Last Updated March 08, 2019

Law and Practice

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Gilat, Bareket & Co., Reinhold Cohn Group is the leading intellectual property consulting firm in Israel and offers a broad range of related services and expertise, including protection, asset management, due diligence, litigation and legal services. The firm operates in all areas of IP, such as patents, trade marks, designs, copyrights, open source, plant breeders' rights, etc. The group includes the patent attorneys firm Reinhold Cohn & Partners and the law firm Gilat, Bareket & Co., which specialises in litigation and the legal protection of intellectual property rights in patents, technology, brands, designs, creative works and inventions. Gilat, Bareket & Co. employs 24 attorneys at law, several of whom also hold academic degrees in sciences. Key practice areas include filing suits for patent infringement in courts, representing clients before the Patents Registrar, rendering opinions regarding infringement and freedom to operate, and counselling on service intentions. The author would like to thank Keren Lindenfeld and Tomer Rosenfeld, present and past associate attorneys of Gilat, Bareket & Co., Reinhold Cohn Group, for their assistance.

The necessary parties to an action for infringement are the patentee and exclusive licensee who are the only ones that can file an action for infringement. Therefore, non-exclusive licence owners cannot file an action for infringement. In cases of a jointly owned patent, each partner is entitled to bring action for infringement.

The plaintiff must join co-patentees and exclusive licensees (who choose not to join the action for infringement with the plaintiff) as defendants. A person who was joined as a defendant but did not take part in the proceedings will not be required to participate in the payment of litigation costs.

Direct infringement is expressly defined in the Patents Act as the right of the patentee to prevent any other person from exploiting the invention, either as defined by the claims or in a similar manner that involves the essence of the invention.

Israeli courts also recognise infringement by joint tortfeasors (such as aiding or inducing infringement) who are then jointly and severally liable. Liability as joint tortfeasors is based on the provisions of the general Torts Ordinance concerning joint tortfeasors.

Furthermore, the courts have recognised a court-made doctrine of contributory infringement. Contributory liability does not require a showing of concerted action between the direct infringer and the contributory infringer. The concept of contributory infringement has been applied under the following accumulated conditions:

  • the defendant supplied some, but not all, of the components of the patented invention and these components form a substantial part of the invention;
  • the defendant knew or should have known that the components would be used for infringing purposes;
  • the components do not have a staple commercial product with a substantial non-infringing use.

In instances of liability, it has not been definitively ruled whether a specific instance of a direct infringement must be shown, and it remains an open issue whether the direct infringer must be joined in proceedings.

Remedies for indirect infringement are the same as for direct infringement.

The Patents Act defines infringement as exploitation of the invention in the manner defined by the claims or in a similar manner that in light of the claims involves the essence of the invention.

Thus, in addition to protection against literal infringement, the Patents Act also confers protection against infringement of the 'essence of the invention' (gist) sometimes also referred to as the 'doctrine of equivalents'.

In addition, the Supreme Court emphasised the principle of reading the patent document as a whole. As such, the specification cannot be used to broaden the scope of the claims and cannot be used selectively and it is the rule that interpretation of the claims should be purposive. It has been decided that claim construction aims at ascertaining the inventor’s intention expressed in the patent document, as understood by a person having an ordinary skill in the art in the relevant field, given the knowledge existing on the determining date.

A patentee is expected to formulate the patent claims with a reasonable degree of clarity. The Supreme Court enunciated several criteria to assist in determining whether the reasonable degree of clarity was achieved:

  • the complexity of the field of the invention and the difficulty of describing the invention clearly;
  • the ability of the language to describe the invention in a better way; and
  • unwarranted ambiguity operates against the author toward a narrower reading of the claims, whereas the invention’s greater contribution to the field allows for a more liberal construction of the exclusive right afforded by the claims.

Where the proper interpretation of the patent document is unclear, the Israeli and foreign file wrappers may aid in the interpretation. It should be noted, however, that the Supreme Court left open the question of whether or not the doctrine of file wrapper estoppel is applicable in Israel.       

Claim construction is an issue of law.

