Section 21A of the Israel Patents Law establishes a twelve-month timeframe for patent applicants to seek revival of abandoned applications. However, under Section 164, this window can be expanded upon a showing of “reasonable cause.” Two recent decisions from the Patent Office shed light on some of the circumstances that can justify revival of a patent application after an extended period of abandonment. However, due to the fact-based nature of the Patent Office’s decisions and limitations imposed on the applicants’ rights in each case, new patent applicants should remain mindful of their deadlines when seeking patent protection in Israel.
Under the Israel Patents Law, patent applications that have been abandoned can be revived under certain, limited circumstances. This is consistent with laws in the United States, Europe, and other jurisdictions around the globe.
In most cases, the Israel Patents Law requires applicants to apply for reinstatement within 12 months of the date of abandonment. However, when warranted by the facts surrounding the abandonment, this time period can be extended substantially. This is evidenced by a recent decision of the Israel Patent Office allowing for reinstatement of a patent application more than three years after being deemed abandoned.
Patent Office Approves Revival of Abandoned Application After Three Years Due to Inventors’ Health Issues
The general rule regarding revival of abandoned applications is found in Section 21A of the Patents Law. Section 21A provides that the Patent Office may reconsider a refusal to register based on abandonment if the applicant files for reconsideration within 12 months of the date of abandonment. However, under Section 164, the Patent Office can extend this time period (along with the majority of time periods prescribed by the Patents Law), if there is “reasonable cause for doing so.”
In a recent decision, a Deputy Commissioner of the Patent Office relied on Section 164 in allowing reinstatement of an application more than three years after its abandonment. The patent at issue was Application No. 194015, for a heat insulating material. Following the applicants’ failure to respond to the Patent Office’s Notice Prior to Examination, the application was deemed abandoned in May 2012. Roughly three years later, the applicants – and the inheritors of one of the inventors who had passed away – sought to have the application reinstated. As justification for the extensive period of abandonment, the applicants cited the death of one of the co-applicants as well as a serious illness suffered by another.
The Deputy Commissioner accepted the applicants’ petition for reinstatement, finding the applicants’ justification to be “reasonable cause” for extending the permissible time period under Section 21A. However, the decision carries two important caveats:
- The Deputy Commissioner’s decision to allow reinstatement after such a significant period of time was based, in part, on the absence of any third-party applicants seeking to oppose the reinstatement.
- The Deputy Commissioner also ruled that the reinstated application should not be enforceable against any third-party inventors who utilized the subject patent prior to the date of reinstatement.
Thus, while the applicants’ personal circumstances carried significant weight – enough weight, in fact, to allow for application of a statutory exception – the Patent Office’s decision still clearly placed significant emphasis on the rights of intervening applicants and inventors.
Precedent for Revival After an Extended Period of Abandonment
Interestingly, this is not the only recent example of a patent application being revived after a three-year hiatus. In 2009, an application filed by ICOS Corporation, an apparent affiliated entity of Eli Lilly and company, was deemed abandoned due to failure to respond to an Office Action. However, the facts showed that the failure was not due to a delay on the part of the applicant, but rather due to the Patent Office sending the Office Action to the wrong address. The applicant filed for reinstatement in November 2012, and in October 2013 the Patent Office approved the request for examination of the abandoned application.
However, here too, the approval was not without its limitations. Asserting that the applicant’s Agent of Record still shared partial responsibility for the extensive period of abandonment, the Deputy Commissioner granted a non-transferable license to third parties that had already utilized the patent.
Prosecuting Patent Applications to Avoid Abandonment
While the applicants in these two cases were successful in using unique circumstances to overcome the default twelve-month limitation on seeking revival abandoned applications, inventors should not rely on special exceptions. Inventors with patent applications pending before the Israel Patent Office should be mindful of the typical timeframes in patent prosecutions, and act responsively in order to avoid the risk of abandonment.