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Design Patent | Spare parts protection – Israel moves closer to the EU courts policy

December 19, 2010 by Amit · Leave a Comment 

An Israeli company filed an application for the novel design of a power plug and connector. The product involves three different elements that are fitted without the use of tools.
 
The application was filed using a 3d illustration of the different elements separately.
 
In two office actions, the design examiner rejected the application stating that there are 2 different designs (the combined unit and one of the elements) in the application and due to technical problems with the illustration provided.
 
Applicant argued that the elements are in fact complimentary and cannot be considered alone and that they are sold together as a kit.
 
Unsuccessful in the attempt to convince the examiner, the applicant had a phone interview with the head of design patents department in which they agreed to divide the application into 3 applications, one for each of the elements.
 
However, a final rejection was issued.
 
The applicant at that point changed his argument and stated that the parts are now sold separately and should be considered a "set" design patent.
The commissioner allowed the registration of the original application since there is an ornamental novelty of the combined/assembled product, also stated that although the application include all the elements of the design, those who are functional as well as those which are internal, those are unenforceable and hence irrelevant.   
    
 The divisional applications were refused for being functional replacement parts.
 
This ruling takes the Israeli Design Patent prosecution closer to the European system, which reflects the current Commissioner's agenda.

Filed under Design Patents, Newsletter Vol 2 - December 2010 · Tagged with

Israeli Patent Authority continues to refuse opening of abandoned design applications

August 6, 2010 by Amit · Leave a Comment 

In its latest decision (June 29, 2010) issued by the administrative IPA judge, Ms. Yaara Shoshani, the IPA continues to refuse opening of abandoned design applications. In this case, the design patent application was abandoned on July 2006 and the applicant filed a petition to allow retroactive payment of the publication fees.

The design application was filed to the Israeli Patent Authority on June 2004, an office action was issued on March 2005 in which the Examiner demanded more views (drawings or pictures) of the product.

The applicant filed no reply to said office action. The IPA first sent a reminder allowing the applicant 14 days to file a response and then on July 2006 the case was considered abandoned and the IPA sent a formal abandonment notification to the applicant.

Two years later on December 2008, the applicant sent a request letter in which they requested to re-open the file. The designs department manger refused the request. Two years after the request letter and 4 years after the actual abandonment, the applicant filed the petition on the grounds that the application was allowed and part of the publication fee was paid, claiming that the IPA erroneously closed the file.

The administrative judge, after reinspecting the file, decided that she cannot accept such claims since the design application was never allowed, hence a demand to pay publication fee could not be issued and that the decision to close the file was right and according to the regulations.

The administrative judge added that since the abandonment date, 4 years ago, new design applications (some similar or identical) were filed and reopening the file will cause damage to 3rd parties.

This decision is just the latest of several similar decisions in which the IPA refuses to reopen abandoned design applications and registrations, many of them relied on the claim that reopening such files will cause damages to 3rd parties that relied on the abandonment. 

Filed under Design Patents, Newsletter Vol 1 - August 2010 · Tagged with , ,