The Blessed Software Glitch: When A Deadline May Not Actually Be – A Deadline

If you have ever accompanied the prosecution of a patent application in Israel, you may be somewhat familiar with what happens when you miss a deadline for responding to an office action (OA).
Israel Intellectual Property

If you have ever accompanied the prosecution of a patent application in Israel, you may be somewhat familiar with what happens when you miss a deadline for responding to an office action (OA). If this has never happened to you, here's a short recap:

Issuance of a Notice Prior to Refusal

Close to the latest date* by which a response was to have been filed (on the assumption that such late response would have included a retroactive request for an extension), the Israel Patent Office (the "Office") issues a "PK 10" notice, informally referred to as a Notice Prior to Refusal (NPR).

*The above-mentioned "latest date" is based on the facility to obtain an extension for responding to the specific OA, as follows:

  1. For responding to a Notice Prior to Examination – up to 6 months;
  2. For responding to an Office Action during examination – up to 4 months, but no more than a total of 12 months (not including the extensions for responding to a Notice Prior to Examination).

Time Limit & Consequences

The NPR sets a deadline of 30 days for response to the OA, as from the date of issuance of the NPR.

Failure to respond to the OA within the above 30 day time limit will lead to issuance of a Notice of Refusal of the application.

The Blessed Software Glitch

This all seems pretty straightforward. However, as you may guess, it's not, for two reasons, namely, a patent application cannot, by law, be refused, unless an NPR is first issued, giving 30 days to set things straight, as it were; and, while that seems pretty straightforward, an NPR is often not issued on time. And I'm not talking about a few days, but sometimes it is delayed by weeks or even months, due to software glitches.

I hear you asking that if a response to an Office Action is required within specific time limits (see above), then if the Office is delayed in issuing an NPR at any time that is later than one month prior to expiry of the maximum extended term available, this runs counter to its own mandatory time limits.

The (Unpredictable) 30 Day Anomaly

That's true. However, as an application cannot be refused within the above 30 day set by the issuance of an NPR, applicants often benefit from this anomaly, sometimes gaining many additional months to respond (albeit with payment of additional extension fees for the additional months).

You might think that the Office should be aware of this situation, and work to correct it. That's true, I'm sure they are well aware of this situation. But the only way to change it is to change the system radically by doing away with the NPR and the 30 day warning; and I have heard of no plans to make such changes any time soon.

As a word of warning, while such delays can be welcome gifts, they cannot be predicted in advance, and certainly should not be relied upon.

Finally, there really are no strings attached, so the appropriate response when you or your client receives such a gift, is simply to say "thank you".

And thank you for your attention. If you have any questions about what I have written, please feel free to write to me.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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