Israel Patent Lapses, But Patent Office Remiss For Not Sending Out Patent Certificate

April 30, 2017

The first renewal of IL 206744 to Bet El Zichron Yaakov Industries LTD was due within three months of it issuing. As it issued on 1 May 2016, the renewal was due on 1August 2016 (see Section 56 of the Israel Patent Law 1967), and six months later, on 2 February 2017, it was published as having lapsed (as per Section 57 of the Law).

On 9 March 2017, the Applicant requested reinstatement, but did not submit an Affidavit. At Deputy Commissioner Bracha’s request, the CEO of the company submitted an Affidavit claiming not to have received the Patent Certificate.

After reviewing the Israel Patent Office records, it transpired that due to a problem in the patent office, the Certifcate was indeed not sent out. The Deputy Commissioner considered this was sufficient reason for the renewal fee not being paid.

Since the request for reinstatement included the missing payment, the Deputy Commissioner ruled that the reinstatement should publish for Opposition purposes.


Reinstatement of IL 122846 to Tyco Fire and Security rejected

January 11, 2017

The fourth renewal of Israel Patent No. 122846 to Tyco Fire & Security was not paid by the deadline of 4 January 2012. A request for reinstatement together with an affidavit was submitted on 9 November 2016, following an earlier request without an appropriate Affidavit that was filed on 1 August 2016 which was rejected in a ruling of 4 August 2016, that without an affidavit such a request could not be considered and that the date of resubmission with an Affidavit would be considered the date of submission. The submission of 1 August included an update that the renewal fee had been paid and a request for reinstatement without any reasons.

On 9 November 2016, an affidavit by Michael Lahat, an employee of Visonic, was submitted. Mr Lahat claimed that Visonic had transferred the rights of the subject patent to the present owners back in July 2013. He further claimed that he was a member of the IP committee of TYCO and consequently, could testify on behalf of the company.

When the renewal fee was due, an employee of Visonic informed the Israel Representative that the company intended to renew the patent themselves, without assistance. In practice the renewal was not accomplished and no explanation was provided. The employee in question left the company hack in November 2013, but prior to her leaving, the rensponsibility for paying renewals was transferred to CPI. In July 2013, this and other Visionic patents were transferred to Tyco. The transfer of ownership was recorded in the Patent register on 31 December 2014, but by this time, the patent in question had already lapsed over a year earlier.

Close to what would have been the fifth renewal date had the patent not lapsed (years 18-20), on 4 January 2016, CPI [MF- Probably CPA – Computer Patent Annuities] tried to perform the renewal, but, since the patent had lapsed, were unsuccessful in this attempt. In March 2016 the renewal company informed the patentee that the mark had lapsed. The attempt to  revive was submitted eight months later.

Section 60 of the Patent Law 1967 states that there are  three conditions for restoring a patent subject to public opposition:

  1. that the payment was not made due to reasonable causes
  2. That the Patentee had not wanted the patent to lapse
  3. That the  request to reinstate was filed as soon as the patent lapsing was known to the applicant or to his representative

The Deputy Commissioner Ms Jacqueline Bracha was not convinced that these conditions were met since it was not clear why the fee was not originally paid in a timely manner since the instructions given to the former employee were not made of record.

The fact that details of the patent were provided to the renewal company does make it clear that the patentee did not want the patent to lapse, so the second requirement is fulfilled, although the after a delay.

No suitable explanation was provided for months passing from when it was discovered that the patent had lapsed until the affidavit was filed.  In this regard it is noted that the patentee was an Israel company that was not difficult to communicate with. That said, even if the patentee was a foreign entity there is no justification for eight months passing in the modern age with modern communication channels.

Since two out of three of the essential conditions were not met, the request for reinstatement is refused.

 

 


Revival of IL 211245 to Neurovision Imaging Inc.

