ISRAEL Law and Practice Contributed by: Eran Bareket, Reinhold Cohn Group
3.5 Defences Against Infringement The available defences against infringement are set out below (in a non-exhaustive list). • Non-infringement (the claims do not cover the accused product or method). • Non-infringement (exceptions to the definition of “exploitation of an invention”; these include statutory “experimental use” and “Bolar-like exceptions”). • Invalidity. • Lack of standing to bring suit – a challenge to ownership of the patent is a defence since the right to bring an action for patent infringe- ment belongs to the patentee or to the exclu- sive licensee provided the licence has been duly recorded in the patents register; any of the co-owners or the exclusive licensee may sue alone, but the suing party must join all other co-owners (and the exclusive licensee, where an exclusive licence was granted); failure to comply with the foregoing will result in claim dismissal. • Prior use rights (see 1.9 Consequences of Failure to Pay Annual Fees ). • Statute of limitation and laches – laches is a strong defence in interim relief proceedings; it will, however, only be considered a defence in the main action in rare and exceptional circumstances. • Equitable estoppel – as a general principle, a plaintiff may be estopped from bringing an action if their conduct, through action or inac- tion, was such that the defendant reasonably inferred that the plaintiff would not enforce the patent against them, and the defendant relied on that conduct and materially changed their situation based on that reliance; acqui- escence will not be easily inferred. • Patent exhaustion – the Patents Act does not expressly deal with this matter; however, in the case of Bristol-Myers Squibb Company
v The Minister of Health, the question of whether parallel importation of patented med- icine to Israel is allowed was examined and although the issue arose obiter dicta (such that no decision was made on the merits), the judge expressed an opinion in favour of the international exhaustion of rights. • Compulsory licence and compulsory licence to exploit earlier patent – compulsory licences are theoretically available (see 2.13 Restric- tions on Assertion of an Intellectual Property Right ); however, allegation to entitlement to a compulsory licence (not actually granted) is not a defence. • To date, there have been no fair, reasonable and non-discriminatory (FRAND) litigations in Israel. • Market overt – as held by the Supreme Court, the market overt defence does not apply to the sale of the patent itself as an asset. There is controversy among scholars with respect to the question of whether “market overt” grants the purchaser of a patented article immunity from the claim of patent infringement; how- ever, a purchaser of a patented article from a liquidator or other judicial authority acquires the article free from third-party claims, including a claim of patent infringement (CA 4052/19 Y.S.M for building v Tadbik). 3.6 Role of Experts Experts Engaged by the Parties Experts are frequently engaged by the parties, both in Patent Office litigation and in infringe- ment litigation before district courts. Foreign experts may file their opinions in English. Dur- ing trial, the experts will be cross-examined on their opinions. Court-Appointed Experts In proceedings before the Patent Office, no experts are appointed by the Registrar. If neces-
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