When Israel patent applications are examined, not always a patent issues. Sometimes a final rejection issues where the Examiner is not persuaded that the Application has merit. More frequently, the Applicant loses interest or runs out of funds and does not respond to an office action. Some six months later, the Israel Patent Office issues a notice prior to closing the file and if no response is received within one month of that issuing, the file is closed.
Even after a patent application is abandoned and the file closed, it is possible to have the file reopened and the final rejection to be reconsidered under Section 21a of the Law.
Here, the time-line is critical. It is relatively straight forward to have a closed patent application reopened within 12 months of the application being considered abandoned. After that window, it is very difficult and one has to show circumstances to justify an exception being made.
Israel Patent Application No. IL 220137 to Skvirsky, Skvirsky and Monassevitch titled “Removable attachment to a Dental Prosthesis” was filed on 4 June 2012. On 2 December 2013, the Israel Patent Office reported that the file would be accessible to the public 18 months from publication unless the Applicants withdrew it. The Applicants did not respond, and so the application published.
On 21 January 2017 the Applicants received a Notice Prior to Examination which had a four-month period for responding. Extension fees for patent applications are payable retroactively but after the four months and a further six months had passed without a response being filed, a Notice of Imminent Abandonment was sent to the Applicants on 4 November 2014. This too was ignored and the Application was considered abandoned and the file closed on 21 December 2014.
On 8 August 2016 the Applicants requested that the file be reopened. No Affidavit was submitted with the request which stated that the Applicants had not received any of the letters from the Israel Patent Office and had contacted the Israel Patent Office on their own initiative on 7 August 2016 and discovered that the file had been closed.
In an interim ruling of 1 January 2017, the Deputy Commissioner Ms Bracha requested a signed Affidavit detailing the circumstances of the file closing to be submitted by 5 February 2017, a week before a hearing was scheduled. The Applicants did not submit an Affidavit but simply sent a further letter making the same claims that they had submitted with their request to have the file reopened.
On 12 February 2017 Mr Yaniv Skvirsky attended the hearing. He explained that the letter of December 2014 from the Israel Patent Office was delivered in August 2016. He also claimed not to have received the Deputy Commissioner’s order for an Affidavit to be submitted. As this was part of the communication that related to the hearing, it is not clear how he knew when to present himself.
After the hearing, the Deputy Commissioner requested that within 14 days, Skvirsky submit an Affidavit together with a copy of the letter that he did receive in August 2016. This was also not submitted.
Section 21a of the Law provides a period of one year for the Applicant to request reexamination of a refused patent application. Section 164 of the Law allows this period to be extended “if the Commissioner considers it fitting to do so”.
The justification for applying the |Commissioner’s discretion under Section 164 of the Law depends on context, the conflicting interests being considered. In this regard, see 2826/04 Commissioner of Patents vs Recordati Ireland ltd, 26 September 2004.
The policy regarding different extensions that guides the Commissioner will change with the context and the nature of the proceeding for which an Extension is sought.
In this instance, one has to balance the Applicant’s interest with that of the public to know whether something is protected or abandoned in a reasonable time frame. Once the Section 21a period has passed, the public relies on the period of a year for appealing the final rejection and understands that there is no protection for the product in Israel. This relying increases over time, so as the 12 month period recedes in the distance of time, it becomes ever more difficult to revive an abandoned patent. See Opposition to IL 110548 Shmuel Sodovsky vs. Hugla Kimberly Marketing ltd. 12 August 2010 and Application IL 15763 to Icos Corporation, 21 October 2013.
Once the Application has published at 18 months from priority, it is more difficult to revive a patent that is more than 12 months after being considered abandoned. In this instance, the Applicants wish to revive the patent application 7 1/2 months after the 12 month period for revival, and there are significant discrepancies in the Applicants statement regarding the events that led up to the patent application becoming abandoned: the Applicants first claimed not to have received the letters from the patent office. Then they claimed to have received them a year and a half after they were posted, but despite being asked to reproduce the letters, they did not do so.
The Applicants claimed not to have received the invitation to the hearing, yet they knew to turn up for it. At the hearing, the Applicants acknowledged that the address of record was correct, and was the home address of one of the Applicant’s father. It is not reasonable that three separate letters sent over the course of a year went astray. Nor is it reasonable that one such letter arrived 18 months late.
The discrepancies in the chain of events and the Applicants ignoring of directives indicates that they were not really interested in obtaining a patent in Israel, and consequently the request for extension of the 12 month period to appeal final rejection is rejected.
Decision re reviving IL 220137 given by Ms Jacqueline Bracha, 3 May 2017