At a glance: patent enforcement proceedings in Israel

Patent enforcement proceedings

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

There are no specialised courts in which a patent infringement lawsuit may be brought and redress may accordingly be sought against infringers by filing suit with the relevant district court.

What is the format of a patent infringement trial?

Similarly to other civil actions, patent infringement proceedings comprise the following stages: the filing of statements of arguments by the litigants, engaging in preliminary discovery proceedings, the filing of evidence (usually in the form of written expert opinions or affidavits presenting factual evidence, including experiments), holding a cross-examination hearing (during which all witnesses, including expert witnesses, are subject to cross-examination) and the submission of summations. Effective 1 January 2021, new Civil Procedure Regulations (CPR) have come into effect. According to the new CPR, the default procedure with respect to witnesses and summations is for them to be heard orally, although the court may order that they be submitted in writing instead. It is yet unclear whether the new default will, in practice, be embraced in patent litigation or whether judges will prefer to defer and order the submission of written affidavits and summations.

One or more pretrial hearings are usually conducted, largely to identify the disputed issues and make the trial process more efficient. According to the new CPR, the parties must attend a pretrial meeting to examine the possibility of resolving the dispute through an alternative dispute resolution mechanism and, if impossible, at least agree on steps to be taken in order to make the legal proceedings more efficient.

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

In general, the burden of proof for establishing infringement in patent infringement suits lies with the patentee, while the burden of proof for establishing invalidity and unenforceability, lies with the defendant. An exception to that applies to process patents, where in certain circumstances the defendant will need to prove that the patented process was not used to manufacture an identical product. The standard of proof to which both parties are subject is the balance of probability.

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

Infringement proceedings may be initiated by the patentee, an exclusive licensee or any joint owner of the patent.

A potential defendant may apply to the court as a protective measure, seeking a declaratory judgement that its exploitation of an invention does not amount to patent infringement (a declaration of non-infringement), provided that they first contacted the patent owner who refused to provide such a declaration or failed to provide same within a reasonable period of time. Such proceedings are conducted before the district court under the presumption that the patent is valid. No arguments challenging the validity of the patent may accordingly be raised. Prior to seeking redress from the court, the potential defendant should contact the patent owner, disclose fully the details of the product or process they intend to use and request the identical declaratory relief that they now seek to obtain from the court.

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

Liability may be imposed on a person who is found to have collaborated with the direct infringer in realising the infringement. According to the Supreme Court judgment in CA 1636/98 Rav Bariach v Havashush Car Accessories Trading House (1987) Ltd [2001] IsrSC 55 (5) 337 (Rav Bariach), establishing liability as joint tortfeasors requires showing direct infringement as well as concerted action between the tortfeasors in attaining the common goal of infringement. The Supreme Court later ruled that the company’s organs may be liable with the company as joint tortfeasors, if said requirements are fulfilled.

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

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

The Supreme Court did not clarify whether direct infringement must occur within Israel for liability to become operative.

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

In general, any person or entity who is necessary to enable the court to address the lawsuit fully and effectively may be added as a party to a litigation, provided that the factual or legal questions that arise from the lawsuit are common to all the parties. If the plaintiff is uncertain as to who is the proper defendant, then the suit may filed against multiple defendants, and the question of liability and its extent with respect to each defendant will be examined in court.

In addition, if the patent owner or any of the joint owners or an exclusive licensee has not joined the lawsuit as an additional plaintiff, then they must be joined as additional (formal) defendants in the lawsuit.

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

In general, a patent is a territorial right. However, in one case the district court deviated from the principle of territoriality and noted that activity conducted in Israel involving, or resulting in, exportation of the patented invention may constitute patent infringement, 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 (DCA 814/05 (Jer) & CC 7076/05 (Jer) Orbotech Ltd v Camtech Ltd [2005]). 

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

Infringement may be established where the invention is exploited in a manner similar to that described in the claims and use is made of the essence of the invention. 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 functions in substantially the same way, and substantially achieve the same result as described in the patent (CA 345/87 Hughes Aircraft Company v The State of Israel [1990] IsrSC 44(4) 45).

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Within the context of the preliminary proceedings, each party is required to discover relevant documents, provide copies thereof for inspection by the other party, and reply to questions forwarded to it by way of interrogatories. All answers must be provided in the form of an affidavit. Disagreements regarding discovery and inspection may be brought before the court. Costs may be imposed on a non-complying party. In some cases, non-compliance may further result in striking of the claim or defence.  

