ISRAEL Law and Practice Contributed by: David Gilat and Jacob Kasulin, Gilat, Bareket & Co, Reinhold Cohn Group
1. Life Sciences and Pharma/ Biopharma Patent Litigation 1.1 Claimants/Plaintiffs to an Action Infringement
known as “sick funds” in Israel, are not sued in prac ‑ tice, despite their involvement in the distribution of patented drugs. Doctors who prescribe drugs are not sued and they might be exempted under the rule de minimis non curiat lex or under the so-called private use exemption. Healthcare regulatory authorities (HRAs) such as the Ministry of Health are not involved in infringement or revocation proceedings and are not required to be notified. The IPO is involved only where revocation proceedings are filed to the IPO. 1.3 Preliminary Injunction Proceedings Availability of Preliminary Injunctions and Timing of a Decision A party bringing an infringement claim may move for the issuance of an interlocutory injunction against the alleged infringer, including ex parte. The plaintiff-appli ‑ cant would normally file such motion alongside the fil ‑ ing of the case-in-chief, or beforehand, in situations of urgency, on the condition that the case-in-chief would be filed up to seven days following the issuance of a decision in the motion for preliminary injunction. In suitable cases, motion for a temporary injunction may be filed ex parte, and a decision may be issued without hearing the respondent, within a day or two at most, according to which a hearing would be set as soon as possible, and, in any case, within 14 days. If the court is disinclined to issue a temporary injunction ex parte, it will schedule a hearing as soon as possi ‑ ble, usually immediately after the defendant-respond ‑ ent filed its response to the motion for interlocutory remedies. Under the Civil Procedure Regulations (CPR), the hearing will take one day and will include oral summations. The court will then issue its decision immediately after the hearing and, in any case, no later than 14 days following the hearing. Considerations in Granting Preliminary Injunctions A court with which a motion for a preliminary injunc ‑ tion has been filed must be convinced that the matter is urgent and will first consider whether the plaintiff- applicant has shown a prima facie case for infringe ‑ ment. While the defendant-respondent may argue non-infringement, they will not be able to challenge validity at that stage unless invalidity of the alleged
An infringement action must involve, on the plaintiff’s side, the patent owner or its exclusive licensee. For an exclusive licensee to have standing to sue, it must be registered. On the defendant’s side, the action must involve the alleged infringer and any party involved in the infringement whose participation is necessary to efficiently decide all issues of the claim. Where a patent is co-owned, each co-owner may file an infringement claim. If the other co-owners (or the exclusive licensee) do not join as plaintiffs, the suing co-owner must name them as defendants. This is also true where a patent owner does not join an exclusive licensee’s claim and vice versa. A patent owner is defined under the Patents Law as “the person registered in the Register as the person to whom a patent was granted or to whom ownership of a patent has passed”; an exclusive licence affords its holder the right to “[exploit the claimed invention] as if it was the owner of the patent” and “prohibits the owner of the patent from exploiting in Israel the inven ‑ tion that is the subject of the patent”. The Patent Office does not provide formal opinions on infringement or validity. An action for revocation can be brought at the Israeli Patent Office (IPO). Invalidity arguments may also be raised as a defence before the court. Revocation Any person may submit a motion for revocation, with ‑ out being required to show any particular interest. 1.2 Defendants/Other Parties to an Action Under Israeli law, a plaintiff must join to its claim all those parties whose participation is necessary to effi ‑ ciently decide all issues involved in the claim. Where life sciences/pharma cases are concerned, that usu ‑ ally means the manufacturers and/or importers of the infringing products (and/or those parties contributing to the alleged infringement). Other parties, such as health maintenance organisations (HMOs), which are
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