ISRAEL Law and Practice Contributed by: David Gilat and Jacob Kasulin, Gilat, Bareket & Co, Reinhold Cohn Group
1.5 Timing for Main Proceedings on Infringement/Validity
infringement action or as part of a motion for revoca ‑ tion filed with the Patent Office; as long as a patent is alive, its validity may be challenged. Acquiescence Even if a given cause of action for infringement has not yet prescribed (ie, become time-barred), it is possible that the defendant will raise an argument of acqui ‑ escence against it if the defendant is able to show that the plaintiff had actively provided a representation of waiving its cause of action; it is possible that the action would be rejected due to estoppel. Effecting Service in Actions Before the Court Under Israeli law, a court acquires jurisdiction by way of effecting service. There are several ways to effect service on a defendant: a copy of the statement of claim, which includes summons, may be served on the defendant themselves, at their home or at their place of business, either via courier or via registered mail, on an adult family member living with them, on a person authorised to manage their business, or on their counsel. Where the defendant is a com ‑ pany, service is usually effected by delivering a copy of the statement of claim to their registered place of business. In those cases where the defendant is not Israeli, leave for service outside the jurisdiction would need to be secured, though it would also be possible to effect service by serving the claim on the foreign entity’s business manager in Israel (if such exists). Service should be carried out immediately upon filing and no later than three days from the date of the filing. While a plaintiff may choose to wait the entire three- day period, doing so would mean that the 60-day peri ‑ od to file a statement of defence would be counted from the date of actual service. Effecting Service in Nullity Proceedings Before the Patent Office Where proceedings before the Patent Office are con ‑ cerned, the Patent Office would advise the patent owner of the filing of the motion for revocation using the “address for service” recorded on the Register, and the applicant may do the same, thus effecting service.
According to Section 179 of the Patents Law, an infringement action shall be brought only after the patent has been granted; however, once an action for infringement is brought, then the court may (i) award compensation for exploitation of an invention com ‑ mitted after the date of publication under Section 16A (basically, 18 months from priority date) and before the date of publication under Section 26 (publication for third-party oppositions after allowance), as well as (ii) grant relief for an infringement committed after the date of publication under Section 26. Where granting compensation for exploitation com ‑ mitted before publication under Section 26, the court shall set a reasonable rate for royalties, such as the infringer would have paid had it been granted a licence to exploit the invention within the scope in which its aforesaid exploitation was committed, However, such compensation shall not be awarded unless the court finds that the exploitation constitutes an infringement of the patent as granted, and on the condition the invention claimed in the patent is identical in a sub ‑ stantive manner to the invention claimed in the appli ‑ cation published under Section 16A. Prescription The period of limitations under Israeli law to launch an infringement action is seven years in accordance with the general principles set out in Section 5 of the Limitations Act 1958. If the patentee was not aware of the infringement for reasons beyond their reason ‑ able control, the seven-year limitation period would only begin on the day on which the infringement has become known – or should reasonably have become known – to the patentee (Section 8 of the Limitations Act). Further, in case of a continuing infringement, the continuing wrong doctrine would apply, and it will save all claims for recovery of damages but only to the extent of infringements committed within the seven- year limitations period. Thus, the patentee will be enti ‑ tled to an injunction preventing prospective infringe ‑ ment as well as to damages with regard to the part of the infringement that is not subject to limitations. Conversely, there are no limitation periods with regard to validity challenges, either as a defence against an
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