Star Wars fans will recognize the title of this blog post as taken from a line that Han Solo says. The relevance will become evident in a moment.
Regulation 86 of the Patents Regulations requires the Israel PTO to send out a notice of upcoming patent renewal at least three months before the payment deadline. Regulation 87(a) says that payment cannot be made more than three months before the payment deadline. Ergo, the Office sends out renewal fee notices three months ahead of the deadline.
On March 1 of this year, I was sent a renewal notice for Patent “D” that stated that the fee was due by June 1. At the time, I didn’t pay attention to the date in the letter. Rather, because renewal fee deadlines are calculated based on the application filing date, and in this case the filing date was actually in late May, I reported to the client in accordance with the actual date (and not what the letter said).
Turns out the patentee will not be renewing this patent. No problem. But since, per the Paris Convention, renewal fee deadlines are extendible by six months, earlier this week, on November 2, the Office sent a final reminder saying that if the renewal fee isn’t paid by December 1 – viz. six months after the incorrect June 1 deadline listed in its original renewal notice from March – the patent will lapse.
Today, at 15:12, the Office sent an email stating that the date in the in the November 2 email was incorrect, and that the correct deadline was a few days earlier viz. six months from the deadline that fell on the anniversary of the application filing date. Then, at 17:37, the Office sent another email, saying that email of 15:12 was sent in error and should be disregarded.
In other words, “We’re fine, we’re all fine here, now, thank you”.
As I mentioned, the patentee will not be renewing Patent D, so no harm, no foul, but the sequence of events raises a number of questions.
First, why did the system originally calculate the deadline incorrectly? Had the filing date fallen on a date when the Office was closed – e.g. a Friday – then the initial deadline would have been pushed off until the next day on which the Office is open. But this year June 1 was a Monday, so even if the original deadline had been on Friday, May 29, the initial deadline would have been pushed off only to Sunday, May 31, not to Monday, June 1, so deferral of the initial deadline because of Office closure can’t be the reason. Why the original reminder was sent on March 1, and set an incorrect deadline of June 1, is a mystery.
Second, why was the error propagated through the calculation of the extended six-month deadline? Another mystery, although presumably once the system erred in determining the initial renewal fee deadline, it then calculated six months out from that as the drop-dead date.
Third, after the Office had twice sent notices indicating incorrect dates, was it now at liberty to retroactively correct its errors? What if the patentee had relied on the Office’s representations?
Fourth, does the retraction emailed at 17:37 mean that as far as the Office is concerned, the deadline is really December 1?
This was not an isolated incident, but before discussing that, I take the opportunity to discuss something else. Since the filing date anniversary, and thus the putative deadline for paying the renewal fee, was in late May, not June 1, this meant that the Office’s March 1 letter was mailed less than three months before renewal fee deadline, in contravention of Regulation 86, which requires the notice to be sent not less than three months before the deadline. But, at least in the Office’s stated view, no biggie: the Office has long maintained that even if it doesn’t mail a notice per Reg 86, the patentee is still responsible to pay the renewal fee by the anniversary of the filing date.
I disagree with the Office’s stance in this matter. My view, based on the wording of the statute, is that if the Office doesn’t send the letter under Reg 86, then no renewal fee is due, i.e. the mailing of the Reg 86 notice is a constitutive part of the renewal process, without which no obligation to pay that renewal fee arises.
The recission of the Office’s “correction” of the renewal fee date in the present case, following two notices giving dates that were ostensibly incorrect if one ignores the requirement of Reg 86, but which were correct if one understands the mailing of the Reg 86 notice as being the act that creates the obligation to pay the renewal fee, is consistent with my view of the statutory scheme, and makes little sense under the Office’s stated “we don’t really need to send out renewal fee notices even though Reg 86 says we do” position.
Now back to our main thread: this snafu wasn’t limited to Patent D. In fact, at 13:37 I received an email informing of similar “corrections” in the dates of renewal fees due for Patents A and B. Then at 15:14 I received another email, this time with corrections for the renewal fee dates for Patents A, B and C. And then at 17:38 I received an email rescinding the email of 15:14, but which made no mention of 13:37 email. So what are the dates for renewals for patents A and B? I don’t know, and since I’m not responsible for the renewals of those patents, I don’t care. I’m sure the renewal fee company docketed those renewals in accordance with the filing date, and that if the patentee wishes to renew, the fees will be paid by the filing date anniversary.
Similarly, the emails of 15:12 and 17:37 listed patents D (the one I discussed) and E.
So in my small practice, the Office messed up in five cases. I’m sure larger offices are having a blast with this.
Oh, did I mention that the emails included the patent numbers but not my docket numbers?
And I’m not going to rehash here the absurdity of the Office requiring powers of attorney to prosecute patent applications, but not have a system for enabling correspondence addresses solely for renewal fees (which would have freed me from dealing with four of the five cases here). I discussed that matter here and here.
One final note: a colleague told me he received a similar notice, but that the email said that the actual drop-dead date was one day earlier than it should have been, e.g. that the original deadline had been June 1 but the drop-dead date was November 30, not December 1. I told him I thought that was incorrect, and that he should check the Interpretations Statute (חוק הפרשנות). My memory was correct: the statute explicitly states (in §10(b)) that for deadlines that are calculated in months (as here), the deadline is on same date of the month as the triggering event, so if the original deadline was June 1 and there was a six month extension, the extended deadline would fall on December 1.
“Uh, a slight weapons malfunction, but, uh, everything’s perfectly alright now, we’re fine, we’re all fine here, now, thank you. How are you?”
–Dan Feigelson
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