August 17, 2016

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


Lapsed Patent for Monitoring Flow of Sewage Reinstated

July 25, 2016

renew

Israel Patent Number IL 214216 titled “SEWAGE FLOW METERING METHOD”to Roberto Cymmerman lapsed due to failure to pay the first renewal. The patent issued on 1 July 2015 and so the deadline for renewal was 1 October 2015. The payment was not paid on time. Nor was it paid during the six month grace period under Section 57 of the Israel Patent Law 1967. The fact that the patent had lapsed had not published.

On 30 May 2016 the Applicant requested reinstatement via legal counsel but a Power of Attorney appointing the legal counsel was only submitted after a ruin from 6 June 2016.

An affidavit from Patent Attorney Yoram Savyon who had previously represented the Applicant was submitted. From the Affidavit it transpired that the firm uses a computerized renewal system that was updated on receipt of the notice of allowance; with a calculation of the anticipated date of grant. Based on this, the final deadline for paying the forthcoming renewal was entered. (Further renewals are derived from the filing date and are entered with the filing of the application).

In this instance, the worker who manages the database did not enter the first renewal (which is based on the issue date), but did enter the subsequent renewal date. That the patent issued was reported by the office manager to the relevant worker and it is not clear why he failed to enter the information.

According to the Affidavit, some two months before the final deadline for paying the second renewal, i.e. in May 2016, the Applicants were informed of the deadline and then it transpired that the first renewal was not paid as the deadline was not entered into the system. The Affidavit also noted that for mistakes of this kind, the worker had already been fired.

Deputy Commissioner Ms Bracha noted that the patent itself was filed on 20 July 2011 and so the deadline for the second renewal (years 6 to 10) was 20 July 2017 and not 2016 as claimed in the Affidavit. This mistake raises eyebrows to some extent with regards to the facts detailed in the Affidavit as to how the mistake was discovered. Nevertheless, the mistake for not paying the fee in a timely manner that was detailed in the Affidavit does fit in with the requirements of Section 60 of the Law and so (intent and due care – MF) and so, provided the fee is paid in a timely manner, Deputy Commissioner Ms Jacqueline Bracha saw fit to allow reinstatement, together with an opportunity to the public to oppose.

Ruling by Ms Jacqueline Bracha concerning reinstatement of IL214216, lapsed due to failure to pay renewal fee, 20 June 2016.

COMMENT
In this case, a human error resulted in failure to insert a date into a spreadsheet or dedicated program by a poorly trained and incompetent clerk who was subsequently fired. In the Colb ruling, hand-written renewal records and a more excusable error were considered a lack of due care. I argued that even computerized systems required data to be correctly entered and extracted. In this case, there seems to be a bug in the system for calculating subsequent renewals in that five years and not six is hard wired into the system (or perhaps the filing date was typed in a year early by mistake?!). There is a second error blamed on the office junior who was righteously fired, but was he/she at fault? The main thing justifying this case being considered due care seems to be the use of a computer system, despite it having a bug and being operated by someone incapable of data entry. I consider this standard of due care to be overly reliant on there being a computerized renewal system in place. Objectively, there were apparently two errors here and no indication that there was any intention to pay the first renewal in a timely manner whereas in the Colb case there was one error.


Request to Revive Patent Refused

May 10, 2016

mistakes

The Israel Patent Office has ruled that an inadequate payment occurring in a manual docketing system is unreasonable because IP firms should have computerized systems. Despite the client wanting to renew a patent, the attorney of record taking steps to renew, but making a mistake, and attempting to rectify on discovering the error which the Israel Patent Office could have (and in my opinion should have) brought to attorney’s attention, the patent cannot be reinstated!

Asterias Biotherapeutics Inc. owned Israel Patent Number 159324 “A method of differentiating PPS cells into a population of neural cells using TGF-8 super family antagonists”. The patent was filed on 20 June 2002 and issued on 31 July 2o12, so the Applicant’s representative, Colb, should have paid the first, second and third renewals for years 1-6, 6-10 and 10-14. They inadvertently only paid the first and second renewal and the IPO sent a certificate for the second renewal but failed to note that the third renewal should also have been paid. The patent lapsed and this fact published in the August 2013 journal.

