ISRAEL Law and Practice Contributed by: David Gilat and Matan Kovacs, Gilat, Bareket & Co, Reinhold Cohn Group
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 evidence. 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 additional requirement, such as validation or the deposit of translations. The plaintiff bears the onus to show infringement (both the eviden - tial 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 reversal 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 pro - duction 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 paten - tee shall, unless otherwise proven, be deemed a product produced by a patent protected pro - cess”, 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 product was pro - duced 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 credi - tors seek to act on behalf a company), where a court may order a pre-action discovery of rel - evant 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 interlocu - tory 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 plain - tiff-applicant should request the appointment of a temporary receiver, empowered to enter the defendant’s premises in order to search, seize and assume possession over assets that are attesting to the infringing activity or are other - wise required for adjudicating the action (Anton Piller-type order). The plaintiff-applicant will need to show – in addi - tion to showing they have a prima facie cause of action – that there is strong prima facie evidence that, without 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. 1.9 Declaratory Relief Israeli courts are generally empowered to issue declaratory 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 oth - er words, the court would not grant a patent owner a declaration of infringement if it would
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