It can and does happen that annuities are inadvertently not paid and patents go abandoned.
If the patentee and/or his representative act promptly on learning that a patent lapsed, and sign affidavits to explain how the deadline was missed, reinstatement is generally possible. The Adjudicator, typically the Deputy Commissioner, will usually allow reinstatement and her decision publishes for opposition purposes. If, in the meantime, a third-party has made preparations to exploit the apparently abandoned patent, they are generally entitled to a non-transferrable license to continue to exploit. It is important to realize however, that reinstatement is NOT automatic.
This past month there were six rulings concerning abandoned patents. In five cases, in two of which the patentee was represented and in three they were not, the Deputy Commissioner ruled that the conditions of Section 56 were met and ruled that, subject to no oppositions being submitted, the patents could be reinstated.
In the sixth case, IL 177416 to Arieh Sansolo titled “Rapid Detonating Cord Coil Deployment Apparatus” went abandoned due to failure to pay the third renewal for years 10-14 after filing. The last day for paying this renewal was 10 August 2016, and six months later, on expiry of the grace period, the patent was abandoned as per Section 57 of the Law. The fact that the patent was abandoned was published in the March 2017 journal.
From the request for reinstatement and the accompanying affidavit, it seems that the reason why the case was not renewed was due to the patentee not being reminded by the agent-of-record (Dekel Patents).
In her ruling of 7 February 2018, Ms Bracha wrote:
It is not clear from the Affidavit why the agent-of-record did not inform the patentee, nor is it clear what steps were taken by the agent-of-record to ensure that the renewal fee be paid. It is also not clear how and when the patentee and the agent-of-record became aware that the patent had lapsed
Ms Bracha gave the patentee a further opportunity to add the missing data within 7 days.
The patentee and legal representative did file an additional submission which attempted to include testimony from both patentee and agent -of-record wherein the patentee swore to tell the truth, but the agent -of-record merely listed the circumstances without swearing to tell the truth. Nevertheless, without relating to the formal deficiencies, Ms Bracha considered the statement. The agent -of-record noted that he assisted the patentee by receiving reminders and forwarding them to the patentee. In this instance, he did not receive a reminder and thus did not forward it to the client. The agent -of-record noted that he does not charge for this service.
In a string of decisions the Israel Patent Office has ruled that not receiving a reminder from the Patent Office is not sufficient justification to not pay the renewal. See for example, IL 185526 Khalid Akad et al. 24 October 2012. The Applicant or his representative are required to take positive steps to ensure that renewals are timely paid, such as to run a computerized reminder system or to use a renewals company.
In this instance the patentee and the agent -of-record did not have such a system but simply relied on the Patent Office. This is insufficient to fulfill the reasonable means requirement of Section 60 of the Law.
Furthermore, in this instance, the Patent Office records show that an email reminder was sent to the agent -of-record on 10 April 2016 and shows up in the Patent Office system.
It is noted that providing a renewal service without charge is insufficient to free the agent -of-record from his obligations under the law.
The request for reinstatement is refused, but the Applicant has 30 days to submit a request for a hearing.
Re Reinstatement of IL 177416 – Decision by Ms Bracha, 11 February 2018.
Whilst Ms Bracha is correct that the patentee and agent-of-record are obliged to docket and track renewals, things can and do go wrong. Now the Patent Office is obliged to weigh the public interest against that of the patentee and there is, indeed, a six months’ grace-period. The fact that this month there were six cases of patents that unintentionally lapsed shows that this does happen. What I would like to humbly suggest is that the Patent Office takes it upon itself to send out a further reminder or preferably two; one when the deadline for renewal passes and one a month before the end of the grace-period. The Patent Office is equipped to do this automatically without human involvement. Doing so would increase Patent Office revenues and minimize the amount of time that the Commissioner and his staff have to deal with reinstatement issues.