An extract from The Patent Litigation Law Review, 6th Edition

Types of patent

Patents in Israel are national and are granted for a period of 20 years from the date of filing. Patents of addition remain in force throughout the duration of the main patent. The Israeli legal system does not provide protection for utility models, nor are short-term patents available in Israel.

Generally, patents are granted based on a full substantive examination. It is also possible to request abbreviated examination based on a corresponding foreign patent granted in certain jurisdictions (e.g., the European Patent Office or the US Patent Office). In addition, the ILPO has signed several bilateral Patent Prosecution Highway and Patent Cooperation Treaty–Patent Prosecution Highway agreements with various national offices, which permit the usage, under certain circumstances, of search and examination results of those offices.

The Registrar is empowered to extend the term of certain patents for an additional term, and subject to certain conditions the term is capped. A patent extension order may be granted only in respect of 'basic patents'. In general, a basic patent protects either a pharmaceutical product, a substance (an active ingredient in a pharmaceutical product), a process for the manufacture or use of such substance or product, or a medical device for which a marketing authorisation is required in Israel.

Substantive law

i Infringement Definition of infringement

The Patents Law defines 'infringement' as exploitation of the invention for which a patent has been granted unlawfully or without the permission of the patentee, whether in the manner defined in the claims or in a manner similar thereto and involving the main features, as defined in the claims, of the invention that is the subject matter of the patent.

The definition of 'exploitation of an invention' varies depending on the matter at hand. In relation to:

  1. an invention that is a product, it is defined as the production, use, offer for sale, sale or import for the purpose of any of the aforementioned acts;
  2. an invention that is a process, it is defined as the use of the process; and
  3. a direct product of a process, it is defined as the same activities listed with respect to an invention that is a product.

The Patents Law lists the following exemptions to patent infringement:

  1. activity that is not on a commercial scale nor of a commercial nature;
  2. experimental use in respect of an invention for the purpose of improving an invention or developing another invention; and
  3. experimental use for the purpose of obtaining registration for marketing the product after expiry of the patent if the use was done to obtain registration in Israel or in any other country that permits experimental use for the purpose of obtaining registration before expiry of the patent, and provided that all products manufactured within the framework of this exemption will not be used for any purpose other than obtaining the above registration either during the term of the patent or thereafter (Bolar-like exemption).

While the list of acts constituting exploitation of an invention is a closed list that does not mention exportation, in one case the district court noted that activity conducted in Israel involving or resulting in exportation of the patented invention may be considered exploitation of the invention if it is on a commercial scale or of a commercial nature and interferes with the exclusive right of the patentee to exploit the invention in Israel.6

The scope of the patent is defined by its claims. The claims are interpreted in light of the description in the specification. The claims must be given purposive interpretation. The applicability of file wrapper estoppel was left open by the courts and the Registrar; however, correspondence between the patentee and the ILPO may assist the court in assessing the scope of the patent.7

Infringement may also be found where the invention is exploited in a manner similar to that defined in the claims and making use of the essence of the invention. In this regard, the Supreme Court adopted the doctrines of equivalents or variants (or 'pith and marrow') and noted that a product or process that replaces components or omits immaterial components of a patent may still be considered infringing, as long as the product or process do the same work in substantially the same way and substantially accomplish the same result.8

Indirect infringement

Liability may be imposed on a person who collaborated with the direct infringer in attaining the infringement. Establishing liability as joint tortfeasors requires showing direct infringement as well as concerted action between the tortfeasors towards the common goal of infringement.9

In the Tsuk Or case,10 the Supreme Court ruled that the company's organs may be liable with the company as joint tortfeasors if the requirements are fulfilled.

The contributory infringement doctrine, which was adopted by the Supreme Court in the Rav Bariach case,11 provides broader applicability. The Supreme Court set the following requirements for establishing contributory infringement:

  1. the components used by the indirect infringer constitute a material part of the invention;
  2. the indirect infringer knew, or should have known, that the components had been especially made or especially adapted for use in the infringement of a patent; and
  3. the components are not staple products that can be substantially used in a non-infringing manner.

The Supreme Court did not clarify whether direct infringement must occur within Israel in order for liability to arise.

ii Invalidity and other defences

Typical defences in patent infringement actions may include the following:

  1. non-infringement – the defendant may argue that the product or process in dispute is not covered by the claims or that his or her activity is not included in the statutory list of activities amounting to exploitation of an invention. Sometimes the defendant may claim that his or her activity comes under the statutory exemptions to patent infringement (see Section IV.i);
  2. licence to exploit the patent;
  3. the defendant is the owner of the invention;
  4. right based on prior exploitation or actual preparation for exploitation in Israel in good faith on the date the application was submitted in Israel or the date of the priority application. The exploitation or preparation should be on a commercial scale and of a commercial nature;
  5. statute of limitation (in respect of damages rather than an injunction) or waiver;
  6. invalidity, for example:
    • not a patentable subject matter;
    • lack of novelty;
    • obviousness;
    • inutility;
    • insufficiency of disclosure; and
    • covetous claims – namely, the claims are not fairly based on the description.

The list is non-exhaustive.

The Patent Examination Guidelines published by the ILPO provide that to be patentable an invention must fall within a technological field – namely, it must involve a concrete technological process. Computer programs, as such, are not patentable. If a computer program has the effect of changing any physical properties, causes the computer to work in a new way or establishes connections between system components that did not previously exist, an indication may exist that the invention falls within a technological field.

Similarly, methods of doing business are not patentable as such as they fall within the field of commerce and are, therefore, not considered industrial. Patents will not be granted for methods of therapeutic treatment of the human body or for new varieties of plants or animals, except for microbiological organisms not derived from nature.

According to the Supreme Court's landmark judgment in the Hughes case, a novelty-destroying publication must disclose all elements of the invention. The publication may be read in light of the general common knowledge possessed by persons skilled in the art before the effective date.12 However, in a later decision, the Supreme Court ruled that novelty may be lost as a result of a disclosure containing the essence of the invention.13

Another test for assessing novelty is the infringement test ('that which infringes if later, would anticipate it earlier').14 Case law shows that the courts tend to accept the doctrine of inherency (when following a prior publication would necessarily result in the same invention).

Obviousness is assessed through the eyes of a person skilled in the art who possesses average ability – in other words, no inventive skills. Unlike novelty-destroying disclosure, inventive step may be negated based on multiple publications; however, their combination ('mosaic') must be obvious to a person skilled in the art.

Another test applied in the context of inventive step is 'the obvious to try' test, assessing whether a person skilled in the art would have been motivated, based on the prior art, to undertake the route taken by the patentee with a reasonable expectation of success.15 Objective evidence may also give an indication on the obviousness of the invention. Such evidence (sub-tests) may include evidence of commercial success, long-felt need, failure of others and unexpected results.16

The utility requirement is met if the promised result is achieved when following the information given in the specification. A credible promise of utility is usually sufficient when applying for a patent. The patentee may be required to provide evidence of utility in the framework of opposition or revocation proceedings, where the utility of a given invention is challenged.

The description must enable a person skilled in the art to perform the invention without the exercise of inventive skills. A reasonable degree of routine experiment is permissible and best mode disclosure is not required.

The claims must clearly and precisely define the claimed monopoly. The claims must also reasonably be based on the description included in the specification.

In an obiter dictum, the Supreme Court indicated that it tends to adopt the 'international exhaustion' doctrine and, in any event, held that parallel import does not amount to patent infringement.17