Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.
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Results: 4 Answers
Patents
4.
Validity/post-grant review and/or opposition procedures
4.1
Where can the validity of an issued patent be challenged?
 
Israel
The validity of an issued patent is challenged before the Israel Patent Office, as the body that governs the issuance of patents. The courts further have the authority to decide on the validity of a patent within the framework of infringement proceedings.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
4.2
How can the validity of an issued patent be challenged?
 
Israel
The validity of an issued patent may be challenged by filing a revocation action at the Israel Patent Office. If the patent application has been accepted but a patent has not yet been issued, a pre-grant opposition may be initiated. The validity of a patent may further be challenged in a statement of defence against a patent infringement action.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
4.3
What are the grounds to invalidate an issued patent?
 
Israel
The grounds to invalidate an issued patent (listed in Section 31 of the Patents Law) are the same as those on which the grant of a patent may be opposed, as follows:

  • Grounds exist based on which the registrar could have refused registration;
  • The invention is not patentable due to prior use (which is novelty-destroying) or exhibition; or
  • The opponent, not the applicant, is the owner of the invention.

A patent may also be invalidated due to lack of good faith during prosecution (eg, failure to inform the Israel Patent Office of an important citation abroad).

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
4.4
What is the evidentiary standard to invalidate an issued patent?
 
Israel
The standard to invalidate an issued patent is the balance of probabilities, which is typically the evidentiary standard in civil proceedings. In revocation actions, the burden of proof rests with the applicant for revocation; whereas in pre-grant opposition actions, the burden of proof rests with the applicant for a patent.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
4.5
What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?
 
Israel
Oppositions are pre-grant and may be filed by any third party.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
4.6
Who can oppose a granted patent?
 
Israel
Any third party can initiate an action for revocation of a granted patent.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
4.7
What are the timing requirements for filing an opposition or post-grant review petition?
 
Israel
A notice of pre-grant opposition must be submitted within three months of publication of acceptance of the application. This period is non-extendable.

An application for revocation of a patent may be filed at any time after grant.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
4.8
What are the grounds to file an opposition?
 
Israel
The grounds on which an opposition can be made are listed in Section 31 of the Patents Law, as follows:

  • Grounds exist based on which the registrar could have refused registration;
  • The invention is not patentable due to prior use (which is novelty-destroying) or exhibition; or
  • The opponent, not the applicant, is the owner of the invention.
For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
4.9
What are the possible outcomes when an opposition is filed?
 
Israel
The possible outcomes of an opposition are:

  • acceptance of the opposition, in whole or in part;
  • rejection of the opposition; or
  • transfer of ownership of the patent to the opponent.
For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
4.10
What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?
 
Israel
The legal standards applied by the Israel Patent Office are the same as those applied in court. The burden of proof in an opposition proceeding rests with the applicant for patent. Conversely, in a revocation proceeding initiated by a third party, the burden of proof rests with the applicant for revocation.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
4.11
Can a post-grant review decision be appealed and what are the grounds to appeal?
 
Israel
Yes – as for any similar decision of the registrar, if a party is dissatisfied with the registrar’s final decision in a revocation proceeding, it may appeal to the district court by right, according to Section 174 of the Patents Law and Regulation 191 of the Patents Regulations. There is no difference between appealing a decision in pre-grant opposition or revocation proceedings, aside from the burden of proof (see question 4.10).

In practice, the appellate instance tends not to intervene in factual determinations, and especially so with respect to appeals of decisions of the registrar, which are considered to have strong merit as they pertain to the registrar’s area of professional expertise. There are no provisions laying out specific grounds for appealing a decision of the registrar; the court will usually address mistakes that have significant bearing on the end result, especially errors of law.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group