Last Updated October 14, 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 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;
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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