ISRAEL Law and Practice Contributed by: Eran Bareket, Reinhold Cohn Group
the potential process but also to the product which is a direct product of the process. In cases of alleged infringement of a patent claiming a process for manufacturing a product, the burden of proof is shifted to the defendant to show that it is not using the patented process if the patentee can show that: • the patentee cannot ascertain, by reason- able means, which process has been used to produce the identical product; and • it is highly reasonable that the identical product was produced using the patented process. Scope of Protection for Process Patents Outside Israel Because it is an infringement to deal with a prod- uct which is the direct product of a patented pro- cess, importation of a product produced abroad using a manufacturing process that would have infringed if used in Israel constitutes an infringe- ment of the Israeli patent. In one case (CA 436/77 Ikapharm Ltd v Gradstan Limited, 33(1) 260 (1978)), the court held that the appellants had failed to provide evidence proving that a process used in Spain did not infringe the pat- ent and therefore ruled that the process patent had been infringed by importation of the direct product of the process. 3.4 Scope of Protection for an Intellectual Property Right The Patents Act defines infringement as exploi- tation of the invention in the manner defined by the claims or in a similar manner that, in light of the claims, involves the essence of the invention. Thus, in addition to protection against literal infringement, the Patents Act also confers pro- tection against infringement of the “essence of
the invention” (its gist) sometimes also referred to as the “doctrine of equivalents”. In addition, the Supreme Court has emphasised the principle of reading the patent document as a whole. As such, the specification cannot be used to broaden the scope of the claims and cannot be used selectively; it is also the rule that the interpretation of the claims should be purposive. It has been ruled that claim construc- tion aims at ascertaining the inventor’s intention expressed in the patent document, as under- stood by a person having an ordinary skill in the art in the relevant field given the knowledge existing on the determining date. A patentee is expected to formulate the patent claims with a reasonable degree of clarity. The Supreme Court has enunciated several criteria to assist in determining whether this degree of clarity is achieved, including: • the complexity of the field of the invention and the difficulty of describing the invention clearly; • the ability of the language to describe the invention in a better way; and • that unwarranted ambiguity operates against the author toward a narrower reading of the claims, whereas the invention’s greater con- tribution to the field allows for a more liberal construction of the exclusive right afforded by the claims. Where the proper interpretation of the patent document is unclear, the Israeli and foreign file wrappers may aid in the interpretation. It should be noted, however, that the Supreme Court left the question of whether the doctrine of file-wrap- per estoppel is applicable in Israel open. Claim construction is an issue of law.
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