Funny thing: The Patent Office claimed that Apple's design was not original ...

As part of a lawsuit filed by the international technology giant, it complained that the patent authority was making it difficult for it to register a patent for the design of one of its machines. However, the court accepted its claim and ordered the patent authority to accept the request.

 This is Apple's appeal against the decision of the Registrar of Patents, Designs and Trademarks in which the Registrar rejected its application to register a sample for an Ipad Mini tablet. Apple has approved its request for a forward trial in accordance with a sample request filed for the first time in the United States.

Prior to the decision of the Registrar that was the subject of the appeal, a correspondence was held between Apple and the examiner at the offices of the Patents and Designs Registrar, which ultimately led to the rejection of Apple's request to register the sample in question. The beginning of the said correspondence in the response that Appel submitted to the examiner's request was requested to detail each publication of the sample prior to the date on which the Company based its application. In response, Apple announced that there was one previous release that appeared on macrumors.com, an unofficial site that deals with rumors about Apple's new developments and products. In this context, it appears that another website, Think iOS reports (via 9to5Mac), contains sketches of the Ipad Mini, stating that it is purely speculative, and there is much doubt about the accuracy of the information presented. In addition, the Company noted in its responses that the said publication was done without its knowledge and without its initiative or approval, and therefore the Company claimed to the examiner that the previous publication should not be treated as prior art, which constitutes a barrier to approving the registration of the sample as requested.

The response of the examiner states only that the appellant's request is rejected, and this is in accordance with the notice of the appellant, and in light of the provisions of section 30 (1) of the Designs Ordinance, which in the opinion of the examiner requires the conclusion that the requested sample "is not eligible for registration.

In the hearing before the Registrar, Appel raised all of its arguments: first, that the advertising cited from macrumors.com is an unacceptable previous publication, and second, that the quoted publication does not reveal the requested sample, in light of the significant changes between the requested sample and the sample presented in the above web site.

At the end of hearing the arguments, the Registrar made the following decision:

"... I would like to mention that I heard the arguments of counsel for the purpose of admissibility of the publication, but as I mentioned from the publication and it was lawfully imposed by virtue of the duty of good faith that applies to all proceedings before the Authority and is done in response to a legitimate demand that was usually done by the Department of Designs in the Authority, An acceptable publication to be considered, also in accordance with the requirements and provisions of the MN 69 Contract and subsequent decisions and in the light and in the matter of Sertic Vanja of 28 February 2012 and Tequila Cuervo of 9 June 2013. Therefore, as stated, this request for registration of a rejected sample. "

In the appeal filed by Apple on the decision of the Registrar to the Jerusalem District Court, it was determined, inter alia, as follows:

"The court will not easily intervene in the professional conclusions of the Registrar. However, the Respondent himself argues in the main arguments that the eye that examines the purpose of formulating a conclusion regarding the degree of similarity between the samples is the average consumer, and not necessarily the Registrar of Patents. This means that the average consumer, who checks the iPad device against other devices with similar characteristics, should be aware of the alleged differences and identify the difference between the various devices being tested by the same differences. In this case, therefore, the registrar should not be given an advantage or exclusivity in examining the degree of similarity between the samples, and in light eye examination, significant differences can be discerned between the samples.

In these circumstances, since the reliability of the entire site is not examined and is not known, and when the publication itself contains many question marks about the accuracy of the sample as published, it is hard to match the conclusion that this is a previous publication that negates the innovation of the sample.

My conclusion, therefore, is that the appeal should be accepted for two cumulative reasons:

First, the appellant's obligation should not be attributed to the fact that she reported to the examiner about the existence of a publication on the Internet that bears a specific date, and which contains drawings of a sample that pretends to be the sample that challenged the publication later. At most, the said report requires that the reliability of the date appearing on the site be examined, as well as the degree of similarity between the product drawings appearing on the site and the sample that is the subject of the application for registration.

Second, the publication reported by the appellant does not meet the criteria of previous publication, not only regarding the date appearing in the publication, but also regarding the significant differences between the samples, as well as the many statements in the publication itself that raise fundamental questions about the reliability of the rumors reported in that publication.

The appeal was therefore accepted, and the Registrar must register the sample in accordance with the original appellant's request. "