Answer ... 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.
Answer ... 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  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 . Also, courts apply the UK doctrine of the ‘pith and marrow’ of the invention.
Answer ... 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 ). 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 ).
Answer ... 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 ).
Answer ... 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.
Answer ... 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.
Answer ... 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.
Answer ... 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).
Answer ... 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.
Answer ... 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.
Answer ... See question 6.10.
Answer ... 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.
Answer ... 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).
Answer ... 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.