(f) In the Registrar's notice of its intention to grant an extension order under subsections (c) or (e)(1) or (3), the Registrar shall indicate the period during which the order will remain in effect under the provisions of section 64I(a), on the basis of the information that was before him, ... [emphases added]
As can be seen, the law allows the Registrar to publish a notice of the intention to grant an extension order, subject to the issuance of extension orders abroad. The legislature also imposed a duty to report on the issuance of orders there or the rejection of applications filed abroad. And when an extension order is issued in Israel, it "will come into effect at the end of the period of the basic patent... " (section 64H(b) of the Law).
- And here we come to the sections that are at the center of the present litigation.
The Patents Law regulates the expiration of the validity of extension orders, to the extent that they are granted. Section 64B, entitled "Expiration of an Extension Order and of a Notice of Intention to Grant an Extension Order", states that "an extension order or notice of an intention to grant an extension order shall expire in any of the following" - and the first case mentioned there concerns "on the day of the end of the period as stated in section 64T, subject to the provisions of section 64J".
Section 64T establishes the "period of validity of the extension order". It is clear that when the period of the extension order expires, it will expire. However, it can also expire in other cases, as stated in section 64J , which states as follows:
64J. Limitation of the Period
Notwithstanding the provisions of Section 64T -
(1)...
...
(3) An extension order or notice of an intention to grant an extension order under section 64E(c) or (e)(3) shall expire no later than the first date on which, in one of the recognized countries in which a marketing permit was granted, an order to extend a reference patent has expired or any reference patent has been revoked; In this regard, "expiration" - including following the shortening, cancellation or deletion of an order to extend a reference patent or cancel a reference patent, and with the exception of the replacement of a temporary order with an order that is not a temporary order [emphases added].
- After we have discussed the various legislative provisions, the time has come Examine the The background to the controversy, andThe Decision Honorable The Deputy Registrar of Patents, who is the main protagonist of this appeal.
The decision of the Honorable Deputy Registrar and its background
- As stated, the appellant's basic patent registered in Israel is supposed to remain in effect until December 8,2029 (subject to payment of renewal fees). The appellant updated regarding the granting of extension orders in various countries for the European reference patent EP2376535' (Hereinafter: Reference Patent 535).
- On September 28,2017, the appellant filed an application to extend the validity of the patent in Israel. At the time of filing the application, the drug was granted marketing permits in Europe and the United States; an application to extend the period of protection in the United States was pending, and applications for an extension of the period of protection in Europe had not yet been filed. In these circumstances, the Authority published its intention to issue an extension order In accordance with Section 64E(e)(1) of the Law.
Subsequently, the appellant reported the issuance of orders to extend the validity of the reference patent in France and Spain. On August 19,2020, an order was issued to extend the validity of the reference patent in the United States for a period of 161 days (until May 18,2030).