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.
Start by selecting your Topic of interest below. Then choose your Regions and finally refine the exact Subjects you are seeking clarity on to view detailed analysis provided by our carefully selected internationally recognised experts.
Results: 4 Answers
Patents
1.
Legal framework
1.1
What are the sources of patent law in your jurisdiction?
 
Israel
The Patents Law, 5727-1967 is the main source of patent law. The main secondary legislation includes:

  • the Patent Regulations (Office Practice, Rules of Procedure, Documents and Fees), 5728-1968;
  • the Patent Regulations (Extension of Protection ‒ Procedures for Order Application, for Opposition to an order and for Application for Revocation), 5758-1998; and
  • the Patent Regulations (Application of the Patent Cooperation Treaty), 5756-1996.
For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
1.2
Who can register a patent?
 
Israel
Section 2 of the Patents Law stipulates that an application to register a patent shall be filed by the owner of the invention. According to Section 1, the owner of an invention is the inventor or persons that derive title under the inventor, being entitled to the invention by operation of law, by transfer or by agreement. According to Section 11(b) of the Patents Law, an applicant that is not the inventor must specify how it came to own the invention.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
2.
Rights
2.1
What rights are obtained when a patent is registered?
 
Israel
According to Section 49 of the Patents Law, a successfully registered patent entitles the patent holder to enjoin third parties from exploiting the invention for which the patent is granted without consent or unlawfully. ‘Exploitation’ is use either in the manner prescribed in the claims or in any manner which involves the essence of the invention in view of its claims. Section 49(b) clarifies that: “The grant of a patent does not constitute permission to exploit any invention unlawfully or in a manner that constitutes infringement of any existing rights under any law.”

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
2.2
How can a patent owner enforce its rights?
 
Israel
Patent holders and exclusive licensees can enforce their rights by filing suit in court. Under Section 179 of the Patents Law, an action for infringement may be brought only after the patent has been granted.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
2.3
For how long are patents enforceable?
 
Israel
According to Section 52 of the Patents Law, a patent remains valid for 20 years from the date of filing of the patent application, provided that renewal fees are paid. A patent may still be enforced by way of a claim for damages after the expiry of this term, subject to Israel’s seven-year statute of limitations, if the infringement occurred during the life of the patent. The possibility of post-term injunction has been considered by the courts, although it is unclear to what extent this option exists.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
3.
Obtaining a patent
3.1
Which governing body controls the registration procedure?
 
Israel
The Israel Patent Office.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
3.2
What is the cost of registration?
 
Israel
The fees for patent registration are currently ILS2,010 (approximately $570). The costs of registering a patent include the patent agent’s fee and other Patent Office fees during the process. Attorneys’ fees usually range from $5,000 to $10,000.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
3.3
What are the grounds to reject a patent application?
 
Israel
  • Failure to comply with the patentability requirements set forth in Section 3 of the Patents Law (novelty, utility, industrial application and inventive step);
  • Failure to comply with the requirements of enablement, sufficiency, description (Article 12) and support of claims (Article 13);
  • Failure to provide a full list of references and publications (Section 18). The courts have held that such failure amounts to lack of good faith (eg, see CC 14/92 (Nazareth Distr) Plasson Maagan Michael Industries Ltd v Freddi Priant et al. [1993]);
  • Lack of ownership of the invention; and
  • Failure to comply with the formal requirements set forth in Chapter 3(a) of the Patents Law (payment of relevant fees, inclusion of proper specification and claims etc).
For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
3.4
What programmes or initiatives are available to accelerate or fast track examination of patent applications?
 
Israel
According to Section 19A of the Patents Law, an applicant may request accelerated examination of its application by submitting to the registrar a request detailing reasonable justification for this request, accompanied by an affidavit supporting the facts specified in the request. Section 19A also provides examples of reasonable justifications, including:

  • the applicant’s advanced age or medical condition;
  • the existence of a programme which provides for expedited examination due to a corresponding application (eg, a Patent Prosecution Highway programme, according to a bilateral or multilateral agreement);
  • unauthorised exploitation of the invention by another person;
  • improbable delay in commencement of the examination; and
  • public interest.

An accelerated examination may also be requested by a third party, based on justifications including:

  • an established concern that regular examination of the application may cause a delay in the development of the product or process claimed in the patent application;
  • improbable delay in commencement of the examination; and
  • public interest.
For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
3.5
Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?
 