In addition, according to the new CPR, a pretrial meeting between the parties must be held, during which each party is required to allow the other party to inspect documents and respond to questions to the extent the documents and answers are required to clarify and possibly limit the scope of the matters in dispute.   

Another possibility for obtaining and preserving evidence is by means of an Anton Piller order, which allows entry to the premises of the defendant and search and seize all relevant documents and evidence, although an order to such effect is rarely applied in patent infringement proceedings. A temporary receiver over any property may be appointed by the court, and an inspection of any property or article in relation to which a question has arisen in the action may be ordered.

The manner for obtaining evidence from third parties is limited. However, it may be possible to compel a third party to produce certain evidence or documents relevant to the suit (eg, by summoning them to attend the trial and produce the sought evidence as a witness).

There are various mechanisms for obtaining evidence from abroad, including taking evidence by a person appointed by the court or by video conference. In addition, procedures are available for seeking assistance from foreign authorities for the purpose of taking evidence in their jurisdictions, either in reliance on the Hague Convention on the Taking of Evidence Abroad in Civil and Commercial Matters or in accordance with the Legal Assistance Between States Law 1998.

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The average duration of a patent infringement suit is two to four years before the trial court and if the lower instance’s decision is appealed, two years before the appellate court (the Supreme Court). The duration may vary based on the complexity of the case. The new CPR may also affect the duration of such cases.

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

Costs are difficult to estimate and may vary significantly, depending on the complexity of the case, the parties involved and the legal representation. Legal fees may range between US$200,000 and US$800,000 for the main claim and US$100,000 to US$300,000 for interim injunction proceedings. In appeal proceedings, the legal fees may range between US$50,000 and US$150,000. 

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

An adverse decision rendered by the trial court may be appealed to the Supreme Court either by way of right (where the decision of the lower court concludes the dispute brought before it) or by obtaining special leave to appeal (eg, decisions in interim proceedings).

As a rule, the appeal is based on the trial transcript as well as the pleadings and evidence submitted in the lower instance. The appellate court generally refrains from interfering with the factual findings of the trial court and instead tends to focus on the legal issues; it may nonetheless be more inclined to allow the submission of new evidence in patent cases, as opposed to other civil cases.

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

The Economy Competition Law, 1988 (the ECL) exempts arrangements whereby the owner of an Israeli registered patent imposes restrictions on the use of its patent. Notwithstanding this, the Competition Tribunal has held that such exemption would not apply to a patent owner who abuses his monopolistic position. Therefore, ownership of a patent does not necessarily establish immunity from scrutiny under the ECL, if the patent owner is a dominant player in the relevant market sector. The settlement of patent infringement disputes may also be subject to the ECL.

Generally, a bona fide attempt to enforce a patent would not impose liability on the patentee (save for costs that the court is authorised to order should the claim be dismissed). However, in a precedential decision rendered by the Central District Court (CC  33666-07-11 Unipharm v Sanofi (2015)), it was held that misleading the Registrar of Patents (the Registrar), intentionally or as a result of gross negligence, in an attempt to obtain a patent, constitutes abuse of a dominant position or unjust enrichment, thereby entitling the plaintiff to claim all or part of the patentee’s profits under the Unjust Enrichment Law, 1979. The decision may also infer that a patentee may be found liable under the ECL for threatening or commencing litigation to enforce a patent that the patentee knew was invalid, or against a defendant whom the patentee knew was not infringing the patent. Interestingly, in a subsequent case (CC 38568-10-11 Unipharm Ltd v Glaxo SmithKline plc (2018)) a contradictory decision was rendered. Appeals on both decisions are currently pending before the Supreme Court.

Abuse of a dominant position by a patent owner may also lead to the grant of a compulsory licence by the Registrar. However, in practice, very few applications seeking a compulsory licence have been filed.

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Patent disputes can be referred to arbitration as an alternative dispute resolution mechanism. Nonetheless, the outcome of the arbitration award is limited to the parties and has no in rem effect. Patent infringement disputes can thus be brought before an arbitrator; however, the arbitrator’s findings are binding only on the litigants.

Mediation is also available as an alternative means for resolving patent disputes.

Law stated date

Give the date on which the information above is accurate.

1 January 2021.