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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

The Patent Office grants patents. According to Section 3 of the Patents Law 1967, to qualify for a patent, an invention must:

  • be a product or process in any technological field which is new, non-obvious and susceptible to industrial use; and
  • satisfy the utility requirement.

Under the Patent Office’s Patent Examination Guidelines, in order for an invention (be it a product or process) to fall within a technological field and thus be patentable, it must have real-world effect – in particular, a technical effect on a physical entity in the real world.

What are the limits on patentability?

Patents will not be granted for:

  • computer programs as such;
  • therapeutic treatment methods for humans; and
  • new varieties of plants or animals, except for microbiological organisms not derived from nature.

Further, patents will not be granted for inventions covering business methods as such.

To what extent can inventions covering software be patented?

According to the Patent Examination Guidelines, if a computer program changes any physical property of a computer, causes it to work in a way which is considered novel (eg, enhances a computer’s performance by increasing speed, reliability or data storage efficiency) or establishes connections between system components that did not previously exist, the invention falls within a technological field. Further, actual computer code may be protected as copyrightable material.

To what extent can inventions covering business methods be patented?

Patents will not be granted for business methods as such, since they fall within the field of commerce and are therefore not considered industrial. However, ‘hybrid’ inventions relating to a business method that are coupled with other technical elements or features may fall within the scope of a technological field and will thus be patentable.

To what extent can inventions relating to stem cells be patented?

The Patents Law contains no provisions specifically referring to stem cells; nor does it exclude them from patentability. Natural substances are excluded from patentability, but a process for isolating natural substances (eg, stem cells) or any other inventive modification may be patented.

Are there restrictions on any other kinds of invention?

The Patents Law imposes several restrictions on inventions that affect national security and nuclear energy in Israel. With respect to inventions in these fields, the relevant minister may:

  • order the Registrar of Patents to delay or refrain from taking action under the Patents Law; and
  • prohibit or limit any publication regarding applications for protection of these types of inventions and the information included therein.

Under certain circumstances, these orders may include compensation for the applicant.

The Patents Law does not exclude inventions that might contravene public order from patentability.

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

No – however, the Patents Law provides that the novelty of an invention will not be lost by an existing publication in specific circumstances, such as where the invention was made public without the express permission of the inventor or where the invention is exhibited in an exhibition or lecture hall. This so-called ‘grace period’ lasts no more than six months. Patent applications filed in Israel may claim priority from applications filed in World Trade Organisation countries.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

Anyone can oppose a patent application within three months of the date on which the Patent Office accepts and publishes the application. The opposition must be based on one or more of the following grounds:

  • Any ground which gives the registrar a valid reason to deny the patent application.
  • The invention is not patentable according to Section 4(2) of the Patents Law, in relation to prior use; prior use is not examined during prosecution.
  • The opposing party – not the applicant – is the inventor.  

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

During examination of a patent application, anyone can submit documents which relate to the validity of the patent application to the examiner, provided that they are submitted within the timeframe specified in the Patents Law. In addition, anyone can submit an application for revocation of a patent to the registrar. Applications may be submitted at any time and do not require particular standing.

How can patent office decisions be appealed in your jurisdiction?

Patent Office decisions may be appealed before the registrar or a deputy or hearing officer. Decisions of the registrar (or a deputy or hearing officer as applicable) may be appealed before the district court, which acts as an appellate court.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

According to the 2015 Patent Office annual report, the average pendency for first examination of a patent application is 30.4 months, and the average period for examination of a patent application is 30 months (this data relates to patent applications submitted between 2006 and 2015).

The expected level of costs is difficult to estimate, but they will likely amount to a few thousand dollars, including the Patent Office’s official fees (approximately $500) and patent attorneys’ fees.

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

After a patent has been granted, the rights therein can be enforced by filing suit with the relevant district court. Before filing an action, it is customary for the plaintiff to send a cease and desist letter to the alleged infringer. It is also customary for patent owners to seek relief in the form of:

  • injunctions (including interim injunctions);
  • financial compensation;
  • delivery up (only under exceptional circumstances); and
  • costs.

In interlocutory proceedings, the court will generally regard a patent registration certificate as prima facie evidence of an existing right and will not examine the issue of validity; however, this general rule is not always applied.

