When Israel is inadvertently considered part of EPO

31-monthsIL 244062 is a national phase entry of PCT/AU2015/000701 which claims priority from an Australian patent that was filed on 10 July 2013. There was, therefore, until 1o January 2016 to file a national phase entry of the PCT application into Israel.

A request to extend this period was filed on 11 February 2016, and an Affidavit from the Vladimir Jakovina who owns the holding company Merline Investment Management Property Ltd was filed a few days later on 2 March 2015.

The head of the PCT Division refused the application as the 30 month deadline had passed. The Applicants appealed on the basis of the Affidavit which stated that the Jakovina’s daughter had been responsible for the national phase entries and had mistakenly believed that Israel was a member state of the EPO and that the deadline was, therefore, 31 months.

Ms Bracha rejected this, as although the PCT deadlines can be extended at the discretion of the Commissioner of Patents, the standard that the Israel Law requires is Due Care, and not the lower standard of intention. She did not consider that assuming that Israel was a member of the EPO and not checking this was compatible with the requirement of Due Care.

COMMENT

10 years ago, a Korean client of mine made the same mistake. We submitted an Affidavit that he mistakenly thought that Israel was a member of the EPO, and noted that Israel competed in the Eurovision Song Contest and played in the European football league. That request to extend the national phase entry was refused. Unfortunately for me, then Deputy Commissioner, Noa Shmulevezh, discussed the difference between patents and Eurovision song contests and ignored the other arguments I brought.

Back then, it was worth attempting to effect a late filing, but I am surprised that the agent of record (Colb) attempted this now. Over the past 10 years the Israel Patent Office has consistently refused to allow late national phase entries on the grounds that Applicant believed that Israel had a 31 month regime or was part of the EPO.

I did not appeal the previous patent office ruling to the courts as the client didn’t authorize me to do so. I wonder if the applicant this time will file an appeal. In the meantime, although the Israel Patent Office is addopting a high standard, it is at applying the same standard consistently.

 

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