I’ve written in the past about petitions to revive Israel patents (or patent applications) that went abandoned for failure to take some action, most often failure to pay a renewal fee.
The most common such situation has been failure to pay the first renewal fee, which is due within three months for the grant of the patent. Whereas the ILPTO normally sends email notices before the deadline for payment of the renewal fees due at 6, 10, 14 and 18 years from filing, in the past it did not send an explicit notice reminding patentees of the fee due within three months of grant. Rather, until relatively recently, the practice of the Israel PTO was to include such notice on the back of the printed copy of the patent certificate, which was sent by snail mail.
This procedure was rife with opportunities for screw-ups: sometimes the certificate wouldn’t arrive (not a surprise in view of the continually declining state of Israel Post); or it would sent to the wrong address; or if it reach the right person, the notice on the back of the certificate would be overlooked. And this explains why it was the first renewal fee that was most commonly missed. (At the urging of yours truly and others, the ILPTO now includes a notice about this first renewal fee in the cover letter that is sent by email with the copy of the patent certificate.)
I’ve also written in the past about the perils of acting pro se (in patents or in anything else), especially when you’re unfamiliar with the relevant statute and regulations.
Enter one Mr. Ron David, who owns an auto body shop where he installs roof racks on cars. Working with a colleague, he developed a kit for mounting the roof rack, and sought to patent this. He hired local counsel to file an Israel patent application (no. 240582; a PCT application was also filed), and prosecuted the application through to allowance.
At that point, apparently in a cost-saving measure, he fired local counsel. And then didn’t pay the first renewal fee. Oops. He only found about the error a few years later, when his colleague told him that competitors were making knock-offs and the colleague found that the patent was no longer in force. So, still acting pro se, Mr. David tried to revive the patent. After several procedural mis-steps, he eventually got the Israel PTO to consider his request, and even got to an oral hearing (this time with re-hired local counsel) in early 2023.
If you recall the movie “The Blues Brothers”, there’s a classic scene (one of many in that film) in which Jake Blues, played by John Belushi, explains to his jilted fiancé (played by Carrie Fisher), who has a loaded machine gun pointed at him, why he didn’t show up for the wedding that her family had gone to much trouble to organize:
“I ran outta gas. I had a flat tire. I didn't have enough money for cab fare. My tux didn't come back from the cleaners. An old friend came in from outta town. Someone stole my car. There was an earthquake, a terrible flood, locusts. It wasn't my fault!! I swear to God!!”
I don’t know if Mr. David has seen this film, but his cumulative explanations to the ILPTO and (then to the district court) about why he didn’t pay the renewal fee on time were somewhat reminiscent of this scene. He said that the patent certificate – the one with the renewal reminder printed on the back where normal people don’t notice it – was sent not to him but to his colleague, who was not responsible for the Israel patent (but who’s address was the one on file with the ILPTO after Mr. David fired his patent counsel, and who was responsible for the patents outside of Israel, and who as noted above was the one who first informed Mr. David of the possible infringement and the lapse of the patent), who didn’t forward the document to Mr. David. And he thought that his colleague would pay the fee (even though – see a few lines above – he also said his colleague wasn’t responsible for the Israel patent). And, being familiar with trademark practice, he assumed that patent renewals were like trademark renewals, once every ten years, so how was he supposed to know that a renewal fee was due so soon after the grant of the patent? Plus, for two years during the corona virus scare, his business wasn’t active. And who would pay all this money to draft, file and prosecute a patent, and then let the thing go abandoned?
Sections 59 and 60 of the statute says that a patent can be revived, provided the Commissioner is convinced that (a) the lapse happened for “reasonable causes”, (b) the patentee didn’t want the patent to lapse, and (c) the reinstatement request was filed as soon as possible after learning of the lapse. Needless to say, on the Jake Blues-type pleadings, the Deputy Commissioner wasn’t convinced that the circumstances surrounding the lapse per se were reasonable.
Here I’ll interject one point. The same regulations that establish the renewal fee dates and amounts also clearly establish that the ILPTO has to send out notices to patentees before renewal fees are due. My reading of those regs is that if the Office doesn’t send such a notice, no renewal fee is due and the patent doesn’t lapse. The ILPTO takes a contrary view and has, through its own case law, conveniently excused itself from the latter requirement, asserting that although it does in fact normally send out such notices, if the Office fails to send out a notice, the responsibility for renewals is ultimately on the patentee, regardless of the ILPTO’s behavior.
Mr. David appealed to the District Court. The ILPTO argued that, given the conflicting versions of facts presented by Mr. David, it was not possible to determine that the cause of the lapse was reasonable (and, as noted in the Deputy Commissioner’s decision of March 2023, presenting conflicting arguments showed a lack of good faith).
Reading through the materials in the file, it’s clear that this was a case of multiple factors leading to the initial non-payment, and that by acting pro se, Mr. David not only caused the initial screw-up (because competent local counsel would have told him there’s a first renewal fee to pay) but messed up his own arguments in the revival proceedings. On the other hand, the ILPTO’s take seemed rather harsh and formalistic: it’s clear from reading the materials that, indeed, Mr. David didn’t know there was a fee to pay, and had no desire for his patent to lapse. Why WOULD a small business owner prosecute a patent application to grant and then not pay the first renewal fee? The fact that after learning of the lapse occurred, he did a bad job of lawyering for himself (viz. provided conflicting explanations for the non-payment), doesn’t derogate from the conditions of section 60 having been met.
Which is probably why, at the oral hearing in the appeal in September 2023, the District Court judge strongly suggested to the ILPTO that it agree to reinstate the patent, which it did, with caveats that it was doing so only in this particular case, and that really Mr. David had a responsibility to track the status of his patent.
All’s well that ends well, I suppose. It’s worth mentioning that at the court hearing, counsel for the Office argued that upon lapse, the invention became public domain, and by reinstating the patent, “the public” would be prejudiced. That’s an argument that I’ve heard multiple times over the years, and I’ve never bought it. The statute establishes the conditions for reinstatement; it’s not for the ILPTO to add further, extraneous consideration to the mix. Moreover, the statute itself in section 63 includes a carve-out for parties that rely on the lapse to begin practicing the invention or who have made substantive preparations to do so: they can continue to practice the invention even after reinstatement. It seems that paternalism remains part of the mindset of some in the ILPTO.