No Extension of Time Granted for Entry into PCT National Phase

In a recent case, Mindcake LLC v Registrar of Patents¹,  the Tel Aviv District Court refused the appeal from the Registrar of Patents’ decision to deny an extension of time beyond the 30-month deadline for entry into the national phase of the PCT, holding that the applicant did not meet the requisite standard of due care. To the extent that this decision indicates a new trend within the Patent Office, applicants should be aware that the relatively permissive past standards for receiving extension to national phase filing deadline may have been replaced with more stringent ones.  

In the Mindcake LLC matter, the applicant filed the application for entering the national phase of the PCT in Israel two days after the expiry of the 30-month period for such filing prescribed by the Israeli Patents Law, 5727 – 1967 (the “Patents Law” or the “Law“) and applied for two days’ extension of time. The examiner refused such extension, holding that, in failing to respond to the Israeli counsel’s request for instructions in a timely fashion, the applicant’s US counsel did not meet the standard of due care.
  
The applicant then petitioned to the Registrar of Patents to revoke the examiner’s decision. In his decision, the Registrar of Patents found that the late filing resulted not from a single error but from a series of errors, which indicated careless conduct and thus constituted failure to  meet the standard of due care. The Registrar noted that while the delay in filing was only two days (after the 30-month deadline), the duration of the delay is not important in examining the applicant’s compliance with the standard of due care.

The Registrar’s holding that the applicant did not meet the statutory standard of due care was confirmed in an appeal to the Tel Aviv District Court. The court emphasized that extending the time for entering PCT national phase is a substantive matter in that upon the lapse of time for entering the national phase – which in Israel is 30 months – the invention falls into public domain and should not be easily removed therefrom.

In accordance with section 48D(c) of the Law, the Registrar has the power to extend the time of filing the national phase application in compliance with the provisions of Article 48 of the PCT2. The Registrar’s guidelines that were laid down in Circular Letter M.N. 45 provide that such time may only be extended if the standard of due care has been met – namely, that the applicant took reasonable measures in order to submit the national phase application in Israel in due time.

The court noted the numerous errors of the applicant’s US counsel (including its initial erroneous assumption regarding the statutory time prescribed for entry into national phase and erroneous calculation of time, neither of which constituted the sole cause of the delay), specifically its failure to implement a control mechanism to follow up on the Israeli counsel’s filing, its failure to respond in a timely fashion to the Israeli counsel’s request for instructions and its belated discovery of the failure to file in Israel. 

The court emphasized that the 30-month period for entering the national phase is ample time to take action, and therefore the examination of the applicant’s compliance with the standard of due care must take into account not the two days’ delay in filing the national phase application but the entire 30-month period available to the applicant for entering the national phase. 

In the past, the Israeli Patent Office was relatively permissive in extending the 30-month term for national phase entry of a PCT application. To the extent this decision indicates a new trend within the Patent Office, it may, in the future, be more difficult to obtain such an extension.