ISRAEL Law and Practice Contributed by: David Gilat and Matan Kovacs, Gilat, Bareket & Co, Reinhold Cohn Group
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 spe - cific stipulations regarding the issuance of a declaratory order with respect to non-infringe - ment. Under this specific arrangement, a person intending to exploit any product or process may apply to the court for a declaration 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 particulars 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 other - wise, and no argument of invalidity will be heard, nor will its result have any bearing on the issue of validity. 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 & Manu - facturing 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 sub - stantially 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 matter, the plaintiff claimed patent infringement over a formulation of a drug for the treatment of ulcers. The court found that the changes the defendant introduced 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 for - mulation, which is done in the same way as the invention and also achieves the same result by applying the inventive solution of the patent. 1.11 Clearing the Way Under Israeli law, a person may launch a prod - uct “at risk” – namely, when there is a patent claiming it – and such a person does not have to first initiate legal proceedings 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 circumstances, support a contention of infringement. 1.12 Experts The use of expert evidence in infringement and nullity proceedings in Israel is commonplace. Expert evidence in patent infringement proceed - ings is normally filed by each of the parties in the form of expert opinions, with those experts being later cross-examined during the eviden - tiary hearings (trial). The drafts of such opinions, as well as all communications between an expert
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