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Mental Illness – Acceptable Reason for Extension

Yael Saidian

Yael Saidian

Registered Israeli patent attorney

Mental illness as an acceptable reason for not responding to a Notice from the IL Patent Office

A discussion of two decisions issued by the Israeli Patent Office (ILPO) regarding petitions for extension.  Both decisions relate to the mental illness of the applicant which was the reason for not responding to the Patent Office. One petition was granted, the other denied.

When I reviewed this topic, it took me a while to make my mind whether a mental illness can serve as a reasonable justification for neglecting a patent application.  Many questions arise, the main amongst all:

 ‘Is it fair to prevent from a healthy person an extension of several days and, on the other hand, grant a mentally ill person several years of extension on similar circumstances?’

 The current approach of the ILPO regarding extensions is strict. Maximum four months of extension for responding to an Office Action and up to 12 months to revive an erroneously abandoned patent application. In most of the approved petitions, there was a combination of insignificant delay and a true intent to maintain the application alive.  An extension of one year is rare as this red-head Bornean Orangutan which is only able to reproduce every six to eight years…

On June 2017, the ILPO decision in respect of Patent Application No. 190913 caught my attention.  This decision granted almost six years (!) of extension to a person based on medical documentation evidencing mental instability.

As stated above, such a grace period, of several years, is extremely rare in Israel. However, in view of the unfortunate circumstances it seemed quite fair back then. Nonetheless, the significant funds (about USD 3,500) paid by the applicant to the ILPO for only the extension, made me feel terribly uneasy.

But recently, on May 2019, in connection with revival of IL 153040, 152812 and 151537 similar circumstances led to a complete opposite decision. No extension at all, although the original grace period requested was of “only” four years.

It is important to note that the May 2019 decision has been reached based upon four different prior petitions filed by the applicant between 2013- 2018, all were denied due to lack of supporting documentation. The essential problem was that the applicant did not seek professional assistance until the fifth petition which was lodged in 2019.

Comparison insights:

  • Vulnerable people in society cannot afford a good practitioner.
  • Even the best practitioner cannot advocate a messy conduct of the applicant.
  • Mental illness can serve as a reasonable cause for extension.

So, is mental health a just cause for neglecting patent applications or non-payment of renewal fees? Yes and No. 

Yes, because the ILPO acknowledged it as a reasonable justification for extension and No, because additional requirements must be met.  

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