Where Agent-of-Record Moves, Resulting in Patent Application Lapsing

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Where no response to an Office Action is received, the Israel Patent Office eventually sends a notice of imminent abandonment to the agent of record and then a month later sends the agent of record a notice of the file closing. Where a patent application is unintentionally abandoned, the Applicant may reinstate within 12 months. Beyond this time-frame, it is more difficult as the Patent Office considers that abandoned applications are in the public domain. But what happens where the Agent of Record does not receive the Notice due to a change of address?

IL 198531 to Cheil Industries INC was filed on 4 May 2009 as the National Phase Entry of PCT/KR/2006/005109 by Hizkiya-Hachmon Law Offices. The Israel Patent Office mistyped the Agent of Record’s name as Hizkiya-Hashmiyon Lawyers. The Deputy Commissioner blamed the lawyers for the mistake since they filled out the Application form with their name in English and not in Hebrew as they should have.

On 17 August 2010, the Agent of Record updated their address in a response to an Office Action.

The Patent Office sent an Office Action on 30 August 2012 and no response was received. Consequently, on 25 June 2013, a reminder was sent, again to the address of record, and when no response was submitted, the Application was deemed abandoned under Section 21 of the Law.

On 24 December 2015, Adv Tal Rosenthal, who works for the Agent of Record, filed a request for an extension for reconsideration, blaming the Israel Patent Office for the case going abandoned. Hizkiya-Hachmon Law Offices argued that they had informed the Patent Office about their address, but the Israel Patent Office had failed to update its records. Since the name of the Agent of Record was wrong, post was not forwarded to them. This prevented them responding in a timely manner. As evidence of their claims, they submitted an envelope with the wrong address that was returned to the Patent Office as undeliverable.

RULING

Sections 21 and 21a of the Israel Patent Law 1967 state:

21A. If the Registrar refused to accept an application under section 21, then he may— on the applicant’s application—reconsider the refusal, on condition that the application be submitted within 12 months after the day on which the Registrar refused to accept it as aforesaid.

21B. The applicant may cancel his patent application up to the grant of the patent; however, the Registrar may cancel the cancellation on conditions prescribed by him, on condition that he is satisfied that the application was cancelled unlawfully.

Where the 12 month period stated in Section 21 has passed, the Commissioner may, nevertheless, reinstate a patent application in exceptional circumstances under Section 164a which states:

164.—(a) The Registrar may, if he sees reasonable cause for doing so, extend any time prescribed by this Law or by regulations under it for the performance of anything at the Office or before the Registrar, except for the times prescribed in sections 30, 56, 57, 61, 64F, 64M…

As the Deputy Commissioner, Ms Bracha sees it, Section 21a gives the timeline for an Applicant to restore an Application. Section 164a gives the Commissioner sweeping powers to reinstate but has to be applied with consideration of the fine balance between the Applicant’s interest and that of the public; see 2806/04 Commissioner of Patents vs. Recodati Ireland LTD.

The Agent-of-Record is attempting to justify his request by blaming the Israel Patent Office for not updating his address and for getting their name wrong on envelopes sent by the Israel Patent Office.

Regulation 16 obliges the Applicant to provide an address. This may be changed, however in this instance, the Agent of Record has not been able to produce any request to the Israel Patent Office that they update their address. At a hearing on 27 March 2016, the Agent failed to produce any request to change the address of record and failed to show that they had paid the requisite fee. They were given a further 14 days to produce the paperwork but still failed to do so.

Essentially, the Agent of Record could have filed a request to correct the firm’s name and to update their address over a five-year period but failed to do so.

Whilst the response of 17 August 2010 was sent on headed paper bearing the new address, which indicates retroactively that the address had changed, this is insufficient to cause the Israel Patent Office to update its records. Furthermore, in that response the agent-of-record should have noted that the firm’s name and address were wrong and taken steps to rectify this.

Three years had passed from this case going belly up, and the Agent of Record could have checked the status on-line but failed to do so.

(It is also noted that Adv Tal Rosenthal claimed that the firm moved in 2011 and in the summary it transpired that it actually happened in 2010, so not only is the blame wrongly attributed to the Patent Office, but the Agent of Record could not even get their story straight).

In summary, the application went abandoned due to the Agent of Record making numerous mistakes. This makes it difficult to apply Section 164a to reinstate the Application; particularly due to the long period that has passed.  Unlike the  Penoles case (IL 211582) where PCZL requested a change of address of record, but the Israel Patent Office messed up, in this case, the Agent of Record ignored the wrong name of firm and made no effort to update their address.  There is no ‘reasonable grounds’ for reinstatement and the Public Interest is served by finality so something abandoned should stay abandoned. The request for reinstatement is rejected.

 

 

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