Patent Litigation Comparative Guide

• Published date: 12 February 2024
• Law Firm: Gilat Bareket & Co., Reinhold Cohn Group.
• Author: Ms Mor Goldblum and Eran Bareket

1 Legal framework

1.1 Which laws and regulations govern patent litigation in your jurisdiction?

The laws and regulations that govern patent litigation in Israel are:

• the Patents Act, 1967 and the regulations thereunder;
• the Judicators Act, 1984; and
• the Civil Procedure Regulations, 2018.

1.2 Which bilateral and multilateral agreements with relevance to patent litigation have effect in your jurisdiction?

In terms of substantive patent law, Israel is party to several bilateral and multilateral agreements. These include:

• the Paris Convention for the Protection of Industrial Property;
• the Patent Cooperation Treaty; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights.

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the patent laws? What is the framework for doing so?

The district courts have jurisdiction over patent infringement cases and other patent-related disputes. A district court before which a patent infringement case is litigated may enforce the patent through:

• injunctions (temporary or final); and
• the award of damages.

If the defendant successfully defends the patent infringement case based on invalidity:

• the patent will be deemed invalid in rem; and
• the Patents Register will be amended accordingly.

The district courts also have jurisdiction over actions seeking declaratory judgment of non-infringement (but may not address validity issues within the framework of such an action). Decisions of the district court may be appealed to the Supreme Court, with the final judgment being appealable by way of right.

Pre-grant opposition proceedings and post-grant revocation proceedings are conducted before the Patent Office.

Service inventions disputes (ie, disputes over entitlement to inventions conceived by an employee and disputes over remuneration claimed by an employee for a service invention conceived by him or her) may be heard by:

• a special tribunal within the Patent Office;
• the registrar of patents; or
• the civil system courts.

All of the foregoing instances may interpret the Patents Act during the course of litigation before them.

2 Forum

2.1 In what forum(s) is patent litigation heard in your jurisdiction? Are patent infringement and validity decided in the same forum or separate forums?

See question 1. Except for the special case of an action for declaratory judgment of non-infringement, validity and infringement are decided by the same forum.

Arbitration of patent disputes is also possible.

2.2 Who hears and decides patent disputes (eg, a judge, a panel and/or a jury)?

Patent infringement disputes litigated before the district courts are heard by one professional judge. Unlike some legal systems, Israel does not have a jury system. Therefore, patent disputes are decided by legal professionals, rather than by a jury.

Appeals on final judgments of the district court are heard by a panel of three judges of the Supreme Court.

Pre-grant oppositions and post-grant revocation actions are heard by:

• the registrar of patents;
• the deputy registrar of patents; or
• a hearing officer of the Patent Office.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

Israel, being a small country, has only five district courts and opportunities for forum shopping are relatively limited. Most infringement cases are heard before the Tel Aviv District Court or the Jerusalem District Court.

In addition, a party fearing that it might be sued for patent infringement may pre-emptively file a post-grant revocation action with the Patent Office. If such an action is filed before commencement of the infringement proceedings, the Patent Office may continue hearing the action, unless the district court issues a decision enjoining further hearing of the post-grant revocation action. A subtle practice of forum shopping is a patent infringement defendant filing a request with the district court to order a stay of the infringement proceedings pending filing of a post-grant revocation action with the Patent Office subsequent to filing of the infringement action.

While there is no duty to clear the way in Israel, potential defendants – particularly in the pharma and biotech industries – closely monitor the Patents Gazette and lodge pre-grant oppositions. This results in most disputes taking the form of pre-grant oppositions, rather than infringement actions.

3 Parties

3.1 Who has standing to file suit for patent infringement? What requirements and restrictions apply in this regard?

The following entities have standing to file a suit for patent infringement:

• the patent owner;
• a co-patent owner; and
• an exclusive licensee.

A non-exclusive licensee does not have standing to bring a patent infringement action.

If there is more than one entity with standing to bring a patent infringement action, the plaintiff must join all other such entities as parties to the litigation.

3.2 Can a patent infringement suit be brought against a defendant who is a foreign entity with only a residence or place of business outside the jurisdiction?

Yes. If the plaintiff has a cause of action of patent infringement against a non-resident, the Israeli courts can have jurisdiction over a patent infringement suit in Israel against a defendant which is a foreign entity with only a residence or place of business outside the jurisdiction, under certain conditions. The availability of the cause of action of patent infringement generally requires some activity within the territory of Israel.

If the defendant is not an Israeli resident, acquisition of international jurisdiction over the defendant requires service of a court process. This may be done by:

• serving the court process while the defendant is temporarily resident in Israel;
• serving the court process to the defendant's business representative in Israel, where one exists; or
• seeking leave from the district court to serve the court process outside the jurisdiction based on certain enumerated grounds.

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

Yes, it is possible to bring a single infringement action against multiple defendants.

If all defendants are involved in the infringement of the same patent, joining all as co- defendants is customary and routine. The legal basis for this practice is Rule 26 of the civil rules of procedure, which provides that:

A plaintiff may combine all causes of action against a defendant in one lawsuit due to the same factual basis, and is also permitted to combine other causes of action against the same defendant in one lawsuit, all subject to the relevant jurisdiction of the court.

That said, the court has discretionary power to order separation of the litigation, if justice so requires.

3.4 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

A party seeking to exploit a product or process can file a request with the court to obtain a declaration that its intended exploitation does not infringe a specified patent. The applicant must:

• provide detailed information about the origin or process it plans to use; and
• ask the patent owner to voluntarily confirm non-infringement on condition of initiating such litigation.

The patent owner and/or the exclusive licensee of the patent will be named as respondents in this request. Only the Jerusalem District Court and the Tel Aviv District Court have jurisdiction to adjudicate such requests.

Additionally, the registrar of patents has the authority to cancel a patent upon petition by any person that is not the patent owner if there are valid grounds to oppose grant of the patent. The statute of limitations does not apply to a petition for cancellation under this section. District courts do not have jurisdiction to adjudicate requests for declaratory judgment of invalidity (but can declare a patent invalid if the defendant in an infringement action successfully shows that the patent is invalid).

4 Patent infringement

4.1 What constitutes patent infringement in your jurisdiction?

'Patent infringement' is defined as exploitation of the invention for which the patent has been granted, either in the manner prescribed in the claims or in any manner which involves the essence of the invention subject matter of the patent, considering the definition in such claims, without consent or unlawfully. The term 'exploitation of an invention' is defined as follows:

(1) In respect of an invention that is a product – any act that is one of the following: production, use, offer for sale, sale, or import for purposes of one of the enumerated acts;

(2) in respect of an invention that is a process – use of the process, and in respect of a product directly derived from the process – any act that is one of the following: production, use, offer for sale, sale, or import for purposes of one of the enumerated acts;

but excluding any of the following:

(1) any act that is not performed on a commercial scale and is not commercial in character;

(2) any experimental act in connection with the invention, the objective of which is to improve the invention or to develop another invention;

(3) any act performed under the provisions of section 54A [a Bolar-type exemption].

4.2 How is infringement determined?

Section 49 of the Patents Law defines 'patent infringement' as the unauthorised exploitation of a patented invention, either in a manner precisely described in the claims or in a similar way that captures the essence of the...