What scope is there for forum selection?

In general, no scope for forum selection exists, except where jurisdiction can be established in more than one district court. Under the Patents Law, patent infringement actions are initiated by submitting a statement of claim to the relevant district court, in accordance with the local jurisdiction. Israel has no special IP courts or divisions. District court decisions can be appealed before the Supreme Court.

Pre-trial
What are the stages in the litigation process leading up to a full trial?

Patent infringement procedures are similar to those employed in other civil actions, as described below.

Alongside the submission of a statement of claim, a plaintiff can apply for an interim injunction. Interim injunctions are granted by the court as a form of temporary relief and their main purpose is to preserve the status quo until the court reaches a final decision. Following submission of a statement of claim, statement of defence and statement in reply (the latter being optional), a pre-trial hearing will usually be scheduled either to hear applications filed by the parties with respect to the pleadings or at the initiative of the court. Either the court registrar or the judge presiding over the case will conduct pre-trial hearings. Judges have significant power and may give orders to simplify trial procedures. Judges may also:

  • consider the parties’ pleas and any motions to strike out;
  • order the joinder of parties;
  • rule that further and better particulars for the pleadings be given;
  • entertain discovery and interrogation requests;
  • grant interim relief; and
  • order that evidence in chief be submitted by way of affidavits.

Depositions are not available in Israel.

Issues that are decided in pre-trial hearings cannot be reopened at trial. Further, trials are conducted in accordance with pre-trial decisions, unless the court deems it necessary to alter a pre-trial decision.

In addition, the court may request testimony from witnesses abroad, if it deems this necessary for the sake of justice and based on court directives. Israeli case law states that, for the purpose of obtaining testimony, it is preferable to apply the Hague Convention on the Taking of Evidence Abroad in Civil and Commercial Matters. Obtaining testimony by means of video conference may also be possible in certain circumstances.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

If a defendant argues that an invention is not new or is obvious, its statement of defence must include the full particulars of any prior publication or use. Defendants can request extensions for filing statements of defence in order to conduct prior art searches, which may delay proceedings. In addition, defendants may submit an application for revocation of the patent, even after filing an infringement suit. If a revocation suit is filed while an infringement action or other revocation suit is pending in court, the registrar will entertain it only with the express permission of the court. If an infringement suit is filed with the court after an application for revocation has been filed with the registrar, the registrar will entertain the application unless otherwise ordered by the court.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

An application for revocation of a patent is submitted to the registrar, in accordance with the following procedures:

  • The revocation application must include all arguments and facts on which the applicant relies, together with supporting evidence.
  • The patentee must submit its arguments in response to the registrar, together with supporting evidence.
  • The applicant can submit evidence in reply.

Evidence is generally submitted by way of affidavits and expert opinions, which are subject to cross-examination.

The registrar is authorised to revoke a patent if the patent application could have been opposed. The statute of limitations does not apply to revocation proceedings.

At trial
What level of expertise can a patent owner expect from the courts?

There are established IP courts or tribunals (other than the Patent Office) which specialise or have expertise in patents or patent litigation. The registrar is usually more familiar with the scientific aspects of a case, while the courts may be more reluctant to enter into scientific discussions. In proceedings based on the Patents Law (typically in patent infringement cases), the courts may appoint a scientific adviser. The adviser assists the court in collecting evidence and advises the court, but plays no role in rendering the judgment. The courts usually appoint scientific advisers in technologically challenging and complicated cases.

Are cases decided by one judge, a panel of judges or a jury?

Jury trials do not exist in Israel. Cases heard by the registrar are heard only by the registrar (or a deputy or hearing officer). District court cases are heard by a single judge, regardless of whether the district court is acting as an appellate court or adjudicating an infringement suit. Supreme Court cases are decided by a panel of judges, whose decisions are adopted by majority opinion.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Jury trials do not exist in Israel.

What role can and do expert witnesses play in proceedings?