Israel
Yes. According to Section 7(1) of the Patents Law, method claims for human therapeutic treatments are not permissible. According to Section 7(2) of the Patents Law, claims for new varieties of plants or animals are also not permissible, except microbiological organisms not derived from nature. So-called ‘use claims’ are further not permissible, as they are not perceived as either process or product claims. So-called ‘Swiss-type’ format claims are further not allowed. Case law has created additional exclusions, such as methods of doing business.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
3.6
Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?
 
Israel
Yes, in the form of patent extension orders, but only in respect of patents relating to pharmaceutical preparations and medical devices. Extension orders may be granted for up to five years as compensation for regulatory delays that prevent the patent holder from exploiting the patent. The conditions for their grant are listed in Section 64D of the Patents Law, as follows:

  • The substance, process for production or use thereof, medical preparation incorporating the substance or process for production thereof, or medical equipment claimed in the basic patent and the basic patent remain in effect;
  • The pharmaceutical preparation contains a substance registered in Israel’s Pharmaceutical Registry;
  • Said registration is the first registration containing the substance enabling the substance to be used in Israel for medical purposes;
  • No other extension order has previously been issued for the patent or the substance; and
  • If marketing approvals have been granted in the United States or in a recognised European country, an extension period for a patent claiming said preparation abroad has been granted and remains valid in both the United States (if applicable) and the recognised EU country (if applicable).

How the term is calculated depends on the preparation’s patent term extension status when related patents are applied for in foreign countries (which is the case for the vast majority of preparations). The term of extension may not exceed the shorter of:

  • five years;
  • the shortest term of extension of related patents in recognised patents;
  • 14 years for the date of the first marketing authorisation in Israel or in a recognised country; or
  • the expiry or revocation of the related patents or their  patent term extensions in a recognised country.
For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
3.7
What subject matter is patent eligible?
 
Israel
Section 3 of the Patents Law stipulates that a ‘patentable invention’ is “an invention, be it a product or a process in any field of technology, which is new and useful, has industrial application and involves an inventive step”. See question 3.5 above regarding exclusions.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
3.8
If the patent office does not grant a patent, is an appeal available and to whom?
 
Israel
Yes. If the Israel Patent Office rejects a patent application, the applicant may request to be heard before the registrar. If, after the hearing, a patent is not granted, the applicant may appeal by right to the district court within 45 days of the decision, according to Section 174 of the Patents Law and Regulation 191 of the Patents Regulations. In addition, the registrar, at the applicant’s request, may reconsider the refusal if a request to this effect is submitted within 12 months of the date of refusal.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
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
5.
Patent enforceability
5.1
What makes a patent unenforceable?
 
Israel
In general, patents cannot be enforced before grant. Section 179 of the Patents Law stipulates that a legal action for infringement may be brought after the patent has been granted; however, if an action for infringement is brought, the court may grant relief for an infringement committed after the date of publication of the application. Moreover, if a renewal fee has not been paid and the patent has accordingly been deemed abandoned, the patent will become unenforceable. If the patent holder wishes to enforce an expired patent, it must file a petition to reinstate the patent and obtain the registrar’s approval thereto.

If the defendant used the invention or prepared to use it prior to the date of grant, it will have immunity from infringement, according to Section 53 of the Patents Law.

If the defendant began to exploit the invention in Israel on which the patent lapsed, or if the defendant made actual preparations for its exploitation after that date, the defendant shall be entitled to continue to exploit the invention only for the requirements of its business, even after the patent has been reinstated.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
5.2
What are the inequitable conduct standards?
 
Israel
The inequitable conduct standard is good faith.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
5.3
What duty of candour is required of the patent office?
 
Israel
According to the powers vested in the registrar under Section 18 of the Patents Law, applicants must advise on any prior art material to patentability known to them and provide the examiner with a list of citations made against corresponding applications. Section 18C of the Patents Law prescribes that an applicant must not provide the Israel Patent Office with misleading details in response to a request under Section 18 or knowingly fail to update it on a substantial change in the list of references and publications cited against corresponding applications. The penalties for failure to abide by Section 18C include one or more of the following:

  • cancellation of the patent or abstention from grant;
  • issuance of a compulsory licence; and
  • reduction in patent term.