Asterias Biotherapeutics, represented by Colb, attempted to reinstate the patent by arguing that there was a mistake by an office worker of the Agent of Record, and only the first and second renewals were paid. The worker docketed the next renewal for 20 June 2016. This date was calculated manually and was docketed in a diary by hand as is clear from an appendix to the submission to reinstate the patent. As the June deadline approached, the status of the patent was checked and it was discovered to have inadvertently lapsed. The Patent Office confirms receipt of the first two renewals and issued a renewal certificate for years 7-10.

The Deputy Commissioner ruled that there is no doubt that the Applicant wanted to renew the patent and that close to realizing that it had lapsed they took steps to revive the patent. However, under Section 60 of the Israel Patent Law 1967, there is a further consideration, namely whether the circumstances leading to the renewal not being paid can be considered reasonable. The Deputy Commissioner, Ms Bracha was not convinced that the Agent of Record had behaved reasonably.  She was unclear as to whether the renewal dates were calculated and recorded manually or whether they used a computerized system as is generally the case. Therefore the request for reinstatement is denied.

COMMENT

I strongly object to this ruling. Any computer system ultimately will require a person to enter data and to correctly act upon it. The Israel Patent Office has successfully computerized itself over recent years but still makes mistakes. I’ve seen papers from other attorneys relating to other applications misfiled by the Israel Patent Office in applications that I am responsible for. Other patent offices around the world still use manual ledgers.Before setting up my own practice, I worked at Seligsohn & Gabrieli which was then run by the late Arnan Gabrieli. He was old-fashioned and didn’t believe in computerization and saw computers as electronic typewriters. Everything was docketed by hand in ledgers by a receptionist. She was diligent as she knew that any mistakes would cost her her job. The system, though primitive, worked.

The Law does not require computerized docketing. Nor do the regulations.  Computerization enables streamlining and staff reductions which may result in lower operating costs that may be passed onto the clients as lower service charges. It is more efficient. It is not, however, more reliable. Ultimately it relies on humans entering data into a computer and a wrong keystroke can result in an error. Mistakes happen in both manual and automated systems.

I really do not know how many IP firms use manual diaries, how many use spreadsheets and how many have expensive software. I do know that some software has proven unreliable. Some vendors have gone out of business and some firms have not got around to selecting renewal or docketing software. The difference is one of setup costs and operating costs. I am not sure that any one is more reliable. Ultimately a person has to look at the record and typed instructions into the IPO website to pay the renewal on line.

In the USPTO website, one has to enter a patent number and the corresponding application number so that the two numbers have to correspond. This safety feature prevents mistyping causing an error in identifying a particular patent. The USPTO renewal interface not only informs the user that a payment is or is not due, but calculates the amount and whether extension fees are required. In contrast, the IPO system is not, or at least was not automated. Typing the patent number, the fee is not calculated automatically. A person still had to type in that he was paying the first, second (and third) renewal, possibly with extension fees. This stage is prone to mistakes. Even if handled by a patent attorney and not a paramedic paralegal mistakes can and do happen.

Until recently, once one had paid online, one had to print out and forward the ruling to the patent office.  Sometimes the system crashes and one has to start again. One pays by credit card on the Israel Patent Office website but at least until recently, one then had to print out the payment slip, send it physically to the patent office and they had to correctly enter the details and then print out a certificate. I had a case that went abandoned and was revived where I could prove that the payment was made and was received by the Israel Patent Office because I paid renewal fees for two separate cases on the same A4 receipt, and only one was docketed by the Israel Patent Office. Since I had paid and sent them the proof of payment, clearly the data was entered wrongly their end. It happens. It happens at the patent attorney end as well and will happen with both computerized systems or manual ones.

Now, Colb has a large and profitable, established practice. The docketing solution appropriate for him may be beyond the reach of smaller practices. But smaller practices grow. When does a firm need to graduate to a dedicated software practice and when can they rely on a spreadsheet or on a manual solution? If Colb successfully managed for decades with a manual system and built up the practice before computerized systems became available, should the firm be forced to change? The Israel Patent Office is justifiably proud of their ISO certification. Some patent firms have such certification, others do not. ISO requires procedures. It does not require these to be computerized.

