In May I wrote about the problem with the way in which the Israel PTO notified patentees of the initial renewal fees that are due within three months of the grant of the patent: by including such notice on the back of the patent certificate, which was (and still is) sent by regular Israel Post, the Office risked the patentee either not receiving the certificate and renewal fee notice (because of the unreliability of Israel Post), or the patentee ignoring the notice because of its being printed on the back of the patent certificate. I wrote then that there was an easy solution to the problem:
“[T]he Israel PTO already sends the attorney of record an email notice when the patent is granted, which currently reads, “You are informed that the [patent] application has matured into a patent and the Office’s records have been updated accordingly. The patent certificate will be generated and uploaded to the Office’s web site in the next few days.” It would take minimal effort to add a sentence to that letter that says, “In accordance with Regulation 86, you are reminded that the first renewal fee is due three months from the date of grant of the patent.” Such a reminder would likely reduce the number of patents that lapse for non-payment of the first renewal fee(s).”
Evidently someone at the Israel PTO was paying attention, as this morning I received such a notice of renewal as part of an email attachment telling me the patent had granted, which notice included the following language:
For your attention: a renewal fee must be paid within three months of the date of grant of the patent (which appears on the first page of the patent certificate). This period may only be extended for six months, subject to payment of an extension fee.
Non-payment of the renewal fee in the aforesaid time period will result in lapse of the patent without prior warning!
Additional details regarding renewal fees can be found on the back of the patent certificate.
This appears to be a new and welcome addition to the ILPTO’s standard notification of issuance of the patent. Of course, the patent certificate wasn’t included with the email, and as of this writing it still hasn’t been posted on in the database, so that’s the next thing the ILPTO can work on. Nevertheless, this is progress of a sort: it fulfills the ILPTO’s duty to remind patentees – at least those represented by counsel – of the deadline for the first renewal fee. However, as I noted in the previous blog post, I suspect that most practitioners don’t wait for the ILPTO, and simply docket the relevant dates of their own accord. I don’t know if pro se inventors – the ones most in need of such reminders – receive these kinds of notices by email.
The non-inclusion of the patent certificate led me to discover a discrepancy within the ILPTO’s system. Notice of the allowance of the patent in question published in the Patents Journal on April 1, which meant that oppositions had to be filed by July 1. Since July 1 was a Friday, when the Israel PTO is officially closed, the deadline for filing oppositions was by law extended to Sunday, July 3. This means that the patent should have granted today, July 4, and presumably that’s why the letter I received informing me of the grant of the patent was sent today and not yesterday.
But when I look at the “nesach” for this patent from the ILPTO database – sort of the official printout of the status of the patent – it shows the grant date as July 2, not July 4, thus foreshortening the deadline to pay the first renewal fee by two days. I suspect that the ILPTO’s systems that calculate deadlines have been programmed accordingly, but clearly this is a glitch in the system. I’m curious what the patent certificate itself will say regarding the grant date. To be safe I docketed for October 2, but the discrepancy could become an issue if someone goes to pay their renewal fee on October 3.
It’s also interesting that the current Patents Journal was published on July 1, which was a Friday (as was April 1 of this year), when the ILPTO is officially closed. I know that the USPTO publishes its Gazette every Tuesday, regardless of the date – my grandfather had a patent issued by the USPTO on December 25, when the USPTO was clearly closed, so in that respect publication of the Israel Patents Journal on a day when the ILPTO is closed isn’t unusual. But what will happen when the first of the Gregorian month falls on Shabbat (Saturday)? Publication on that date would be legally and politically problematic. We’ll see what happens on October 1, 2022. (January 1, 2022 was also Saturday, but because of the change in the electronic publication format of the Patents Journal, all publications that would have taken place then were pushed off until February 1, 2022.)