If a party wishes to present expert testimony in support of one of its arguments, an expert opinion must be submitted to the court and served on all other parties to the proceedings. The other parties can cross-examine the expert. With respect to scientific advisers, the courts can appoint experts to assist and advise them on complex or technologically challenging subject matter disputed by the parties; however, court-appointed advisers play no role in rendering a judgment. Court advisers cannot be cross-examined.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The doctrine of equivalents applies in Israel and is used to prevent indirect infringement attempts. The doctrine applies in circumstances where a device or process does not fall within the literal scope of the patent claims, but nevertheless is equivalent to the claimed invention. According to the doctrine of equivalents, a product or process that replaces components or omits marginal and unnecessary components of a patent may still be considered infringing, as long as the product or process in question functions in the same way as the protected patent and is arrived in a similar fashion, in principle, as the patent.

The doctrine of variants also applies under Israeli law. Under the doctrine of variants, changes in the components of a protected invention which do not influence the function of the patent’s components will not escape liability.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Israeli law enables plaintiffs to obtain (according to the following provisions and principles) interim injunctions – particularly preliminary injunctions. Interim injunctions help to preserve the status quo until the court reaches a final decision in the main action. The principles under which interim injunctions are granted by the courts in patent infringement actions are essentially the same as those considered in other civil actions. In preliminary injunction proceedings, it is sufficient for an applicant to show that it has a prima facia case on the merits. The discretion of the court in preliminary injunction proceedings is governed by several principles and considerations. The primary consideration is whether granting an interlocutory injunction is so essential that the court is justified in intervening before the end of the trial. Other considerations are as follows:

  • Has the applicant succeeded in showing a prima facie case on the merits and that it has a reasonable chance of winning the case? It is paramount for plaintiffs to demonstrate prima facie infringement in preliminary proceedings, since the validity of the patent will likely not be discussed – certainly not thoroughly.
  • Balance of convenience or hardship – the court weighs or balances the 'injured' applicant (in the event that an interlocutory injunction is not granted) and the 'injured' defendant (in the event that an interlocutory injunction is granted, but eventually found unjustified).
  • Laches or delay – in the event of laches or unaccounted delays, the court will often reject interlocutory injunction applications.
  • 'Clean hands' – interlocutory injunction applications must include all pertinent facts, including relevant statements and decisions made in other proceedings.

Interlocutory injunctions are ancillary to the main proceedings. Their purpose is to ensure the effectiveness of the main relief (if granted at the end of the proceedings) and thus do not serve as a substitute for the requested relief.

The court may also consider the public interest.

How are issues around infringement and validity treated in your jurisdiction?

According to the Patents Law, revocation actions are not time barred and any interested party can submit a revocation application to the registrar at any time. The grounds for filing a revocation application are diverse and applicants can rely on any grounds which demonstrate that the patent should not have been granted in the first place. Moreover, defendants can raise invalidity arguments during infringement proceedings. The Patents Law provides that any ground on which the grant of a patent may be opposed can serve as a good defence during infringement actions. Lack of infringement is a common defence in infringement cases; however, invalidity is also a common defence in infringement cases and may include the following arguments:

  • The invention is not new.
  • The invention is obvious.
  • The invention does not satisfy the utility requirement.
  • There is no patentable subject matter.
  • There was insufficient disclosure.
  • The claims are not fairly based on the description.
  • The defendant is the owner of the invention.

The courts or registrar can revoke or disallow a patent, reduce its term or license its exploitation if the applicant:

submitted misleading material in response to the examiner's demand to submit relevant publications and references; or
knowingly failed to update the examiner of material changes in the list of publications or authorities relied on by foreign examination authorities.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

The Israeli courts may consider decisions in cases involving similar issues from jurisdictions that have a similar regime to Israel, mainly the United States, the United Kingdom and the European Union. Nevertheless, decisions from other jurisdictions are not binding in Israel. The actual applicability of judgments from other jurisdictions depends, to some extent, on the discretion of the judge – some judges perceive foreign decisions as relevant, while others do not.

Damages and remedies
Can the successful party obtain costs from the losing party?

As in other commercial and civil litigation in Israel, in principle, the successful party can obtain costs from the losing party. The successful party is entitled to real costs – in particular, the costs that it incurred or undertook to incur. However, the courts will also consider whether real costs are reasonable, proportionate and necessary for conducting the case in the circumstances. In practice, the level of costs determined by the courts are lower (in most cases, significantly lower) than the costs actually incurred.

