Pendency of Design Applications
The duration of a design application examination by the Israel Patents Office is usually 6 months to 1 year, representing the time between filing the application and the applicant's ability to enforce registered design rights. This delay is acceptable in most cases, as it takes time for a product to enter the marketplace and then additional time for unauthorized copies to appear, such that an ability to enforce approximately one year after application is sufficient.
Accelerated Examination
However, in some situations, even this time period is too long and may result in harm to the rights of the design owner, and accelerating the examination process is necessary to protect those rights. One such situation is when a party who is not the applicant has begun exploiting or making use of the design. In such a situation, the Applicant can file with the Israel Patent Office a request for accelerated examination of the design application. This will advance the design application to the front of the examination queue and result in a first office action or registration within a few weeks from approval of the accelerated examination request. To take advantage of this option, the Applicant must file the request for accelerated examination along with an affidavit that details the circumstances of an alleged infringement, as per Section 28(a) of the Design Law 5777. Such details must include information identifying the alleged infringer and the infringing products.
Preventing Undesired Disclosure
There is, however, a problem with this, due to the almost instant publication of all of the application documents online. As the goal of the acceleration is to take action against an infringer, it may not be desirable to put the infringer on notice that enforcement steps are about to be taken, by naming them in the affidavit. When considering this problem, however, the IPO has provided a solution, namely, with a manner in which to file the affidavit but without disclosing information that it wishes to keep confidential.
How is this done?
When filing the request for accelerated examination, the Applicant files a redacted version of the affidavit, which will be made part of the public record. Concurrently, the Applicant files a complete, non-redacted version of the affidavit, together with a 'request to make a document confidential,' such that the full version will not become part of the public record. The request to make the document confidential enables the Registrar to review the non-redacted affidavit and make an informed decision about whether to grant the request for accelerated examination, while preserving the confidential nature of the information in the affidavit.
While the article lays out in a simplified manner the steps taken to accelerate examination of a design application while preserving confidential information in the process, it is highly recommended to get assistance with this process from an experienced patent attorney. We therefore encourage designers to consult with us when going through this process so that the design registration is achieved via accelerated examination while preserving the confidentiality of sensitive information.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
