When Attorney Joins Civil Service and Patent Application becomes Abandoned

Mr Bean.jpgYosef Shir submitted a patent application for a “roll stecl”. As far as I can make out from the Hebrew, this may be a roll up suckah.

The Application was submitted on 16 March 2011 and the file was closed on 23 November 2014 after two letters sent to his agent of record were ignored.

The letters were sent on 5 January 2014 and 19 October 2014. The letter closing the file on 23 November 2014 was also sent to the agent of record, Adv. Hanny  Trudy.

The Application to reopen the file was submitted on 24 December 2018, four years after the application was deemed abandoned. In the hearing before the Deputy Commissioner, the Applicant clarified that after he gave the invention over to his lawyer he heard nothing more until he went to the Patent Office on 23 December 2018 to find out what had happened to his application.

After the hearing, the Applicant requested to submit documentation that related to his health, which had allegedly prevented him from dealing with the Application, and also an Affidavit from the lawyer who had represented him on the case.

The medical documents indicated that the Applicant had undergone surgery before submitting his application and had also suffered a traffic accident in 2017 which had not resulted in him being hospitalized or even taken to casualty. Consequently the Deputy Commissioner does not find a connection between his medical condition as indicated by the evidence submitted, and the patent becoming abandoned.

From the Affidavit of Adv. Trudy, it appears that he was appointed to a position in the State Attorneys office in May 2011. From the Affidavit, Attorney Trudy informed all his clients and the Authorities regarding his having to cease representation on all open files.

Examination of the file-wrapper indicates that the Patent Office did NOT receive any communication to the effect that Adv. Trudy was ceasing to represent the client, and so the address of record did not change and remained Adv. Trudy’s office.

To the letter that the Applicant submitted after the hearing, he denied that Adv. Trudy had informed him that he was ceasing to represent him.

Nevertheless, in the hearing before the Deputy Commissioner, the Applicant claimed that Adv. Trudy had told him he would send a letter to the Patent Office to the effect that he was no longer representing him. (Page 4 of the protocol).

Deputy Commissioner: It doesn’t matter. The Attorney did not resign from the representation at any stage.

Yosef Shir: No.

Deputy Commissioner: The lawyer did not inform us that he was no longer the agent of record and so all correspondence was sent to him in 2014.

Sarah Shir: But he said he was no longer dealing with the case.

Yosef Shir: Hew told me that he would write to you that he was no longer representing us.

Deputy Commissioner: He did not send a letter

Yosef Shir: that is true but…

These are the facts and we know look at the relevant legal position. Under regulation 36(4) of the Patent Regulations (Procedures, Documents and Fees) 1968 the Applicant that does not respond to the Notice Prior to Examination under Section 1 and Regulation 36, is seen as someone who has withdrawn their request, and this results in it being refused. Section 21a of the law sets a time period for reinstatement of abandoned applications, even where the abandonment is the result of not responding to an Office Action:

If the Commissioner refuses to allow an application under Section 21, he is allowed to reconsider the refusal as long as 12 months have not passed since the case went abandoned.

This period can be extended under Section 164 of the Law that gives the Commissioner the power to extend deadlines if he sees reasonable grounds to do so.

The reasons for extending the period given in the law or regulations are case specific and relate to the various interests of each case considered on its merits, as Judge Naor stated in Appeal 2826/04 Recordti Ireland vs. Commissioner of Patents 26 September 2004.

The policy regarding different requests and extensions that come before the commissioner are subject to change with context, and depending on the case being extended.

In cases such as this one has to consider the interest of the Applicant, that his application be examined, and the interest of the public with respect to the claimed invention. See the decision regarding Application IL 221116 to revive an abandoned application to Yaakov Dichtenberg et al. 7 September 2016. 

The different considerations for deciding whether the reasons provided are reasonable, are the amount of extension required and whether justification for the extension was provided, as ruled in IL 110548 Shmuel Sadovsky vs. Chogla Kimberly Marketing ltd, 12 August 2010, and following that, in Application IL 157563 ICONS CORPORATION, 21 October 2013.

As to the first consideration. i.e. the amount of time passed, this is a long time of over four years.

As to the second consideration, the existence of a reasonable explanation, the explanations supplied by the Applicant are insufficient. His medical issues were not significant enough to prevent him making inquiries with the Patent Office, and the applicant did not supply any explanation justifying why he not contacted his lawyer during the period. The Deputy Commissioner does not see a need to rule on the factual issue of whether the lawyer informed his client about having left the private sector or not. As stated in re IL 208677 and IL 219257 (extending the period before final rejection), Raik Ahmed Abu-Ganav 31 October 2018, the Deputy Commissioner does not consider that this is reasonable behavior of someone entrusting a legal matter in the hands of an attorney.

Furthermore, where the Patent Office has an address for letters under Regulation 16(d) and (f) of the regulations, the Patent Office has to send all communications to that address, and this is what they did.

As a footnote, it is noted that the fact that the Application has gone abandoned is published on the Patent Office website but due to a glitch, the specification was not published.

So, if the Application is not otherwise published, the Applicant can resubmit his application and obtain a new date.

In light of the above, the Application is rejected.

Ruling by Deputy Commissioner Ms Jacqueline Brachah concerning reinstatement of IL 21175 to Yosef Shir, 28 March 2019


Categories: Intellectual Property, Israel IP, Israel Patent, Israel Patent Agency, Israel Patent Office, Israel Patent Office Rulings, Section 21a, Uncategorized, החלטת רשות הפטנטים, פטנט, פטנטים, קניין רוחני, קנין רוחני

1 reply

  1. Refile?? But the applicant or someone else might have already published the invention (even if the Patent Office had not)

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