What are the typical remedies granted to a successful plaintiff?

Under Israeli law, the typical remedies granted to a successful plaintiff include the following:

  • Financial compensation (damages) – damages are provided in order to compensate the injured party for the infringement. Where damages are claimed, the court may order the defendant to render an account of the extent of its infringement and the profits gained. The Patents Law also provides that once a patent is granted, the patentee will be retroactively entitled to damages in the form of reasonable royalties for any unauthorised exploitation of the invention between the date on which the patent application was published and the date of acceptance. Financial compensation is subject to general statutory limitation periods.
  • Restraining orders (permanent restrictive orders) – these restrain the infringer from continuing its infringing activities.
  • Delivery up of infringing material – although the Patents Law does not specifically provide for delivery up, one Israeli court found that this remedy falls within its inherent jurisdiction. However, the court emphasised that delivery up will be granted only in exceptional circumstances (ie, where enforcement of the injunction is ineffective or impossible).
  • Other remedies – in general, courts adjudicating on civil matters can grant declaratory judgments, prohibitive orders, orders for specific performance or any other relief, as they see fit.

How are damages awards calculated? Are punitive damages available?

Damages aim to put the injured party (ie, the rights holder) in the position that it would have been in had the infringement not occurred. The burden of proof rests with the plaintiff. When awarding damages, the court will consider the infringing act and the plaintiff’s position in consequence of the act, while considering, among other things:

  • the direct damages caused to the plaintiff;
  • the extent of the infringement;
  • the profits that the infringer derived from the infringement; and
  • reasonable royalties which the infringer would have had to pay had it been granted a licence to exploit the patent.

In principle, punitive damages are available and may be awarded in successful patent litigation. Further, the courts may order the infringer to pay punitive damages in addition to damages awarded to the plaintiff. Punitive damages may be awarded where an infringement is committed after the patentee or exclusive licensee has warned the infringer of the infringing activity. In such cases, the sum of the punitive damages cannot exceed the scope of damages enumerated above. In practice, the courts do not award punitive damages in infringement suits.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

If a plaintiff is successful, the court will usually grant a permanent injunction or restraining order. Permanent injunctions prevent the infringer from infringing the patent in future. As a rule, permanent injunctions remain in effect until the patent expires. The US judgment in eBay, Inc v MercExchange (547 US 388 (2006)) has not been adopted in Israeli case law as such. Nevertheless, in recent years the Israeli courts have been more willing to consider general considerations (eg, those concerning the public) when hearing injunction applications. This tendency may result in the grant of permanent injunctions becoming less frequent.

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

The entire procedure for seeking revocation of a patent before the Registrar (including the filing of the application, the submission of evidence, hearings, the filing of summations and the rendering of a decision) takes between one and-a-half and three years, depending on the complexity of the case. The average duration of opposition proceedings is about five and-a-half years.

A trial before the court of first instance takes approximately two years, depending on the complexity of the case.

During preliminary injunction proceedings, the court may determine that, instead of hearing an application for a preliminary injunction, the main action will be expedited. This makes it possible for plaintiffs to expedite the enforcement process somewhat.

How much should a litigant plan to pay to take a case through to a first-instance decision?

A litigant’s legal fees for initiating revocation proceedings before the registrar are difficult to estimate and may vary significantly from case to case, depending on the complexity of the case, the litigating parties and counsel. In general, legal fees range between $40,000 and $100,000 (excluding expert fees and costs). Legal fees payable by a litigant in infringement cases before the district court range between $75,000 and $250,000.

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

In first-instance proceedings, the losing party can appeal within 45 days of delivery of the judgment. A second appeal (where the district court acts as a court of appeal and reviews the registrar’s decision) or an appeal on a non-final decision may be filed only if leave to appeal is granted, usually by the court with which the appeal is filed. Applications seeking leave to appeal should be filed within 30 days of issuance of the decision.

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Conflicts that can legally be settled by agreement can form the subject matter of arbitration. In any case, the effect of an award is limited to the parties and has no in rem effect. Infringements can be brought before an arbitrator; however, findings are binding only on the litigants. An arbitrator cannot determine in rem that a patent is invalid. Thus, alternative dispute resolution procedures (eg, mediation or compromise) are rare in patent litigation.