America-Israel Patent Law Blog

Being a patent practitioner comes
with certain liability risks.  There are
many dates to keep track of (the one-year anniversary of the earliest priority
date, dates of public disclosures and offers for sale, national phase
deadlines, deadlines in various countries for filing powers of attorney,
translations and the like, deadlines for responding to Office Actions, and
deadlines for paying renewal fees, to name a few), and if you miss one of them,
you can forfeit your client’s rights.  If
the value of the lost patent or patent application can be easily demonstrated, and
you don’t have the ability to buy forgiving legislation for your client like
The Medicines Company’s lawyers did after they missed the deadline for filing for
a Patent Term Extension for Angiomax® (bivalirudin), you could be on the hook
for a lot of money.  Thus was born patent
attorney malpractice insurance.

Of course, an ounce of prevention
is worth a pound of cure, so to reduce the likelihood of patent catastrophe, most
patent attorneys use a docketing program to warn them of upcoming
deadlines.  There are quite a few of
these programs on the market, offering various degrees of robustness, flexibility,
features and accessibility over a wide range of costs.  But even with the use of the most
sophisticated docketing software and the world’s best administrative staff, dates
are sometimes missed.  Think of it as
probability in action: over thousands of applications, statistically there’s
going to be an error from time to time. 
The most common cause of missed deadlines – at least to judge from
reading the decisions of the Israel PTO in response to requests to revive
abandoned patents – is the incorrect entry of a due date in the docketing
program.  More expensive programs allow the
user to input in a base date and automatically calculate follow-on dates; less
expensive programs require the user to enter those follow-on dates himself.  Either way, there’s room for error.

Because of the particular nature
of patent practice (as opposed to general law firm practice), it should come as
no surprise that patent practitioners themselves were and are involved in the
development and marketing of some of the available docketing programs.  Y is such a person.  Y is an Israeli patent practitioner.  He developed his own docketing program and
then began marketing it to other patent practitioners.  I’ve no idea how successful that venture has
been, but as of this writing his web site includes an advertisement for the
product. 

What I found intriguing was not Y’s
docketing program, but a recent decision of the ILPTO concerning a lapsed
patent under Y’s care.  The PCT application
was filed in Australia on December 14, 2005, and Y attended to the national
phase entry in Israel on June 24, 2007.  The
patent was granted on March 31, 2011.  The
applicant apparently entrusted Y to pay the renewal fees, but the renewal fee
due at 6 years from the filing date of the application wasn’t paid on time, nor
was it paid during the 6-month grace period for such payments.  So the application went abandoned.  Y only became aware of this in 2013, when he
paid the 6-year renewal fee in June and was informed that the patent had lapsed
more than a year before. 

Y then petitioned the ILPTO to
revive the patent.  Under sections 59 and
60 of the Israel patent statute, the Commissioner is empowered to revive lapsed
patents if the overdue renewal fees are paid, the Commissioner is convinced
that the cause the lapse is reasonable, the patentee did not want the patent to
go abandoned, and the petition for revival is filed as soon as possible after
the lapse becomes known to the patentee or the party responsible for paying the
renewal fees.  According to Y, who signed
a declaration in support of the revival petition, the non-payment was
reasonable, because Y had mistakenly calculated the renewal fee deadline from
the date of national phase entry rather than the PCT filing date, and the other
conditions set forth in section 60 were met. 

The Deputy Commissioner denied
the petition.  Section 15 of the statute
establishes the filing date for Israel patent applications as the day on which
the application was submitted to the ILPTO including the name of the applicant,
the filing fee, and a description of the invention.  But section 48C specifically says that
section 15 doesn’t apply to PCT applications, and that the filing date of a PCT
application is determined in accordance with the Patent Cooperation Treaty
itself.  Moreover, both the filing
receipt and the certificate of patent indicated the filing date as December 14,
2005. 

In short, this wasn’t a case of a
mistaken entry in the docketing program, it was a case of a mistaken
understanding of the law. The Deputy Commissioner basically said, ignorance of
the law isn’t a good enough excuse for missing the renewal fee payment.

She might have added that ignorance of the law isn’t
exactly a ringing endorsement for potential buyers of Y’s docketing program
either.  Even if this is one mistake that
Y is certainly not going to repeat.