by Jeremy Ben-David, Founder, Managing Partner, JMB Davis, Ben-David

Long, long ago, in the pre-2018 world, before COVID was even a twinkle in the eye, registered designs in Israel were regulated courtesy of the Patents and Designs Ordinance (1924) (hereinafter: “the Ordinance). Even though 94-year-olds generally are considered to have accumulated much life wisdom, it was generally perceived that a much newer, fresher law, adapted to keeping up with may of the developments of the early 21st century, was required, and so was born the new Designs Act (5777-2017) (hereinafter: “the Act”). 

However, and on a very serious note, pre-2018 design registrations maintained their validity, and while not benefitting from the 25 year term of new registrations under the Act, the old registrations under the Ordinance would benefit from an extension of a further 3 years. This meant that old designs could be renewed for four terms, three of five years each, and a final term of three years, giving a total of 18 years.

Paragraphs 52 – 60 of the Act provide for the registration of a “Design of Addition” namely, for a product that varies from the ‘parent’ design with regard to non-substantive features (Paragraph. 52(1)). Once accepted for registration, the Design of Addition will be considered as having been registered on the same date as the parent design. However, renewal fees are required to be paid for both the parent and the Addition, separately.

This is similar in concept to the ‘Patent of Addition’ as per Paragraphs 44-48 of The Patent Law (1967), but with one notable exception, namely, that no separate renewal fees are payable for the Patent of Addition.

This concept, namely, the registration of variant of a Design,  was also introduced by a previous Registrar, as an adjunct to the Rules under the Ordinance of 1924. As such, this practice continued essentially unchanged, also under the Act.

I hear you asking why I am mentioning all of this now. Here’s why:

We recently were requested to renew a design registered under the Ordinance. When looking at it a little more closely, it was one of the rare cases which was registered as a variant. It was made even rarer, when we realized that the parent design was not being maintained. After digging a little further, we realized that unlike with a Patent of Addition, the Design variant becomes a totally separate entity, such that even though the parent had lapsed, it was still possible to maintain the variant. Maybe more importantly, that is very clearly the position under the Act, too. 

So, back to the 94 year old Ordinance: rest in peace. 

The now almost 6 year old Act is continuing the best of the traditions, while adding its own innovations. If you need more information on the New Design Law, click here or write to me directly.

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