Decision to Reinstate Lapsed Patent no. IL 176379 Publishes for Oppositions

The Israel Patent Office has a fairly relaxed attitude to allowing Lapsed Patents to be reinstated. That is not the case for lapsed designs which they consider beyond their authority to resuscitate after the grace period, no matter what the circumstances. Missed PCT national phase deadlines are very difficult to overcome. Lapsed applications can generally be revived within 12 months, but after this period it is extremely difficult to revive them.

In the case of Israel Patent Number  IL 176379 to Mactac Europe “Method of Forming a Three Dimensional Microstructure on a Surface, Uses Thereof, and  Microstructured Products so Obtained”, the agent of record diligently attempted to persuade the customer to pay the third renew fees by the January 3 2015 deadline and sent two reminders, but there was a change of ownership in the firm and no-one internally responsible for making a decision so the patent lapsed six months later.

In February 2016, an adviser to the group owning the patent testified that the company, including its IP portfolio had been purchased by the investment company, Platinum Equity.

The Deputy Commissioner considered that little was done by the owners to pay the renewal fee and to prevent the patent from lapsing but once the new owners became aware that it had lapsed, they did make timely efforts to have the patent reinstated. Furthermore, the case-law does not set a high standard of due diligence that needs to be shown to have a lapsed patent resuscitated.

In the circumstances, balancing out the conflicting interests, the Deputy Commissioner allowed the reinstatement subject to the usual publication for opposition periods but more or less invited interested parties to oppose the reinstatement.

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