Design (Patent) Registration

Local Newbie

If you are here in Israel and are not familiar with the concept of registered designs (design patents), please click here, or scroll down, for some basic information

Procedure

It is advisable in Israel (although not mandatory) to submit a full set of drawings, with the following seven (7) views: front, rear, left side, right side, top, bottom, perspective.

All views must be to the same drawing scale.

All drawings must be high quality and high resolution, either photographs, drawings, or computer simulations, to allow the Examiner to review all details of the drawings.

All views must be provided in JPG files, preferably A4 size, one view per page, vertical (portrait) orientation, no higher than 300 dpi and no more than 4Mb per view.

If the drawings are not submitted in A4 as above, then each page must contain only one drawing and must be no less than 100mm tall and 100mm wide, and no more than 221 mm tall and 175 mm wide. However, due to some computer issues in the online filing system, it is preferable to submit in vertical A4 format, as indicated above.

Each page must be numbered and labeled, e.g. “1 out of 7    FRONT VIEW”

If priority is claimed, then we need the priority documents, certified by the issuing design registry. If they are not in Hebrew or English, then we also need a notarized translation of the priority documents into one of these languages. However, all of the priority documents can be sent to us as color scans via email – we do not need the originals. A priority claim can be made up to 2 months after the filing date in Israel, and the priority documents can be filed up to 3 months after the filing date in Israel.

We also need a POA from the applicant (owner) (simply signed and scan returned by email).

We also need the following information:

–     Name and address of owner of design (applicant), and description of type of entity (e.g.: UK company);

–     Confirmation that the product featured in the design is not yet on the market and has not yet been disclosed anywhere, or else the date it was first disclosed/published anywhere (which must not be earlier than 12 months prior to the filing/priority date);

–     Title of the design;

–     Locarno class and sub-class;

–     If the client would like to defer publication of the design (for up to 6 months);

–     If the applicant is the inventor, or the owner by law

(e.g. an employer) or an assignee of rights;

We must notify the Israel Designs Office as to whether the applicant is the inventor, or the owner by law (e.g. an employer) or an assignee of rights. But we do not have to identify the inventors or file any documents by them.

Costs

Costs are comprised of the official fees, paid to the Registrar, and our professional fee.

Official fees vary, depending on the circumstances. The basic official fee for a single design is currently NIS 398 (c. €100).

Our own fees must be added to the above costs, and will depend on the other filing parameters. Please send us an email and we will be happy to give you a quote.

After the registration process has been completed, there are no annual maintenance fees – just renewal fees every 5 years – see next column "Time" for details.

Time

In a smooth case, a design can issue in 5-8 months.

An application will first undergo preliminary examination. If there are any problems with the classification, title, drawings or such like, these will usually be caught in the preliminary examination, and an Office Action (OA) will issue – often very soon after filing.

After technical issues are resolved, the design will be placed in the queue for substantive examination.

Waiting times are often in the region of 4-8 months, depending on the circumstances.

If OAs issue, we will always have the opportunity to respond, and try to overcome them.

A registered design in Israel issues for an initial period ending 5 years from the filing date. The design can be renewed up to 4 times, each time for an additional 5 year term, up to a maximum total term of 25 years from filing.

Enforcement

If you have registered your design in Israel (and, in some cases, even if you haven't registered the design), the law entitles you to prevent anyone else from using an identical or substantially similar design on the same type of product, in Israel.

The most common relief which is sought in legal proceedings for infringement of a registered design are an injunction, and an award of damages.

The purpose of an injunction is to stop the infringer from using your design without your permission.

The purpose of an award of damages is to compensate you for the commercial damage you have incurred as a result of the infringement, or to make sure that the infringer does not benefit from the infringement. In some cases, it is possible to receive damages (up to NIS 100,000 [around 26,000 Euros] even without needing to prove that you have incurred commercial damage, or that the infringer has profited from the infringement. Liquidated Damages, as these damages are known, can also serve as a useful deterrent against small-time infringers.

If the court rules in yor favor, then it will usually also award costs against the infringer. It would be very unusual for such an award to cover all of your legal fees, but it may amount to a useful contribution, depending on the circumstances.

What is a Registered Design?

A registered design is nowadays known in Hebrew as "itzuv", after a new law was enacted in 2017. Previously, the name had been "midgam". In other countries, this type of intellectual property may be knows as a "registered design" or a "design patent".

A "design" is precisely that. It is a legal right which protects decorative (ornamental) features of a product, or part of a product (e.g. color, shape, decoration, texture, etc.).

The features must be purely decorative – they cannot perform any functional role in the product (a matter addressed by (utility) patents).

So, by way of example, the pattern which is printed on a piece of clothing, or the particular shape in which a diamond is cut, could both be registered as designs. In both cases, these are ornamental features. 

In order to be eligible for registration in Israel, a design must be novel and unique. These are complex legal concepts which are not always easy to define in black and white. But, in gross terms, it means that the design cannot be identical or substantially similar to any earlier published designs or products. So, if you want to protect a decorative feature of your product, you need to file for protection before the product is released. For publications by the owner of the design, there is a grace period, currently of 12 months – please call us for more information.

Contrary to the popular urban myth, there is no rule of thumb whereby 2 or 3 differences to an earlier design will render the later design "unique", or non-infringing. In fact, a flexible test is applied, based on "overall impression". This will also be influenced, for example, by how "crowded" the field is. In a field where there are large numbers of designs, where each one differs from the others only in small details, then the requirement for "uniqueness" will be relaxed. In contrast, a brand new design, unlike anything that came before, will enjoy broader protection.

Now you know what a registered design is, and what it can do for you, please scroll back to the top of the page, for details on procedures, costs and times.

Designs Abroad

Registered designs are territorial rights. That means that your design needs to be registered in each country where you want it to be protected.

Unfortunately, there is no such thing as a worldwide design registration that is automatically valid throughout the world (you may have come across the term "International Design System", but that is something different, as we will explain below).

The good news is that Reif & Reif specializes in design registration abroad as well, so we can apply to register your design wherever you like, whether it be in a most "basic" package of territories (EU, UK, USA, China) or anywhere else in the world.

There are two tracks for registering your design abroad. One is a "National Track", where we apply for registration directly in the countries that you select. The other is the "Hague Track", sometimes known as the "Hague International Design System", or "WIPO". In the Hague Track, you still need to select the countries where your design will be filed, but the filing procedure itself is a little different. There are other differences as well – please give us a call and we will be happy to provide more details.