The available defences against infringement are (this is not an exhaustive list):

  • non-infringement (the claims do not cover the accused product or method);
  • non-infringement (exceptions to the definition of 'exploitation of an invention'; these include statutory 'experimental use' and 'Bolar-like' exceptions);
  • invalidity;
  • lack of standing to bring suit: a challenge to ownership of the patent is a defense since the right to bring an action for patent infringement belongs to the patentee or to the exclusive licensee provided the licence has been duly recorded in the patents register. Any of the co-owners or the exclusive licensee may sue alone, but the suing party must join all other co-owners (and the exclusive licensee, where an exclusive licence was granted). Failure to comply with the above will result in claim dismissal;
  • prior use rights (see 1.9 Consequences of Failure to Pay Annual Fees);
  • statute of limitation and laches: laches is a strong defence in interim relief proceedings. However, it will only be considered a defence in the main action in rare and exceptional circumstances;
  • equitable estoppel: as a general principle, a plaintiff may be estopped from bringing an action if his or her conduct through action or inaction is such that the defendant reasonably infers that the plaintiff would not enforce the patent against him or her, and the defendant relied on such conduct and materially changed his or her situation based on this reliance. Acquiescence will not be easily inferred;
  • patent exhaustion: the Patents Act does not expressly deal with this matter. However, Bristol-Myers Squibb Company v The Minister of Health, examined the question of whether parallel importation of patented medicine to Israel is allowed and although the issue arose obiter dicta (such that no decision was made on the merits), the judge expressed opinion in favour of the international exhaustion of rights;
  • compulsory licence and compulsory licence to exploit an earlier patent: compulsory licences are theoretically available (see 2.12 Representative or Collective Action). However, the claim to entitlement to a compulsory licence (not actually granted) is not a defence;
  • market overt: there is controversy among scholars with respect to the question of whether 'market overt' is a defence in cases of patent infringement. Although this matter was discussed at District Court level, it has not yet been decided on by the Supreme Court;

Experts engaged by the parties: experts are frequently engaged by parties to proceedings, both in Patent Office litigation and in infringement litigation before district courts. Foreign experts may file their opinions in English. During trial, the experts will be cross-examined on their opinions. 

Court appointed experts: in proceedings before the Patent Office, no experts are appointed by the Registrar. If necessary, the Registrar is aided by one of the examiners.

A district court trying an infringement action may appoint an expert. The court-appointed expert may be cross-examined by both parties (plaintiff and defendant). The default rule is that a court-appointed expert renders parties' expert opinions inadmissible. Pending final judgment, the parties will typically be ordered to share the costs of the court-appointed expert.

The District Court also has power to appoint an assessor (a scientific adviser) who assists the judge in taking evidence and may render advice to the judge, but shall not take part in rendering the judgment. The costs for the court-appointed scientific adviser are paid by the State Treasury.

In Israel there is no Claim Construction Hearing ('Markman hearing') in which the judge examines the evidence of the parties in order to understand the appropriate meaning of the key words of the patent claims.

Gilat, Bareket & Co., Reinhold Cohn Group

26A Habarzel Street
PO Box 13136
Tel-Aviv
Israel
6113101

+972 3 567 2000

+972 3 567 2030

info@gilatadv.co.il www.rcip.co.il/en/gilat-bareket/
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Gilat, Bareket & Co., Reinhold Cohn Group is the leading intellectual property consulting firm in Israel and offers a broad range of related services and expertise, including protection, asset management, due diligence, litigation and legal services. The firm operates in all areas of IP, such as patents, trade marks, designs, copyrights, open source, plant breeders' rights, etc. The group includes the patent attorneys firm Reinhold Cohn & Partners and the law firm Gilat, Bareket & Co., which specialises in litigation and the legal protection of intellectual property rights in patents, technology, brands, designs, creative works and inventions. Gilat, Bareket & Co. employs 24 attorneys at law, several of whom also hold academic degrees in sciences. Key practice areas include filing suits for patent infringement in courts, representing clients before the Patents Registrar, rendering opinions regarding infringement and freedom to operate, and counselling on service intentions. The author would like to thank Keren Lindenfeld and Tomer Rosenfeld, present and past associate attorneys of Gilat, Bareket & Co., Reinhold Cohn Group, for their assistance.

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