Israel Patent Office Denies Authority to Reinstate a Lapsed Design After Grace Period, Despite Proof of Timely Payment

Pigeon post

Gabi Bakshi has two registered designs that have lapsed. Design Number IL 40188 is for a dove shaped sculpture. It was registered in January 2005 and renewed in November 2009. It then lapsed because the second renewal wasn’t timely paid. The six month grace period ended on 17 July 2015. Gabi Bakshi also registered Israel Design No. 48297 which is for a variant of 40188. This variant was filed in September 2009 and registered in November 2009. It should have been renewed on 17 January 2010 together with the 40188 design since, as a variant design it was not entitled to longer protection than the parent.

On 28 December 2015, Mr Bakshi requested reinstatement of both designs. He claimed to have paid the renewals on 16 November 2014 and to have posted the renewal receipts for the second renewal to the Israel Patent and Trademark Office by registered mail but it was never received and so the design lapsed.  The appended receipt shows that  the 40188 design was renewed but there is no evidence that the 48297 variant was renewed. At a hearing, Mr Bakshi renounced the 48297 variant but alleged that he believed that the 40188 design was renewed in a timely manner.

Ruling

Section 33(4) of the Design Ordinance requires requesting an extension within five years and the regulations grant a six month grace period. Citing 30704 and 3705 Moshe Harel and 560/92 Klil Industries, the Deputy Commissioner, Ms Jacqueline Bracha considers that unlike lapsed patents, the Commissioner does not have the authority to reinstate a lapsed design after the six months grace period has passed.  In this instance, the fact that the Design registrant had paid the renewal fee and sent it to the patent office does not help as it was not received.

Based on the decision concerning design numbers 35866 and 35867 to Eli Yashar, where a request for extensions is made, the Commissioner can extend the period of a design if two conditions are fulfilled. One has to both timely request an extension and to pay the fee.  Without requesting an extension, paying the fee is not enough.

Consequently the request for renewal was not granted. Mr Bakshi may appeal the decision to the District Court which can, if it sees fit, order the extension to be entered into the register.

COMMENT

I suspect that Mr Bakshi may be entitled to copyright protection and to protection under the Law of Unjust Enrichment as per the A.Sh.I.R. decision, but haven’t seen the designs.

I wonder if Pigeon Post might have been more reliable than registered mail?

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