Jeremy M. Ben-David, Managing Partner, JMB Davis Ben-David

 

The ability to file multiple embodiments of the design of what is essentially a single product is a good thing. At least in theory. When taking into account the practical considerations of national Designs Offices in different jurisdictions, it becomes apparent that what may appear to be efficient in terms of cost and administration, may actually add costs, to say nothing of additional administration and potential confusion. This brief piece will look at some of the considerations that should be taken into account when planning design protection in  Israel.

In general, there are different situations in which an applicant may consider filing multiple embodiments of what is essentially a single new design or product. These are the following:

  1. A plurality of new products has been designed, each varying only slightly from the next. 
  2. A plurality of new products has been designed, and the owner is planning to produce only a few of them, or even only a single one, but at the time of filing for protection, no decision has yet been made as to which.
  3. The product has a number of novel features, each of which warrants its own registration. For example, in a case in which the new product is a chair in which each of the back and legs components is new and could potentially be combined with a different back and legs. On the one hand, each novel component would warrant a separate design registration. On the other hand, the drawings would be identical, except that in the registration for the chair back, the legs would be disclaimed by being shown in broken lines, whereas in the registration for the chair legs, the back would be disclaimed by being shown in broken lines. So it sounds like it would make sense to file all of these aspects in a single application.

Sometimes, especially when the designer is from outside Israel, the considerations may be influenced by practice in other jurisdictions. This is especially so in a jurisdiction in which there is no substantive examination, such as in the EU, in which case it would make perfect sense to file all of the multiple embodiments in a single application. 

In Israel however, things are a little more complicated, due mainly to the fact even though multiple embodiments may be included at the filing stage, a single registration can include a single design only. Therefore, while multiple embodiments can be filed in a single application, for the cost of a single official fee, the application will be subject to restriction to a single embodiment pretty quickly, requiring the filing of divisional applications for the deleted embodiments.

An additional piece of information to take into account is the requirement in Israel to label each drawing sheet not only with a description of the view e.g. FRONT VIEW, REAR PERSPECTIVE VIEW and so on, but also with the sheet number e.g. SHEET 1/6, SHEET 21/21. This means that if, for example, three embodiments are filed, each drawing will be numbered in series, namely, 1/21 through 21/21 (assuming seven drawings per embodiment). On deletion of two embodiments, the first seven drawings will require renumbering. On filing of either or both of the deleted embodiments in divisional applications, each of the sets of drawings will similarly require renumbering. This is not a lot of work, but it does need to be done and, quite frankly, if it is an obvious outcome of the decision to file multiple embodiments, it creates additional work, appearing to merely ‘kick the can down the road’ (the “can” in this case, being the work required to file multiple applications.

Furthermore, the divisional applications will obviously be assigned different application numbers, as well as different file numbers by both the Israeli agent and the instructing agent. 

So, bearing in mind the above complications, can we recommend how to proceed in different situations?

Fortunately, we can.

Let’s revisit the above scenarios in which there may be multiple embodiments of a design:

In general, there are different situations in which an applicant may consider filing multiple embodiments of what is essentially a single new design or product. These are the following:

Scenario #1: A plurality of new products has been designed, each varying only slightly from the next. 

Recommendation: This is perhaps the most complex of the three scenarios, and there are a couple of questions that you need to ask yourself:

a. Do all of the designs possess a common feature which, in isolation from the remaining features by which the products differ, is itself worthy of design registration? If the answer is yes, you may be satisfied with filing a single design only.

b. Even if the answer to (a) is yes, do the non-common features possess value independent of the common feature? If the answer is “yes”, then you would be well-advised to file additional, separate applications, for each such independent feature. However, if you’re not sure, and you need additional time to decide, it may be worth filing these multiple embodiments in a single application. It will save money in the immediate term (i.e. when filing), and will give you extra time* to consider whether you need to protect the additional features. 

*The additional time will be the time during which a divisional can be filed, i.e. as long as the parent application is pending. This should be no less than several months, although, if the parent application encounters problems during examination, this could be for as long as one year or so.

Scenario #2: A plurality of new products has been designed, and the owner is planning to produce only a few of them, or even only a single one, but at the time of filing for protection, no decision has yet been made as to which.

c. This is now fairly easy to answer, considering that question (b) above essentially relates to this situation. The simple answer is to file a single application with all of the designs, taking advantage of the additional time that this will give you so as to make your choice as which product or products is/are worthy of registration.

 

Scenario #3: The product has a number of novel features, each of which warrants its own registration. 

d. By this time, after reading our recommendations above, the answer should be readily apparent. Even though you will be using substantially identical drawings (the differences being which features are shown by solid lines and which by broken lines), these are different designs and require different applications. There would be no advantage in filing a single application.

If you are reading this, you will realize that even with the above scenario, there may still  be intricacies that will influence the situation, both with regard to the details of the situation, and details of the Israel Design Law.

As with all situations in life, take your time to carefully consider what makes most sense – and then, once you are sure, act decisively to secure your rights!

Please contact me at Jeremy.Ben-David@jmbdavis.com if you have any questions about the above. 

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