ISRAEL Law and Practice Contributed by: David Gilat and Matan Kovacs, Gilat, Bareket & Co, Reinhold Cohn Group
tions used for the treatment of the human body allowed. In addition, Section 7(2) of the Patents Law excludes from patentability “new varieties of plants or animals, except microbiological organisms not derived from nature”. As a result, defendants in patent infringement proceedings are entitled to argue that a claimed invention is Under Israeli law, a patent applicant must – until the application is allowed – inform the Patent Office of all references relied upon by foreign Patent Offices examining patent applications for the same invention or those otherwise directly related to the application at hand. If the patent applicant knowingly fails to comply with this duty, the court may revoke the patent, give a licence to exploit the patent or shorten its period. Statutory Exemptions Section 1 of the Patents Law excludes from the definition of “exploitation of an invention”: • non-commercial acts; • experimental acts aimed at improving the invention or developing another invention; and excluded from patentability. Fraud on the Patent Office • experimental acts towards obtaining regula - tory licences after the lapse of the patent (a Bolar-type exception). The exploitation of an invention would not be considered an infringement where the use of the invention was both on a non-commercial scale and of a non-commercial nature. The second exemption – experimental use – relates to “an experimental act in connection with the invention, the objective of which is to improve the invention or to develop another invention”. An act being experimental is insuf -
ficient in itself, and the defendant would have to show that the act falls within – or is necessary for – either of the two purposes provided: improving the invention or developing another. Also exempted are experimental acts with the aim of obtaining regulatory approval. This is a Bolar-type exception. Prior User According to Section 53 of the Patents Law, a defendant, who would have exploited on the determining date, in good faith, in Israel, the invention for which the patent is sought, or if they in good faith made actual preparations towards exploitation, then they shall be entitled to exploit the invention themselves and in the course of their business without consideration. The “determining date” is the filing date in Israel or – if priority right was claimed– the filing date of the priority application. The right under Section 53 cannot be transferred, except together with the business in which the invention was used. Lapse of Patent Under Israeli law, a patent should be renewed every several years by way of paying a fee, and if a renewal fee is not paid, the patent shall lapse. Section 58 of the Patents Law provides that if a renewal fee was not timely paid, and if the own - er had not cured this within a six-month grace period, then any use of the patent following that grace period will not constitute an infringement. While the patent owner may yet reinstate the patent even after the grace period has lapsed, the Patents Law provides that any person who began to exploit the invention in Israel or made actual preparations for exploitation after the lapse of the patent was published in the Official Gazette, shall be entitled to continue to exploit the patent only for their business (Section 63).
130 CHAMBERS.COM
Powered by FlippingBook