Legislation by Interpretation – Israel Commissioner of Patents Considers Internet Publication Abroad as Published in Israel

Challenging an Examiner’s decision based on Patent Office Circular M.N. 69, Sertic Vanja filed an appeal arguing that Israel Design Number 45452 was a novel design in Israel, and previous Internet Publication in a foreign patent office database was not novelty destroying, and could not be considered as exhibition in Israel unless some evidence of someone in Israel actually viewing the design prior to a local design application being filed is furnished.

The Commissioner of Patents, Assa Kling followed the guidelines of judicial interpretation laid out by former Israel Supreme Court President Aharon Barak, and maintained that on a case-by-case basis he was entitled to interpret the meaning of local publication to include something on the Internet. The appeal was dismissed.    

BACKGROUND

In Israel, Designs are regulated by the Design Ordinance of 1926, dating from the British Mandate. It seems that with existential threats to our existence and belligerent neighbors, and with deep internal religious, philosophical, ethnic and cultural divides,  the Israel Government gives less priority to Israel Intellectual Property legislation than what I, as a practitioner, would like. 

One interesting anachronism of this state of affairs is that absolute local novelty is required to register a design and to enjoy a limited monopoly of up to 14 years for the registered design.  Thus not unlike the state of affairs in the Principality of Venice in the 13th Century, the first importer or manufacturer of a good in Israel can, by prior registration of something well-known abroad, prevent others from importing or selling similar items.

In an attempt to bring the Israel Design legislation into the 21st century, in Circular M.N. 69, that issued back in December 2008, the previous Commissioner Dr Meir Noam ruled that internet publication in a patent office database abroad that was accessible in Israel, was sufficient to qualify as a previous publication that bars registration. I was critical of that decision, see here , arguing that this was primary legislation requiring an act of the Knesset and was well beyond the legal competence of a commissioner of patents.

COMMENTS

Commissioner Kling’s ruling is reasonable, but so is the position of the applicant. If this is appealed, it could go either way.

There is a second problem. It would appear from this case going to appeal that following circular M.N. 69, the examiners in the Design Department are not merely comparing design applications with earlier designs registered in Israel, but are searching some foreign design databases. The USPTO examiners don’t do that. In Europe there is no examination. The courts are not bound by the commissioner’s decision to register or not, since following A.Sh.I.R., there are de facto none-registered design rights in Israel, at least in cases of inequitable behavior.  

This case is fascinating since no one argues that laws need to be interpreted in light of changing circumstances. Certainly that is the Common Law tradition that underpins the British Design Ordinance, and is the nature of Israeli Law as expounded by Barak, the leading philosopher thereof. It is also true of Jewish Law, known as Hallacha, from the verb meaning to go, indicating its dynamic nature.

The analogy with Hallacha underlines the problem. If Jewish law had not adapted, the religion would not have survived over the millenia. Slavery and bigamy, sacrifices, most of the laws of ritual impurity (taboo, the monarchy, and other laws, both positive and negative, remain on the statute books, but are of academic interest (Talmud Torah) only.  However, on one hand, the so-called ultra-Orthodox are unable to come to terms with radically new historic realities such as an independent Jewish State for the first time in two millenia and as a group, are dysfunctional members of the wider community, not working, not serving in the army, and not prepared to serve as government ministers, shirking responsibility and unable to adapt. On the other hand, the early leaders of Reform Judaism converted to Christianity and it is safe to say that Reform and Liberal streams are unable to sustain themselves in the diaspora and neither have significant followings in Israel. 

Nevertheless, the courts are out of sync with the patent office in this regard. As illustrated in the Karshi decision, the Jerusalem District Court Judge Shapira who is slated to be the next State Comptroller and Ombudsman, but may hear this case if it is appealed, considers that originating a design concept creates rights even where no design is registered.  

It is not clear to me if the previous publication in this case was publication by the applicant or by another. The decision does not make this clear. From the letter of the ordinance, it does not matter – there is no publication in Israel and the article is in the public domain.  Judicial interpretation regarding the purpose of the Law is more complicated. – Judge Shapira would presumably hold that failure to file a design application in Israel is immaterial – there are constitutional creator’s rights. The Commissioner, meanwhile, would argue that the design is in the public domain.  The last time the Israel Supreme Court entered the fray, in A.Sh.I.R.,  it upheld non-registered design rights and undermined the entire system.

This is the problem with judicial interpretation of the purpose of a law where there is no commonly agreed philosophical underpinning:

  1. Is design registration a necessary act to create rights in a creation (as is the case of patents and in US, a design is a type of patent), or
  2. Is design registration simply a way of clarifying who created, as with copyright registration or in Europe, where the act of creation creates unregistered design rights for the short-term, and registration increases this period but there are natural rights of the creator?
  3. Do first to import or first to teach an idea locally have design rights in Israel? This is what the archaic law suggests and is what both the present commissioner and his predecessor reject as not tenable in the modern world, but this is also what wannabee entrepreneurs that come to me for consultancy seem to believe they are entitled to, and also seems to be what the courts do!

Sertic Vanja appears to be an inventor of illuminated display boards. let’s assume that the design in question relates to an original display board that he created but failed to register in Israel within the 6 month Paris Convention period, or filed in US or Europe after first displaying there, taking advantage of grace periods not available in Israel.   The patent office will not register the design as it is previously published abroad in a patent office database, internet searchable, and therefore in the public domain. Meanwhile, a prominent judge in the Jerusalem District Court that applicant could appeal to doesn’t believe that designs need to be registered at all, and on being shown proof that the applicant created a design concept, would provide broad sweeping protection, regardless of whether the design were protected or not!  

There is an urgent need for the Knesset to pass a new Design Law.  Judicial interpretation by functionaries on matters of legal principle is unsatisfactory.

The case: Appeal against rejection of Design Application Number 45452 to Sertic Vanja, issued by Commissioner Assa Kling on 28 February 2012.

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