On July 26, 2018 the new Israeli Designs Law will come into force and it is vital to be aware of the changes it brings to the legal regime concerning designs in Israel, as these effect both new and old designs.
These changes bring the Israeli law in line with European law and international trends. The following are the new law’s most prominent changes from the Patents and Designs Ordinance of 1924 which it replaces.
- Unregistered Designs Will be Protected
While under the previous law no protection was provided for unregistered designs, the new law provides certain protection for up to 3 years for unregistered designs.
However, unregistered designs are protected exclusively when the copy was made by an entity that was aware of the original design. In the previous regime unregistered designs that were published could not be registered and therefore could not be protected.
- Grace Period
The new regime provides a “grace period” in which designs that are marketed in Israel as non-registered designs, may, within 12 months, be registered. These provisions allow limited protection to unregistered designs, similar to the European law.
- Broader Definition of the Protected Items
The new law will replace the term “article” with the term “product”. Therefore, it will also cover graphical symbols and screen displays, thus bringing the law into the 21st century.
- Extended Duration
The duration of the protection for registered designs under the new law will be extended to 25 years (as opposed to 15 years according to the existing law subject to a timely renewal every 5 years).
Following this change, the Patents and Designs Ordinance was revised and now allows an additional extension period of 3 years, thus totaling at 18 years for designs registered before the new law comes into force.
- Changing the Novelty Requirement
The new law has changed the requirement for novelty. Designs will be considered new only if they haven’t been published in Israel or outside of it. The previous law only required that the design is new in Israel (unless proven that it was published online in certain terms).
- Statutory Damages
Another addition to the existing law are the provisions stating that the court is authorized to award statutory damages for up to ILS 100,000 (about 28,000$ US) per infringement. This is another modernizing change as statutory damage for designs was not addressed in the existing Patents and Designs Ordinance.
When considering statutory damaged the court may take into account considerations such as the scope and severity of the infringement, the damages caused to the plaintiff, the gain acquired by the defendant etc.
- Designs Created by the Employee and Work Made for Hire
Under the new law the rights to a design that was created by an employee executing its duties or when using his employer’s resources will be owned by the employer.
Similarly, all rights to a design that made for hire under a commissioned work will be owned by the person who commissioned it. However, these exceptions to the rule (i.e., the rights to a design belong to the designer) stand only when there is no other agreement between the parties.