The court is also entitled to impose a fine on anyone that provides misleading particulars or that knowingly fails to keep the Israel Patent Office updated on the list of publications and documents.

In a number of cases it was determined that a patent can be cancelled due to failure to disclose in good faith (33666-07-11 Unipharm v Sanofi Cent Distr [2015]; Opposition to application for grant of Patent11703, SmithKline Beecham plc v Unipharm Ltd).

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.
Patent infringement
6.1
What Constitutes Patent Infringement?
 
Israel
Section 49(a) of the Patents Law defines direct ‘infringement’ as the unauthorised or unlawful exploitation of an invention for which the patent has been granted, either in the manner prescribed in the claims (ie, literal infringement) or in any manner which involves the essence of the invention (similar – although not entirely so – to the doctrine of equivalents), in light of the definition in such claims.

‘Exploitation’ is described in Section 1 of the Patents Law as follows:

(1) in respect of an invention that is a product – any act that is one of the following: production, use, offer for sale, sale, or import for purposes of one of the enumerated acts;

(2) in respect of an invention that is a process – use of the process, and in respect of a product directly derived from the process – any act that is one of the following: production, use, offer for sale, sale, or import for purposes of one of the enumerated acts.

According to Section 1, the following are excluded from the definition of ‘exploitation’:

(1) any act not performed on a commercial scale and that is not commercial in its character;

(2) any experimental act in connection with the invention, the objective of which is to improve the invention or to develop another invention;

(3) any experimental act, which is part of an effort to obtain a license to market the product after the patent has lapsed under the provisions of section 54A.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.2
Does your jurisdiction apply the doctrine of equivalents?
 
Israel
According to Section 49 of the Patents Law, infringement may be found if the essence of the claimed invention has been used. In CA 345/87 Hughes Aircraft Company v State of Israel 44(4) PD 45 [1990] the Supreme Court adopted the US doctrine of equivalents in order to examine whether a patent had been infringed, as enunciated in the US Supreme Court judgment in Graver Tank & Manufacturing Co v Linde Air Products Co, 339 US 605 [1950]. Also, courts apply the UK doctrine of the ‘pith and marrow’ of the invention.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.3
Can a party be liable if the patent infringement takes place outside the jurisdiction?
 
Israel
Generally, the Patents Law applies to infringements that take place within the Israeli territory.

There are no provisions in Israeli law similar to those of 35 US Code § 271(f). However, in at least one case the Israeli court issued an injunction against an Israeli company ordering it to ensure that its foreign subsidiary did not exploit the invention abroad (MCA 814/05 (Jer Distr) CC 7076/05 Orbotech Ltd v Camtech Ltd [2005]). Conversely, a party will not be liable for patent infringement that occurs strictly outside of the Israeli territory (LCA 8831/05 Harar v Dialit Ltd, [Sup Ct]).

An activity conducted abroad which causes infringement in Israel may also be actionable in Israel (CA 817/77 Beecham Group Ltd v Bristol-Myers Co, 33 (3) PD 757 [1979]).

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.4
What are the standards for wilful infringement?
 
Israel
According to Section 183(c) of the Patents Law, if the patent holder or an exclusive licensee has delivered a cease-and-desist letter to the infringer and the infringement continues after this warning, the court may order the infringer to pay punitive compensation in an amount of up to the actual damage (double compensation). The court applies this provision only in exceptional circumstances and only if it is proven that the infringer carried out the infringement wilfully while causing damage to the patent holder (CA 3400/03 Rubinstein v Ein Tal (1983) Ltd, 59(6) PD 490 [2005]).

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.5
Which parties can bring an infringement action?
 
Israel
According to Section 178 of the Patents Law, the parties that can bring an infringement action are the patent holder and an exclusive licensee. According to Section 178(c), any co-owners or exclusive licensees which have refrained from joining the suit must be joined as defendants.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.6
How soon after learning of infringing activity must an infringement action be brought?
 
Israel
As long as an infringement continues and for a period of seven years thereafter, an infringement action may be brought at any time after the patent holder or exclusive licensee learns of the infringement. Nonetheless, damages may be requested only for a period of seven years from the date of the lawsuit, due to time limitation. It is important, however, to bring an infringement action within a reasonable time after learning of the infringement; otherwise, the defendant may raise equitable arguments such as laches or acquiescence, especially in interlocutory proceedings.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.7
What are the pleading standards to initiate a suit?
 
