ISRAEL Law and Practice Contributed by: David Gilat and Jacob Kasulin, Gilat, Bareket & Co, Reinhold Cohn Group
1.11 Clearing the Way Under Israeli law, a person may launch a product “at risk” – namely, when there is a patent claiming it – and such a person does not have to first initiate legal pro ‑ ceedings to revoke those patents ostensibly blocking its path, or to obtain a legal opinion of freedom to operate; failing to implement precautions against a finding of infringement could, in certain circumstanc ‑ es, support a contention of infringement. While there is no requirement to clear the way, launch ‑ ing a product at risk may adversely affect the infringer’s position in subsequent litigation – including findings regarding wilfulness or bad faith, and the potential award of enhanced costs or damages. 1.12 Experts The use of expert evidence in infringement and nul ‑ lity proceedings in Israel is commonplace. Expert evi ‑ dence in patent infringement proceedings is normally filed by each of the parties in the form of expert opin ‑ ions, with those experts being later cross-examined during the evidentiary hearings (trial). The drafts of such opinions, as well as all communications between an expert and the party by which it was retained, are privileged. Where the questions in dispute relate to different fields, it is possible that a party will provide evidence from several expert witnesses to address each field separately. There are no statutory limits on the number or length of expert opinions. While experts are retained by the parties, they are expected to assist the court in its fact-finding mis ‑ sion rather than serve as advocates for the cause of the party which had retained them. The court may appoint its own expert in addition to the parties’ experts. The parties may agree that the opinion of the court expert will replace the opinions of the parties’ experts. The parties are entitled to cross- examine the court expert. The court is also empow ‑ ered to appoint an assessor to advise the court on technical matters. Expert evidence is also common in preliminary injunc ‑ tion (PI) proceedings, although the format is typically
more streamlined, due to urgency and the limited scope of the disputes at the early PI stage. 1.13 Use of Experiments During both infringement and validity proceedings, it is possible to submit experimental results to show infringement or validity – eg, in support of claims of inventive step, lack of enablement, or lack of util ‑ ity. Such results are filed with a supporting af fidavit attesting to the conditions of the experiments and the results. 1.14 Discovery/Disclosure Under Israeli law, parties to a claim (including an infringement claim) must disclose all relevant docu ‑ ments in their possession or control to the opposing party and may also be required to answer interroga ‑ tories. Copies of non-privileged documents need to be provided to the other party for inspection, in full or redacted form (eg, in case they contain trade secrets). 1.15 Defences and Exceptions to Patent Infringement A defendant may claim in defence that its activities do not fall within the scope of the claims, and/or that the patent is invalid under any grounds on which the grant of a patent may be opposed, and/or that its activities are permitted for other reasons as explained below. Invalidity Any grounds, on which the grant of a patent may be opposed, shall be a good defence in an action for infringement. Under Israeli law, a patent-eligible invention is defined as “an invention, whether a product or a process in any field of technology, which is new and useful, can be used industrially and involves an inventive step”. In addition, the Patents Law provides that the patent’s disclosure must enable the person skilled in the art to make and use the invention to the full scope of the claim and that the claims must be unambiguous and reasonably arise from the included disclosure. Defendants in patent infringement proceedings are entitled to challenge the patent’s compliance with any of the above requirements as part of their defence in
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