When a Non Reinstatable Lapsed Design is Reinstated

scribal errorThis decision is in response to a request to correct a faulty reporting that a registered design had lapsed due to a computer mistake at the Patent Office. The problem is that the Commissioner has no authority to reinstate lapsed designs. The Deputy Commissioner overcame this by classifying the date in the renewal certificate and in the Official Design Journal as scribal errors under Section 42 of the Design Ordinance 1924.

Design Number 47653 was registered as a variant of design 40526 in accordance with Section 31 of the Design Ordinance and Former Commissioner Michael Ofir’s ruling concerning Israel Design Numbers 22424, 22433, 22783, 23767 to Klil Industries ltd et al., 1997.

The design in question was registered on 24 May 2010, whereas the main design, 40526, was submitted back in 30 March 2005. In accordance with Section 30(5) of the Ordinance, the registration date is the date of submission and so both designs were due for renewal on 30 March 2015.

The Applicant paid the renewals on time, on 2 March 2015, and received a certificate of renewal. However, due to a computer bug at the Patent Office, a notice published that indicated that the design would lapse on 30 August 2018, instead of on 30 March 2020. Consequently, the computer system at the Israel Patent Office recorded the design as having lapsed on 30 August 2018. Although the Design owner received a copy of the certificate, they did not examine it and were certainly not expecting it to renew for a mere five months instead of five years. There is no doubt that this was the result of computer error at the Israel Patent Office and the pendency period was simply wrong.

There have been a whole slew of Israel Patent Office decisions and District Court rulings that concur that where a design lapses due to not paying the renewal fee, the Commissioner does not have the authority to reinstate it.  See for example Decisions regarding design numbers 30704 and 30705 to Moshe Harel, 4 May 2005. The District court Concurred in Appeal 560/92 Klil Industries ltd. vs. Mipormal Industries of Jerusalem ltd, 9 December 1992, where the District Court refused an appeal to reinstate a design where the renewal fee was paid late.

In this instance, we are not dealing with a request to reinstate a design that has lapsed due to non-payment, since it was certainly renewed in a timely manner and a certificate of renewal issued.   The question is whether the wrong computer printout and certificate can be considered as a scribal error (typo) under Section 42© of the Ordinance which states:

When requested to in writing, with the appropriate fee, the Commissioner may…(c) correct any scribal error in the form or name of the design or in anything else recorded in the patent or design register.

In Appeal 733/95 Arpel Aluminum vs. Klil Industries ltd, 15 July 1997, the Supreme Court interpreted this clause narrowly:

Section 42 of the Ordinance is titled “The Commissioner’s Authority to correct Scribal Errors”,. Certainly allows the Commissioner “to cancel the registration of a design…”, but it also allows correction of insignificant mistakes such as typos (subsections (a) and (c).

The term “scribal error” is also found in Patent Law, and has been extensively dealt with. For example, in a decision concerning IL 194774 LANTMANN AS-FAKTOR AB appealing an Examiner ruling regarding correcting a typo from 18 September 2016, then Commissioner Asa Kling ruled that a typographical error is one that is clearly identifiable as such from reading the file:

The fact that an error occurred is not sufficient to classify it as a scribal error that may be amended. To classify the error as a scribal error it should be an error of the type that is self-evident on reading the specification and must be the result of a technicality. As defined in Medar, so long as the error is not self-evident, the evidentiary support that it was an error is required to be stronger. From this it is possible that the Examiner was overly formalistic. Nevertheless, following Medar the test is whether a person of the art reading the specification would note immediately that an error had occurred.

See also the Opposition to Patent No. IL 140512 Sharine Technologies ltd vs. LAZARE KAPLAN INTERNATIONAL, INC., from 4 June 2012, which defines the term ‘Scribal Error” as including technical errors:

“The term scribal error appears in a list of laws, including Section 23 of the Law of Recording Population 1965, the subheading of Section 25c of the Law of Securities 1968, and so on. Although the interpretation of all terms in legislation is derived from the purposes of that legislation (see A Barak, Legal Interpretation) vol 2 page 143 (1993), one can, nevertheless, consider these other laws to understand this case.

I do not think that there is anything preventing relying on these definitions and the interpretations given to them in order to understand the term “Scribal Error” as used in Section 68. “A grammatical error, typo, deletion, printing error, reproduction problem and the like” are all scribal errors that, if they have occurred in the patent specification, may be corrected under section 68 of the Law.

Deputy Commissioner Jacqueline Bracha considers that someone examining the Design Register would immediately understand that there is no way that 47653 would lapse at the stated date, since this has no relationship to the filing date or the design in question or of the main design that it was considered a variant of. Furthermore, by examining the file it would be clear that the renewal was timely paid and a certificate issued.

In light of the above, the Deputy Commissioner Ms Bracha concludes that this is a scribal error that she has the authority to order be corrected, and that such a correction be published in the next Design Journal.

Nevertheless, this correction is subject to the following conditions: the design owner cannot take action against anyone relying in good faith on the design lapsing to manufacture similar goods, prior to the design reinstatement occurring.

Ruling re Design 57653 by MS Bracha, 1 July 2018.

COMMENT

I fully concur and accept that the Deputy Commissioner should do the necessary mental gymnastics to ensure that a design that lapses due to a computer error at the Patent Office is reinstated. However, I disagree that it would be obvious to everyone that the date published was wrong. This requires knowing that renewals are from the filing date, which is not the case for all types of IP in all jurisdictions. With patent litigation arguing about days of protection, it is not impossible or even improbable that a design would be renewed for a few months only if that was the period of protection available. Not everyone knows how to examine a design file. It is only very recently indeed that design files have been available for examination over the Internet, and I suspect that very many patent attorneys and lawyers, not to mention lay-persons, have no idea how to make such an examination, nor would they necessarily attempt to do so.  In fact the Deputy Commissioner admits as much by not allowing the design owner to sue anyone relying on the design lapsing in good faith prior to it being announced as reinstated.



Categories: design, designs, Intellectual Property, israel design ruling, Israel IP, Israel Patent Office Rulings, reinstatement, Uncategorized, החלטת רשות הפטנטים, מדגם, עיצוב, קניין רוחני, קנין רוחני

4 replies

  1. Dear Michael, in criminal law there is a famous presumption that all men and women are familiar with the law. With regard to IP professionals such as patent attorneys and lawyers, there are ample rulings that established a similar presumption of familiarity with the applicable law, even if in reality this presumption is sometimes rebutted, sadly. Proving that you relied in good faith on the false expiration is not an easy task, and I’d expect that beside comprehensive recordation of the enquiry one made, evidence for change of situation to the worse would be required as well.

    • Sharon, why ‘you’? It wasn’t a case of mine!

      • Dear Michael, I was speaking generally and hypothetically. In Hebrew we use the second pronoun for that. I guess in English the correct form is ‘one’ so please just imagine that I said “proving that *one* relied …” etc.

      • Also, as I was referring to a possible defense of a would-be infringer, it seems pretty clear that this could not have been a case of yours, as it hadn’t happened yet…

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Google+ photo

You are commenting using your Google+ account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

%d bloggers like this: