Contributed By Gilat, Bareket & Co., Reinhold Cohn Group
The Patentee may give an exclusive or non-exclusive written licence to exploit the invention. An exclusive licence confers the exclusive right to act as if the licensee were the patentee, and it prohibits the patentee from exploiting the invention in Israel. A non-exclusive licence confers the right to exploit the invention to the extent and on the conditions prescribed in the licence. A non-exclusive licensee does not have a right to file action for infringement.
The recording of licences for registered patents or pending applications is not mandatory under the Patents Act. Moreover, non-recording of the licence does not affect the validity of the patent (or patent application) involved, nor does it have any bearing on the relationship between the parties to the agreement. Nevertheless, a recording of an exclusive licence is required to assert such a licence against third parties. Therefore, a patent licence agreement that was not registered in the Patents Register is generally in effect only for the parties to the agreement.