ISRAEL Law and Practice Contributed by: David Gilat and Jacob Kasulin, Gilat, Bareket & Co, Reinhold Cohn Group
Exhaustion Exhaustion could be raised as a defence to an infringe ‑ ment action, however the metes and bounds of such a defence has not been resolved, especially in cases where an exclusive licensee is recorded on the reg ‑ ister. In the latter situation, there is a likelihood that the defence will not be recognised. The matter is not adequately resolved by case law. Licence A defendant in a patent infringement claim may argue that they were allowed to carry out the alleg ‑ edly infringing act as licensees. The success of such a defence would likely depend on whether or not the licence agreement in question was breached: if the licensee had exploited the patent in breach of the terms of the licence (eg, field of use limitations), their acts might constitute both patent infringement and breach of contract. However, breaches that are not related to the actual use of the patented invention (eg, failure to pay royalties under the agreement) will prob ‑ ably give rise just to contractual causes of action, as long as the licence agreement is not duly cancelled. Compulsory Licence While the Patents Law empowers the Patents Regis ‑ trar to issue a compulsory licence subject to the satis ‑ faction of statutory criteria, such a licence would only allow the exploitation of a given invention after it is issued and not retrospectively. It so follows that while an infringer may seek a compulsory licence imme ‑ diately after the claim against them was submitted, doing so ought not serve as a defence against past infringements. Additional Exceptions The Patents Law also provides for a number of addi ‑ tional exceptions to infringement. Under Section 180, “the exploitation of a patented product which was validly forfeited to the State shall not constitute infringement”. Under Section 181 (1), the use of a patented invention in the body or acces ‑ sories of a vessel registered in a member state of the WTO other than Israel “exclusively for the needs of the vessel” while the vessel is “temporarily or inciden ‑ tally in Israel’s territorial waters” shall not constitute infringement. Similarly, the use of a patented invention
in the construction or operation of an aircraft or land vehicle registered in a WTO state other than Israel, or their accessories, while they are “temporarily or incidentally in Israel” shall not constitute infringement (Section 181 (2)). 1.16 Stays and Relevance of Parallel Proceedings In general, Israeli courts follow the doctrine of lis alibi pendens, according to which the same issue would not be simultaneously heard in two different instances in Israel. When it comes to patent infringement cases, a court hearing an infringement claim may stay the proceed ‑ ings pending the Patent Office’s decision in a motion for revocation if such was already pending when the action was first filed. It is also possible for the defend ‑ ant to file a motion for revocation after the infringe ‑ ment claim was filed. In such a case, the court will decide whether validity issues will be heard by the Patent Office or by the court, and the court may also stay the infringement proceedings pending a decision by the Patent Office. Foreign proceedings with respect to corresponding patents would not raise a claim of lis alibi pendens since patents are territorial. Nonetheless, factual find ‑ ings in foreign proceedings may establish issue estop ‑ pel. 1.17 Patent Amendment During litigation, the court, upon an application by the patentee, may amend the specification and the claims of the patent (Section 190 of the Patents Law). There is no empirical data available on how common amend ‑ ments during litigation are, though it is safe to assume they are not a rarity. The court would be receptive to such an amendment application and is empowered to order the amendment of the claims even without the submission of such application. 1.18 Court Arbiter Patent infringement cases are heard before the district courts, which are intermediary-level courts (between the magistrate courts and the Supreme Court). The Israeli courts do not use a jury system, nor do they employ specialist judges. With that being said, each
98 CHAMBERS.COM
Powered by FlippingBook