ISRAEL Law and Practice Contributed by: David Gilat and Jacob Kasulin, Gilat, Bareket & Co, Reinhold Cohn Group
Given that general pre-action discovery is not avail ‑ able under Israeli law, search and seizure orders serve as a narrowly tailored alternative mechanism for securing evidence prior to or at the outset of the main action. Their scope is significantly narrower and is limited to specific items shown to be at immediate risk of destruction, unlike the broad discovery avail ‑ able later in the proceedings. Materials obtained abroad may generally be used in Israeli proceedings, provided that their acquisition complied with the foreign jurisdiction’s laws and does not violate confidentiality obligations, privilege or for ‑ eign protective orders. 1.9 Declaratory Relief Israeli courts are generally empowered to issue declar ‑ atory relief if they deem it necessary, and the case law has established two main principles in that respect. The first principle is that a declaratory order would not be issued if such issuance would result in a bifurcation of a given claim. In other words, the court would not grant a patent owner a declaration of infringement if it would only serve as a precursor to a separate claim for damages. The second principle is that negative declaratory orders would be issued only in rare cases and subject to the existence of a legitimate interest. Section 187 of the Patents Law includes specific stip ‑ ulations regarding the issuance of a declaratory order with respect to non-infringement. Under this specific arrangement, a person intending to exploit any prod ‑ uct or process may apply to the court for a declara ‑ tion that the said exploitation does not constitute an infringement of a given patent. Section 187 further provides that the court shall not grant the declaration, unless the applicant is able to show that they gave the patent owner full particu ‑ lars of the product or process they wish to use, have asked them for the declaration for which they apply to the court, and the patent holder has refused to make it or has not made it within a reasonable period. In such proceedings – to which the patent owner and the exclusive licensee must be joined as respondents
– the parties’ costs shall be borne by the applicant for the declaration, unless the court orders otherwise, and no argument of invalidity will be heard, nor will its result have any bearing on the issue of validity. Courts have consistently held that they lack juris ‑ diction to issue declarations relating to hypothetical future rights. Therefore, it seems that declaratory relief must relate to an existing legal right, and not a patent application or potential future monopoly. Regarding standing, beyond the specific framework of Section 187, a claimant must demonstrate a con ‑ crete, real and current interest in the declaratory relief sought. Israeli courts will not grant declarations in the abstract, nor where the request is merely theoretical or amounts to a request for an advisory opinion. 1.10 Doctrine of Equivalents The Patents Law provides that infringement may be established by exploiting the invention as defined in the claims (literal infringement) or by exploiting the “essence of the invention in light of the claims” (non- literal infringements). In order to address non-literal infringements, the Supreme Court of Israel, influenced by the US Supreme Court ruling in Graver Tank & Man- ufacturing Co v Linde Air Products Co [339 US 605, 70 S Ct 854 (1950)] adopted the so-called Function- Way-Result test, which provides that if the accused device or process performs substantially the same function as the invention, in substantially the same way to reach the same result, it is infringing. Later decisions employed this doctrine of equivalents with respect to pharmaceutical inventions. In one mat ‑ ter, the plaintiff claimed patent infringement over a formulation of a drug for the treatment of ulcers. The court found that the changes the defendant intro ‑ duced into the formulation of its manufacture (the adding of an internal layer comprised of a sugar core) could not assist it in evading infringement, as it did not change the functioning of the accused formulation, which is done in the same way as the invention and also achieves the same result by applying the inven ‑ tive solution of the patent.
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