Israel
Regulation 9 of the Civil Procedure Regulations, 1984 and Regulations 10, 11 and 14 of the Civil Procedure Regulations, 2018, effective September 2019, state that the pleading must include:

  • the name of the court with which the claim is filed;
  • the name of the claimant, ID number, place of residence and address for service of court documents;
  • the name of the defendant, ID number and place of residence, to the extent ascertainable;
  • whether the plaintiff or defendant is a corporation and if so, its manner of incorporation, or whether the plaintiff or defendant is not competent or a minor;
  • the main facts constituting the cause of action and the time of its actuality (in Israel, the main facts must be significantly more detailed than the standard for filing complaints under US law);
  • facts demonstrating that the court is competent to hear the suit;
  • the relief sought;
  • any sum that the claimant agrees to offset or waive; and
  • the value of the subject matter of the suit, to the extent determinable.
For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.8
In which venues may a patent infringement action be brought?
 
Israel
Any of the six Israeli district courts is potentially authorised to hear patent infringement suits, according to Section 188(b) of the Patents Law and subject to the local jurisdiction rules (see question 6.9).

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.9
What are the jurisdictional requirements for each venue?
 
Israel
Regulation 3 of the Civil Procedure Regulations, 1984 states that a plaintiff may choose from among several different venues to file an action, including:

  • the defendant’s place of residence/business; and
  • the place of the act or omission giving rise to the claim.

If the plaintiff’s business has several branches and one is within the jurisdiction of the defendant’s place of residence/business, the action must be filed in that jurisdiction. If the claim relates to online advertising/trading, the claim must be submitted to the court in whose jurisdiction the defendant’s or plaintiff’s place of residence/business is located. If there are several defendants, the action may be filed at any court where it can be filed against any one of them.

Regulation 9 of the Civil Procedure Regulations, 1984 and Regulations 10, 11 and 14 of the Civil Procedure Regulations, 2018, effective September 2019, state that an action may be filed with the court in the jurisdiction of the defendant’s place of residence/business. If there is an agreement between the parties regarding jurisdiction, the action will be submitted to the agreed court. The court that is competent to hear a claim involving a number of defendants is any court which is authorised to hear a claim against any one of them.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.10
Who is the fact finder in an infringement action?
 
Israel
The judge(s) of the court make the final determination of facts in the case. They may appoint an expert to assist them in doing so or rely on the testimony of experts appointed by the parties. The Patents Law also allows for the appointment of an assessor (scientific expert) to advise the judge.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.11
Does the fact finder change based on venue?
 
Israel
See question 6.10.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.12
What are the steps leading up to a trial?
 
Israel
It is the practice, although not obligatory, to send a cease and desist letter prior to filing suit in court. If the infringement continues, the patent holder or an exclusive licensee may commence court proceedings.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.13
What remedies are available for patent infringement?
 
Israel
According to Section 183(a) of the Patents Law, the remedies for patent infringement are an injunction and damages. Additionally, the court is authorised to grant remedies that are tailored to the circumstances of the case, including delivery up for destruction, Anton Piller orders and any kind of injunction (whether interlocutory or permanent).

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
6.14
Is an appeal available and what are the grounds to appeal?
 
Israel
A final judgment of a district court in a patent infringement trial may be appealed by right to the Supreme Court. A non-final decision may be appealed by leave of the Supreme Court. There is no formal limitation on the grounds for appeal and any judicial determination of the trial court may be appealed. However, in general, the court of appeal does not tend to intervene in factual and reliability determinations.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
7.
Discovery
7.1
Is discovery available during litigation?
 
Israel
Yes.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
7.2
What kinds of discovery are available?
 
Israel
Written interrogatories and discovery of documents.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
7.3
Are there any limitations to the amount of discovery allowed?
 
Israel
There are no provisions in the law that limit the amount of discovery allowed. However, Israeli courts are more flexible in terms of discovery than US courts, for example. For instance, if a party argues that a certain discovery requirement is too onerous or demanding, the court may take it into consideration.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
8.
Claim construction
8.1
When during a patent infringement action are claim terms defined by the tribunal?
 
Israel
There are no hard-and-fast rules in this regard, but generally there is no preliminary decision on interpretation similar to a Markman hearing in the United States.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
8.2
What is the legal standard used to define claim terms?
 