As Colb has been found unacceptably negligent in not having a reasonable solution, Asterias Biotherapeutics can sue them for negligence and pharmaceutical patents that are worth renewing 12 years after filing and 13 years from priority may be extremely valuable. I do not believe that any IP firm can afford to insure themselves for claims of tens of millions of Shekels. I predict that Colb appeals this ruling to the courts. I hope that and appeal to the IPAA, the AIPPI, the IPR forum and other representative bodies to file amicus briefs supporting such an appeal. 

In a recent posting, I argued that Einav Zilber wasa more appropriate chairperson of the Israel Patent Attorneys Association (IPAA) than her predecessor, the venerable Dr Meir Noam since he was previously the Commissioner of Patents and is thus conflicted if the Association has to challenge a Patent Office ruling or procedure. I think that this type of case amply demonstrates what I mean.

One more comment. Section 60 allows reinstatement if a mistake is reasonable. In one of her first rulings, Ms Bracha allowed a human error by Reinhold Cohen that resulted in a deadline being missed, to be extended. In that case, relating to patent term extensions, the Law (Section 64) requires the mistake to be unavoidable. It does not allow due care or unintentional mistakes to be rectified. Nevertheless she ruled that human errors are unavoidable. That ruling was in 2012, not long before this mistake occurred. Why didn’t she rule that RCIP should have had a computerized docketing system?


Personal Check

April 9, 2016

Bdi

Israel trademark application no. 246933 is for the words PERSONAL CHECK in English, and transliterated into Hebrew – פרסונל צ’ק.

The Application was submitted on 24 May 2012 and covers business information services in Class 35. The Applicants are BDA Kopas LTD. On the Application form, the Applicant noted that the mark was previously registered as Israel Trademark No. 176802 by the company trading as BDA Business Data LTD, but had lapsed in 2007 due to failure to renew the mark. The Applicants provide business data that enables managing credit risks and claims to be the leading Israel supplier of such information.They claimed continuous usage of the mark and argued that it lapsing was due to human error and is in no way an indication of lack of usage or desire for the mark.

Despite the mark having been previously registered, in August 2013 the Examiner refused the mark, considering it as lacking distinguishing features and as directly describing the services provided. The Examiner also requested a more detailed and limiting list of services. Furthermore, the Examiner considered that the words Personal Check were only ever used in conjunction with the letters BDI and were not entitled to independent registration without this acronym.

In response to this objection, the Applicant seems to have scored an own goal by arguing that the term ‘personal’ implies relating to individuals and ‘check’ implies examination, so the combination personal and check is distinctive for the service of looking into the historical credit worthiness of individuals.

The joint CEOs of BDI COFACE provided affidavits attesting to the duration and scope of usage of the mark. In a subsequent hearing, the Applicant explained that within the framework of the Credit Information Act 2002 they provide cellular phone companies and banks with information about clients and potential clients, such as details of bankrupcy, repossession orders and loan repayments.

The Applicant claimed extensive usage and advertising of the mark since 2005 and a reputation for their services that was associated with the mark. The claim was backed by articles from Israeli business newspapers from 2005 and 2006 that supported the claim that they were the first to provide such services. The Applicant claimed that the term had acquired distinction due to usage and was thus eligible for registration under section 8b of the Ordinance. However, scope of sales was not disclosed under the claim that this was a trade secret and unneccessary for registration purposes. Finally, at a hearing, the company showed current google rankings for the term and a more recent article from 2013.

RULING

Section 8 of the Trademark Ordinance requires distinctiveness for a mark to be registerable. The distinctiveness may be inherent or acquired through usage. Section 11 states that descriptive marks that relate to the services or goods provided may not be registered as they are generic and should be available to all.

The Deputy Commissioner cites Seligsohn 1973, and the usual colslaw case-law, including  the Family Magazine and Eveready rulings.

