall be granted license to continue using the patented invention should a patent issue.

COMMENT

In my experience, PCZL’s procedures are not designed for smooth absorption of files. During my brief period there, the firm created many obstacles to absorbing my files and required additional powers of attorney. I was told that overseas associates would have to sign a letter of engagement by Mark Cohen who was handling my cases. Then Zeev Pearl said that this was only the case for local clients. I was told to do one thing with my files and then something else. The paralegal who was told to help me was given different instructions by the local office manager from those given by me, and we received updated office procedures and price lists approximately once every two days. There were general procedures and price lists, but Mark Cohen wasn’t bound by them and billed on time. I was supposed to receive a commission for clients that came with me, but never did.

In the current case, Asaf Weiler was a named partner at Fisher Weiler and, following Pearl Cohen’s take over and the dismantling of that firm, Asaf Weiler is now a partner in PCZL. One wonders if just because he moved from one firm to another, taking his clients with him, he should have no responsibility to monitor his cases at either address? He missed one reminder, mis-filed another and didn’t check for over the following year. Methinks that this could be considered negligent. I do, however, agree that the applicant and Mexican associate are hardly to blame, although they could also have pinged the associate once a year or so to find out what was happening…

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