ISRAEL Law and Practice Contributed by: Eran Bareket, Reinhold Cohn Group
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
Prior User Rights Anyone who began exploiting the invention after publication of expiry of the patent due to non-payment (namely, after the six-month grace period) shall be entitled to continue to exploit the invention – though only for the sake of their own business – even after the patent is restored. This right cannot be transferred, except together with the business in which that invention was used. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights The patentee may apply for an amendment for the purposes of clarification, removing an error in the specification, or restricting the claims. The Registrar will permit the amendment if they are convinced that the amendment will not broaden the scope of the claims and will not add anything to the specification not already included. The Registrar’s decision to permit the amend- ment will be published online and any person may oppose the amendment. In addition, the patentee may file an application with the Patent Office to revoke or cancel their granted patent. Revocation or cancellation of a granted patent, per the request of the patentee, will be recorded in the Patent Journal and the granted patent will be declared null and void. The revocation/cancellation proceeding is also available to third parties. Any person may file an application with the Patent Office to revoke a granted patent, on grounds identical to the grounds for filing a pre-grant opposition, at any time, and the statute of limitation does not apply.
Patent infringement cases are heard before the district court. Arbitration of patent disputes may take place before arbitrators operating within private arbitration institutions (mainly retired judges) or other attorneys in private practice. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property Third parties that wish to undo the effects of a patent may: • file a pre-grant opposition (see 1.2 Grant Procedure ) – there is no standing requirement for lodging an opposition; • use post-grant revocation procedures (see 1.7 Third-Party Rights to Participate in Grant Proceedings ) – there is no standing require- ment for filing a revocation request; • ask for a declaration of non-infringement (see 2.8 Protection for Potential Opponents ) – the court shall not grant the declaration unless the applicant gave the patentee full particu- lars of the product or process they wish to use and the respondent has refused to make it or has not made it within a reasonable period; or • in theory, file an application for a compulsory licence (see 2.13 Restrictions on Assertion of an Intellectual Property Right ) – notably, an application for a compulsory licence provides a remedy to the applicant and does not result in the revocation or narrowing of the patent (this procedure has not been used since the early 1990s). 2.3 Courts With Jurisdiction The Israeli judicial system consists of three tiers: magistrates’ courts, district courts and the
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