In light of these developments, the Patent Office published (on October 29,2020) a supplementary notice of its intention to issue an extension order for the patent in accordance with section 64E(e)(3) of the Law. When no objections were filed, an order was issued (on February 14,2021) to extend the validity of the patent. In accordance with the order, the period during which the patent will be protected has been extended until May 18,2030 (subject to payment of fees), i.e., to 161 days. The validity of the order is future, and it will take effect after the basic patent in Israel expires.
12. The appellant informed the Patent Authority that the reference patent 535 was cancelled on December 20,2022, and that as a result, the extension orders issued in Europe were cancelled. In the notice, the appellant noted that there is a possibility that before the basic patent expires in Israel, extension orders will be issued in Europe in relation to the material claimed in the basic patent. Therefore, the patent owner stated in its notice that it retains its rights in the matter, including filing any appropriate application before the expiration of the basic patent in Israel.
Against this background, the Deputy Commissioner of Examiners at the Authority (Ms. Orit Regev) announced (on February 22,2023) that in accordance with the provisions of sections 64B(1) and 64J(3) of the Law the extension order granted in Israel is "hereby cancelled". Hence, the patent will again expire on December 8,2029.
- The appellant did not accept thedecision and filed an objection to it. This was first clarified before the Honorable Registrar (Ofir Alon) and interpreted, before the Honorable Deputy Registrar (Jacqueline Bracha), whose decision rejecting it was given on December 21,2023 (Appendix 2 to the notice of appeal).
The Honorable Deputy Registrar noted that the language of the law "which explicitly states that an extension order will expire on the day that a reference patent or an order to extend a reference patent in the recognized countries expires" (paragraph 19 of the decision).