ISRAEL Law and Practice Contributed by: Eran Bareket, Reinhold Cohn Group
requirement that the undisclosed information would have led to revocation or refusal to grant the patent. The minority opinion held that there are no grounds for unjust enrichment unless when there is a cause of action under competi- tion law, ie, when the patent applicant holds a dominant position. In addition, the unanimous court held that the acts of Sanofi amount to abuse of dominant position. The Supreme Court remanded the case to the district court to evaluate Sanofi’s profits for the period of delay and to determine the amount of redress to be awarded to Unipharm, based on Sanofi’s said profits. 3. Infringement 3.1 Necessary Parties to an Action for Infringement The necessary parties to an action for infringe- ment are the patentee or the exclusive licensee; they are the only parties that can file an action for infringement. Therefore, non-exclusive licence owners cannot file an action for infringement. In the case of a jointly owned patent, each partner is entitled to bring action for infringement. Co-patentees and exclusive licensees who chose not to actively join the action for infringe- ment with the plaintiff must be joined by the plaintiff as defendants. A person who is joined as a defendant but does not take part in the pro- ceedings will not be required to participate in the payment of litigation costs. 3.2 Direct and Indirect Infringement Direct infringement is expressly defined in the Patents Act as the violation of the right of the patentee to prevent any other person from exploiting the invention, either as defined by the
claims or in a similar manner which involves the essence of the invention. Israeli courts have also recognised infringement by joint tortfeasors (such as aiding or inducing infringement) who are then jointly and severally liable. Liability as joint tortfeasors is based on the provisions of the general Torts Ordinance concerning joint tortfeasors. Furthermore, the courts have recognised a court- made doctrine of contributory infringement. Contributory liability does not require a showing of concerted action between the direct infring- er and the contributory infringer. The concept of contributory infringement has been applied under the following accumulated condition: • the defendant supplied some, but not all, of the components of the patented invention and those components formed a substantial part of the invention; • the defendant knew, or should have known, that the components would be used for infringing; and • the components could not form part of a staple commercial product with a substantial non-infringing use. In such instances of liability, it has not been definitively ruled whether a specific instance of direct infringement must be shown, and it remains an open issue regarding whether the direct infringer must be joined. The remedies for indirect infringement are the same as those for direct infringement. 3.3 Process Patents The protection afforded by a process claim applies not only to the use, sale and the like of
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