ISRAEL Law and Practice Contributed by: David Gilat and Jacob Kasulin, Gilat, Bareket & Co, Reinhold Cohn Group
Duration of Proceedings on the Merits Both infringement and nullity proceedings can take anywhere between 24 and 36 months and sometimes even longer. If the case is heard before a court, the parties would first exchange pleadings (a statement of claim, a state ‑ ment of defence, and a statement in reply), conduct discovery proceedings, file their evidence, appear for trial (cross-examinations), and then file their summa ‑ tions, following which a decision would be handed down by the court. In addition, motion practice is likely to take place, covering subjects such as discovery disputes, the responsiveness of evidence, filing of additional evidence, production of witnesses, and extensions of time. The exchange of pleadings will take, in most cases, between three and nine months. Discovery may take an additional six months, while the production of evi ‑ dence would take a year to eighteen months. The trial will usually not take more than a week or two, with summations taking up to a year. Revocation proceedings before the Patent Office would generally take less time than a court action would, as they do not include a discovery stage and unify the exchange of pleadings with the filing of evi ‑ dence. 1.6 Requirements to Bring Infringement Action Under Israeli law, a patent becomes assertable only once it is granted by the Patent Office, with no addi ‑ tional requirement, such as validation or the deposit of translations. The plaintiff bears the onus to show infringement (both the evidential burden as well as the burden of persuasion), while the defendant bears the onus to show invalidity. Section 50 (b) of the Patents Law provides for a rever ‑ sal of burden of proof with respect to process patents, stating that “[F]or purpose of an invention that is a production process – in an action for infringement the defendant must prove that the process used by him for the production of an identical product differs from the patent-protected process”. The Patents Law fur ‑ ther provides that “an identical product which was
produced without the consent of the patentee shall, unless otherwise proven, be deemed a product pro ‑ duced by a patent protected process”, subject to the patentee being unable to find out by reasonable efforts which production process was actually used, and it being highly reasonable that the identical prod ‑ uct was produced by the patent-protected process. 1.7 Pre-Action Discovery/Disclosure As a rule, pre-action discovery is not available in Israel. [The only exception is in the field of derivative actions (where shareholders or creditors seek to act on behalf a company), where a court may order a pre- action discovery of relevant documents, provided that the conditions necessary to allow a derivative action are prima facie met.] 1.8 Search and Seizure Orders Search and seizure orders are both available under Israeli law. If filed in the framework of a motion for interlocutory remedies, that motion would be heard ex parte unless the court believes that hearing that motion inter partes would not thwart the purpose of those remedies. A search and seizure order may not be executed by the applicant’s attorneys, but rather the plaintiff-appli ‑ cant should request the appointment of a temporary receiver, empowered to enter the defendant’s prem ‑ ises in order to search, seize and assume possession over assets that are attesting to the infringing activity or are otherwise required for adjudicating the action (Anton Piller-type order). The plaintiff-applicant will need to show – in addition to showing they have a prima facie cause of action – that there is strong prima facie evidence that, with ‑ out the appointment of a receiver, the assets might be destroyed or otherwise become unavailable, thus thwarting the legal proceeding or the carrying out of the yet-unissued judgment. The applicant must file the main action within seven days from granting an interim order (including a search and seizure order) or within the timeframe set by the court when granting the order.
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