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 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.

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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Author



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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