In a December Circular (M. N. 69), the Israel Commissioner of Patents and Trademarks, Dr. Meir Noam, has ruled that that the legal requirement of novelty in designs registrations in Israel, as stated in Rule 30 of the Patent and Trademark Ordinance, now includes anything published on the Internet and accessible in Israel.
This ruling stands in direct contrast to the ordinance itself, since until now, local novelty in Israel was required. Essentially Dr. Noam has effectively changed that to absolute novelty, worldwide. The idea, per se. is not a bad one. It may prevent a third party from registering someone elses design. It also means, however, that if a design application was first submitted in Europe or the US, and published, it is no longer registerable in Israel, whereas until 24 December 2008, it was registerable.
Dr. Noam justified his stance by relating to case-law concerning the question of the territorial legitimacy of Israeli Courts to rule on Internet crimes, which though fascinating in and of itself, is of limited relevance to the issue in question.
Not only does the ruling lack a logical basis, but is controversial, since arguably this goes beyond interpretation and is essentially substantive legislation by a commissioner of patents who is essentially a functionary.
There is a substantive problem as well. Both the US and Europe have grace periods for registering designs. So I believe, does Japan. Despite the Israel Law being relatively relaxed in that it only requires local novelty, since a publication of a prior filing in another jurisdiction will now be considered as publication, in some instances, it will be more difficult to get a design in Israel now than in the major jurisdictions.
In my opinion, the job description of the Commissioner of Patents does not provide empowerment to change substantive law in a Circular to patent practitioners. Regulations and ordinances should be amended by the Minister of Justice. It is indeed the case that the Minister of Justice does not generally concern himself with Intellectual Property, but so what?
There is now a new Copyright Law, a couple of years ago there was an amendment to the Patent Law concerning pharmaceutical patent term extensions, and there was a first reading in the Knesset of a further amendment to allow publication of applications after 18 months. There have been attempts to legislate an Israel Design Law for some time, starting with an earlier Commissioner, Adv. Yoel Tzur (not to be confused with Maoz Tzur or Nurit Maoz ;-) ) back around 1980. This never even got as far as a first reading in the Knesset though.
It is not the first time that Noam has apparently over-reached his authority. He did something very similar regarding omnibus claims, deciding a couple of month back that this type of claim is suddenly incompatible with the Law, despite it having been compatible from 1967 to 2008, including the first five years of Dr. Noam’s serving as registrar. Dr. Noam has also decided to legislate what training trainee patent attorneys require, over and above the law, and with dubious authority to do so.
nice post. i wouldn’t be surprised if there will be quite a bit of dissent to this drastic ruling of the registrar.
[...] Dr. Noam, extended this to include that published on the Internet and available from Israel. See http://blog.ipfactor.co.il/2008/12/28/new-israel-design-regulations/. At the time of the infringement, I would argue that the Law, though hopelessly out of date, [...]
[...] Circular was ultra vires and required Knesset legislation. I stand by that position. See New Israel Design Regulations which reports on Commissioner Circular M.N. [...]