In the recently published Registrar Circular No. M.N. 69, dated 24 December 2008 (the "Circular"), the Registrar clarifies the interpretation of "publication in Israel" for the purpose of the novelty requirement in designs.

In practice it appears that, although the language of the law requires "local novelty", following the publication of the Circular, the definition of "local" has now been expanded to also include dated publications available over the Internet.

Background:

According to Section 30 of the Patents and Designs Ordinance (the "Ordinance"), one of the eligibility requirements for designs is that it has "not been published in Israel" prior to the application date.

Until now, design applications were examined vis-à-vis design applications filed in Israel before their filing date.

The Circular:

The technological developments and the expansion of Internet usage in Israel, gave rise to the question of whether publication of a design over the Internet, which is broadly available and accessible in Israel, should be regarded as "publication in Israel".

The Circular clarifies that citations against the novelty in a design can now include, inter alia, also designs published over the Internet prior to the filing date of the application in Israel, when there is evidence regarding the publication date. Use of Internet publications will be made with precaution and only in cases where the examiner is of the opinion that the cited design has been published before the application date in Israel. As an example, publications available on websites of patent offices worldwide indicating the publication date will now be taken into consideration.

Practical Aspects:

There are two major practical aspects:

Israel should no longer be regarded as applying the local novelty requirement. Therefore, design applications should be filed within the 6 months convention deadline in cases where protection in Israel is likely to be required.

In cancellation actions under Section 36 of the Ordinance, based on "publication in Israel prior to the application date", publications available over the Internet prior to the application date are likely to be regarded as admissible evidence.