The mark in question PERSONAL CHECK in class 35 is a combination of the words PERSONAL and CHECK and a google search of the term produces personal checks (cheques) and not information regarding credit-worthiness of a personal nature.

The Applicant considers that a personal medical information of detective report into an individual could be described as a personal check and such uses would be descriptive, but their services are different. Furthermore, most of their users are Israeli and wouldn’t think of the meaning of the words.

Citing Seligsohn again, the Deputy Commissioner noted that usage of a word or phrase could not render a generic term distinctive.

The Applicant admits that most Israelis know English (to some extent) but associate the word check with המחאה (cheque in English, check in Americanese).

The Deputy Commissioner considers that since the phrase in the Law is not personal check, the phrase, though descriptive, is not generic and is registerable if acquired distinctiveness can be shown.

Showing acquired distinctiveness for the phrase is difficult since in practice the mark is used with the letters BDI but this does not in and of itself mean that BDI and Personal Check cannot be independently registered.

After some humming and hawing, he bottom line is that the mark is accepted and can publish for third-party opposition.

COMMENT

As the mark had been successfully registered without a track record of usage and without opposition, and now the mark has an additional history of usage, refusing it would imply that the original registration was a mistake. After all, the rules were laid out at Sinai by Seligsohn and haven’t changed since 1973.

As an English speaker, I think the term personal check is a generic term for personal check, if an ambiguous one. In others words, I can see that in context the term could mean a cheque from a cheque book or a medical examination. I would be inclined to spell cheque the English way and to refer to medical checks as check-ups or examination. I would not grant a trademark for credit check for creditworthiness reviews, but since the mark had previously been registered and only lapsed due to human error, this was probably the correct decision.


Israel Patent Office Denies Authority to Reinstate a Lapsed Design After Grace Period, Despite Proof of Timely Payment

March 9, 2016

Pigeon post

Gabi Bakshi has two registered designs that have lapsed. Design Number IL 40188 is for a dove shaped sculpture. It was registered in January 2005 and renewed in November 2009. It then lapsed because the second renewal wasn’t timely paid. The six month grace period ended on 17 July 2015. Gabi Bakshi also registered Israel Design No. 48297 which is for a variant of 40188. This variant was filed in September 2009 and registered in November 2009. It should have been renewed on 17 January 2010 together with the 40188 design since, as a variant design it was not entitled to longer protection than the parent.

On 28 December 2015, Mr Bakshi requested reinstatement of both designs. He claimed to have paid the renewals on 16 November 2014 and to have posted the renewal receipts for the second renewal to the Israel Patent and Trademark Office by registered mail but it was never received and so the design lapsed.  The appended receipt shows that  the 40188 design was renewed but there is no evidence that the 48297 variant was renewed. At a hearing, Mr Bakshi renounced the 48297 variant but alleged that he believed that the 40188 design was renewed in a timely manner.

Ruling

Section 33(4) of the Design Ordinance requires requesting an extension within five years and the regulations grant a six month grace period. Citing 30704 and 3705 Moshe Harel and 560/92 Klil Industries, the Deputy Commissioner, Ms Jacqueline Bracha considers that unlike lapsed patents, the Commissioner does not have the authority to reinstate a lapsed design after the six months grace period has passed.  In this instance, the fact that the Design registrant had paid the renewal fee and sent it to the patent office does not help as it was not received.

Based on the decision concerning design numbers 35866 and 35867 to Eli Yashar, where a request for extensions is made, the Commissioner can extend the period of a design if two conditions are fulfilled. One has to both timely request an extension and to pay the fee.  Without requesting an extension, paying the fee is not enough.

Consequently the request for renewal was not granted. Mr Bakshi may appeal the decision to the District Court which can, if it sees fit, order the extension to be entered into the register.

COMMENT

I suspect that Mr Bakshi may be entitled to copyright protection and to protection under the Law of Unjust Enrichment as per the A.Sh.I.R. decision, but haven’t seen the designs.

I wonder if Pigeon Post might have been more reliable than registered mail?