The Tel Aviv District Court accepted an appeal by Cubist Pharmaceuticals Inc. against the Registrar's decision to reject its application for an extension of time for filing an application for patent term extension (PTE) and extended the term for filing said application for patent term extension.

Cubist Pharmaceuticals Inc. vs. The Registrar of Patents, Designs and Trade Marks

The Tel Aviv District Court (Judge Dotan) accepted an appeal filed by Cubist against the Registrar's decision to reject its application for an extension of time for filing an application for patent term extension (PTE) and extended the term for filing said application for patent term extension.

In her decision, Judge Dotan reviewed the circumstances of the specific case in view of the four criteria established in previous cases in respect of applications for extension of time in PTE applications. These are

1. The length of the delay
2. The reason for the delay
3. The remaining period of validity of the basic patent
4. The public interest

In the present case, the delay was about 11 months long and was the result of a problem in the handling the marketing approval issued in Israel. Judge Dotan's conclusion was that an error in good faith, even if caused as a result of negligence, should be considered as reasonable cause,which justifies the examination of the application for patent term extension.

The basic patent was about to expire. Judge Dotan decided that the fact that, regretfully, the marketing approval was obtained about a year before the expiry date of the basic patent, cannot be used against the patentee, if the practical result is that it shall not be able to enjoy the fruits of its investments.

When considering the interest of the public, Judge Dotan concluded that the fact that no third party requested to join the proceedings, although the case was extensively published in local newspapers, indicates that the risk of possible damage to third parties is an indefinite and a theoretical one. Accordingly, in the competition between the Appellant's rights and the damage it will suffer if its application is rejected against the public interest, Cubist's rights and interests should prevail.

Cubist was represented by Ehud Porat, of Porat-Sagiv-Shlomi and by Luzzatto & Luzzatto.