ISRAEL Law and Practice Contributed by: Eran Bareket, Reinhold Cohn Group
mended for a number of reasons, including the following. • Recordation is required in order to allow the assignee to assert the right against third par- ties (the Patents Act is silent in this regard and does not explicitly state whether an exclusive licensee may collect damages in respect of an infringement that occurred prior to the date of recordation of the licence). • Unlike in the USA, failure to record may cause delay when immediate enforcement actions are required (since the right to file these actions is the preserved of the registered pat- entee/exclusive licensee) and such recorda- tion is required prior to filing an action. 10.2 Procedure for Assigning an Intellectual Property Right The application for assignment may be filed by the assignee or by their legal representative. According to an administrative directive issued by the Patent Registrar, two documents will be required in order to record an assignment agree- ment at the Patent Office. The Original Assignment Agreement or a Certified Copy Thereof According to the directive, the assignment agreement must indicate the exact transaction, the date of the transaction, the signature of the assignor and a specific reference to the Israeli patent or patent application involved, identi- fied by its official serial number. If the original agreement was not made in Hebrew, Arabic or English, a certified translation into one of these languages must be provided by an Israeli or for- eign notary. If the agreement is signed by a liquidator or trustee, it is necessary to submit the document
evidencing the appointment of that person and their authorisation to sign on behalf of the legal entity for which they had signed the agreement. If the agreement indicates that it is executed in accordance with, or subject to, the provisions of a previous agreement, it will be necessary to file an affidavit on behalf of the party requesting the recordation (or their attorney), stating that the previous agreement does not include any provi- sions which may revoke or restrict the recorda- tion of the requested change. If the agreement includes confidential informa- tion, one may file both an abbreviated version of the agreement, along with the duly notarised complete unabbreviated version thereof and request that the Patent Office clerks return the complete unabbreviated version once the agree- ment is duly recorded so that the only document to remain on record will be the abbreviated ver- sion. Alternatively, it is possible to file the abbrevi- ated version of the agreement only, as long as the applicant explains to the Patent Office why certain parts were redacted, what the general content of these parts was, and confirms that these parts do not include any provisions which may revoke or restrict the recordation of the requested change. If the application for assignment is requested fol- lowing an order of a foreign court or a will (tes- tament), the applicant must present a decision, order or ruling of an Israeli court (or the Israeli registrar of wills in respect of the inheritance) in order for the change to be executed. A Duly Signed Power of Attorney in the Name of the Assignee, Indicating the Full Name
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