Israel
Generally, courts use regular judicial interpretation rules as a legal standard when defining claim terms, such as the contra proferentem rule (interpretation against the drafting party), which may be used against the applicant, or the ‘blue pencil’ rule. Thus, patents are interpreted like any other legal document. Specifically with respect to patents, it has been held that the claims and the description must be read as a whole for the purpose of interpretation, and terms are defined according to their meaning in the specification, as understood by a person of skill in the field of the invention.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
8.3
What evidence does the tribunal consider in defining claim terms?
 
Israel
The court will usually rely on expert witness, although it is not bound to accept the opinion of an expert. If there is uncertainty in defining the claim terms according to the patent document, the court may consider external documents, including correspondence between the inventor or its representatives and patent offices. There is lack of uniformity in case law with respect to the applicability in Israel of the file wrapper estoppel.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
9.
Remedies
9.1
Are injunctions available?
 
Israel
Yes, both permanent and interlocutory injunctions are available.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
9.2
What is the standard to obtain an injunction?
 
Israel
Interlocutory injunctions derive from equity law. Therefore, to obtain an interlocutory injunction, the plaintiff must show:

  • a good prima facie case on the merits;
  • that the balance of convenience is in its favour (ie, that if an interlocutory injunction is not granted, the damage that it may suffer is greater than that which might be caused to the defendant); and
  • that the motion for an interlocutory injunction was made diligently and in good faith.

There is a statutory right to obtain a permanent injunction. Accordingly, apart from in exceptional cases, it will be granted in patent infringement litigation as a main remedy.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
9.3
Are damages available?
 
Israel
Yes.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
9.4
What types of damages are available?
 
Israel
  • Actual damages, such as the plaintiff’s lost profits or profits earned by the defendant;
  • Compensation, which is granted at the court’s discretion. When calculating the amount of compensation, the court will consider the earnings from the infringement, the scope and duration of the infringement and so on; and
  • Punitive damages, which may be granted in case of wilful infringement (see question 6.4).
For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
9.5
What is the standard to obtain certain types of injunctions?
 
Israel
See question 9.2.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
9.6
Is it possible to increase or multiply damages due to a party’s actions?
 
Israel
Yes. See question 6.4.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
9.7
Are sanctions available?
 
Israel
No.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
9.8
What kinds of sanctions are available?
 
Israel
There are no sanctions available under Israeli law.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
9.9
Can a party obtain attorneys’ fees?
 
Israel
Yes, albeit not on the basis of full indemnification.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
9.10
What is the standard to obtain attorneys’ fees?
 
Israel
The principal rule with respect to attorneys’ fees is that the loser pays. The basis for the calculation is the actual costs incurred, but the courts apply scrutiny in this regard and the amount of attorneys’ fees eventually granted by the court is usually lower than the actual fees incurred.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
10.
Licensing
10.1
What patent rights can a party obtain through a licence?
 
Israel
An exclusive licence affords the licensee the exclusive right to prevent others, including the patent holder itself, from exploiting the patented invention in Israel. A non-exclusive licence affords the licensee the right to exploit the patented invention according to the terms and conditions set out in the licence. An exclusive licensee can sometimes enjoin remarketing of products sold by the patent holder.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
10.2
What limits can a patent owner impose on a licence?
 
Israel
In terms of contract law, a patent holder can include in a licence agreement any kind of limitation which is in accordance with the law. The limitations that a patent holder cannot include in a licence agreement derive from competition law. In CA 427/86 Blas v Kibbutz ‘Dan’ 43(3) PD 323 [1989] the court ruled that it is unenforceable and against public policy to demand royalties beyond the expiry of a patent.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
11.
Antitrust
11.1
Are there any limits on patent protection due to antitrust laws?
 
Israel
Yes. Section 49(b) of the Patents Law stipulates that “the grant of a patent does not constitute permission to exploit any invention unlawfully or in a manner that constitutes infringement of any existing rights under any law”. It is also standard that the Patents Law does not provide immunity from antitrust laws that may apply to binding agreements and abuse of monopolies. That said, Section 3(2) of the Economic Competition Law, 5748-1988 stipulates that an arrangement whose restrictions are entirely related to a patent will not be considered as a restrictive arrangement. Additional provisions are included in certain block exemptions.

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