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Enforcement through the courts
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.
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