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.

4. Results: Answers
Patent enforceability
What makes a patent unenforceable?

Answer ... 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
What are the inequitable conduct standards?

Answer ... The inequitable conduct standard is good faith.

For more information about this answer please contact: David Gilat from Gilat Bareket & Co., Reinhold Cohn Group
What duty of candour is required of the patent office?

Answer ... 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