In past postings, we discussed bilateral Patent Prosecution Highway (PPH) programs allowing an applicant to fast track an application in one jurisdiction based on a favorable finding of the claims in a corresponding application in another jurisdiction. For many applicants, the PPH is an effective way to reduce examination time and patent fees.
On August 1, 2013, a unilateral PCT-PPH pilot program commenced within the Israel Patent Office (ILPO). Under this program, an applicant can fast track his/her national stage application in Israel based on 1) a positive written opinion from either the International Searching Authority or the International Preliminary Examination Authority, or 2) a favorable International Preliminary Report on Patentability, issued by the ILPO.
Our associates in Israel, Reinhold Cohn & Partners, reported on a recent Israeli court decision pertaining to a missed national stage filing deadline. In the case of Mindcake LLC vs. Registrar of Patents, the Tel Aviv District Court refused the appeal from the Registrar’s decision to deny late national stage entry into Israel, ruling that the applicant did not meet the requisite standard of due care. Generally speaking, many patent offices will allow a missed filing deadline if the applicant can show that the failure to timely file occurred in spite of all due care being exercised by the applicant and its legal counsel.
Without going into the details of this particular case, the court found that by failing to respond to the Israeli counsel’s request for instructions, the US counsel had not met the requisite due care standard. And even though the application missed the 30-month deadline by merely 2 days, the court ruled that the length of the delay was irrelevant in their analysis. As a result, the PCT application was denied entry into Israel.
This case further stresses the importance of monitoring and meeting your patent deadlines. We speak with applicants all the time who underestimate the consequences of not filing in time. Actions, such as publishing your invention in a trade journal or filing a provision application, can have serious international ramifications. We hear from many inventors who say they’re delaying filing until they are “ready” to proceed. Often times, the clock is already ticking and it doesn’t stop just because the inventor’s not ready.
Want more information on the national/regional stage filing deadlines for PCT applications? Download a copy of our PCT national phase guide which provides specific filing details for 45 popular jurisdictions.