ISRAEL Law and Practice Contributed by: David Gilat and Matan Kovacs, Gilat, Bareket & Co, Reinhold Cohn Group
the motion, and, if no such deadline is provided, the defendant-respondent will have 20 days to file a response. Both motion and response must be supported by an affidavit or affidavits detailing all those facts alleged by the parties. 1.4 Structure of Main Proceedings on Infringement/Validity A defendant in an infringement claim may – in addition to arguing non-infringement – raise validity arguments in defence. This will not auto - matically lead to the proceedings’ bifurcation: usually, both infringement and validity are heard concurrently, though the court has the discretion to instruct otherwise. A defendant may also file a motion for the revo - cation of the patent with the Patent Office. In such case, the court hearing the infringement claim will decide which instances will hear the issue of validity – the Patent Office or the court itself – and the Patent Office will not hear the revocation motion unless authorised to do so by the court. Where the defendant instituted the revocation proceedings before the plaintiff’s fil - ing of the action with the court, the Patent Office will proceed with the hearing of the revocation, unless the court instructs otherwise. There is no rule that prohibits a person from filing revocation proceedings while there are pending revocation proceedings (oppositions in Israel are conducted before the patent grant, following patent exami - nation). 1.5 Timing for Main Proceedings on Infringement/Validity 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 committed after the date of publi - cation under Section 16A (basically, 18 months from priority date) and before the date of pub - lication 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 committed 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 application is identical in a substantive manner to the invention claimed in the application 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 infringe - ment for reasons beyond their reasonable con - trol, 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 con - tinuing infringement, the continuing wrong doc - trine 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 entitled to an injunction preventing prospective infringement as well as to damages with regard
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