Revival of IL 211245 to Neurovision Imaging Inc.

he's dead jimIL 211245 to Neurovision Imaging Inc. issued on 1 December 2014 but the Applicant failed to pay the first renewal that was due within three months, by 1 March 2015. After the grace period passed the patent lapsed on 1 September 2015, the patent lapsed and the fact that it had lapsed published in the October 2015 Journal.

On 12 July 2016 a request for reinstatement was submitted. An affidavit from Steven Verdooner, the CEO of the company was appended. According to the Affidavit, back in May 2014, the US patent attorney who handled their portfolio informed them that the patent had issued and requested payment of issue fees and service charges. The issue fees were paid in June 2014.  In January 2016, after the patent had lapsed, the Applicant received a second letter from the same attorney informing them again that the patent had issued(!?). From examination of the section of the email notification appended, Deputy Commissioner Ms Jacqueline Bracha could not determine that the appended notification related to the Israel application, although the corresponding PCT application number was mentioned. Nowhere in the section of the email appended was a specific jurisdiction mentioned. From this there is no indication that the email related to Israel, where the patent had issued a year and a half earlier.

The Affidavit further stated that at some stage, the patent portfolio was transferred to a different US firm. On 2 May 2016, the second US firm informed the Applicant that the patent had lapsed due to failure to pay the Renewal. The request for reinstatement was filed two months later.

In the circumstances described, the Deputy Commissioner was not persuaded that the conditions for reinstatement detailed in Section 60 of the Law were fulfilled. Firstly, more than two months passed from when the Applicant was aware of the patent lapsing and their request to reinstate it. The Applicant made no effort to justify this amount of time passing and to explain what steps had been taken in the meantime. It is not clear that they acted promptly to restate the patent once they were aware that it had lapsed.

The Affidavit did not clarify if the Applicant had received the Patent Certificate and if the Associate (Shilon Zuckerstein) had reported the obligation of paying the first renewal. Even if the Applicant did not receive the Certificate, it is not clear why they did not ask for it once they were informed that the certificate had issued.

The Applicant was represented locally at that time (Shilon Zuckerstein) but not evidence was presented by the attorneys. It is not clear if the Applicants (now represented by Colb) had contacted them prior to producing their affidavit, if they didn’t have information or were not contacted. Thus the Applicant has failed to show that the renewal fee was not paid for reasons that may be considered ‘reasonable’ as required under Section 60 of the Israel Patent Law 1967.

Consequently, the application for reinstatement is rejected.

Request for Reinstatement of IL 211245; ruling by Ms J Bracha, 14 July 2016

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