Israel: Intellectual Property (3rd edition)

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This country-specific Q&A provides an overview to intellectual property laws and regulations that may occur in Israel.

This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/practice-areas/intellectual-property-third-edition/

  1. What different types of intellectual property rights exist in your jurisdiction to protect: (a) Inventions; (b) Brands; (c) Other creations, technology and proprietary interests

    a. Inventions (e.g. patents, supplementary protection certificates, rights in confidential information and/or know-how);

    Patents, including patent term extensions for pharmaceutical and medical devices, and trade secrets

    b. Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);

    Trademarks, passing off and appellations of origin and geographical indications

    c. Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in confidential information and/or know-how).

    Copyrights, plant breeders' rights, integrated circuits, designs.

  2. What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?

    Patents: 20 years from the date of application, extendable by not more than five years and only with respect to pharmaceuticals and medical devices, all subject to payment of renewal fees.

    Trademarks: Indefinite, subject to payment of renewal fees.

    Copyright: In most cases author’s life plus 70 years; exceptions apply. Concerning copyright in state-created works – 50 years from the work’s creation.

    Registered Designs: 25 years from the date of application, subject to payment of renewal fees.

    Unregistered Designs: 3 years from the date on which the design owner or anyone acting on his behalf publicly published the design or design product in Israel or abroad.

    Trade Secrets: Indefinite (as long as confidentiality is maintained).

    Plant Breeders Rights: 25 years from registration date of varieties of vines, fruit trees, forest trees and any other perennial plant; 20 years from registration date for other plants.

    Integrated Circuits: 10 years from date layout-design (topography) or integrated circuit the topography is incorporated in were first lawfully sold/distributed; or 15 years from date of creation of topography – whichever is earlier.

  3. Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?

    The creator or inventor is the first owner. Ownership may be transferred by agreement before or after creation.

    Patents: An invention conceived by an employee during and in consequence of employment is owned by the employer unless agreed otherwise.

    Trademarks: Owner is the entity and/or individual in the name of which the trademark is applied or registered. Trademark rights may also be acquired through use in which case the owner is the entity and/or individual that uses the mark.

    Designs: First owner is the designer; first owner of a design by an employee for the purpose of carrying out his duties or using the employer's resources is the employer, unless otherwise agreed; under a commission the first owner of a custom-made design is the commissioner, unless otherwise agreed.

    Copyrights: The author of a written work is the first owner of the copyrights. The producer of a sound recording is the first owner. The employer is the first owner of copyrights in a work made by an employee in the course of his service and during the period of his service, unless otherwise agreed. Under a commission, the first owner of the copyrights is the author, unless otherwise agreed. If the work is a portrait or photograph of a family event or other private event, made pursuant to a commission, the first owner of the copyright is the commissioning party.

  4. Which of the intellectual property rights described above are registered rights?

    Patents, trademarks (including association marks, certification marks, hallmarks), designs, appellations of origin and geographical indications, plant breeders’ rights, Patent Term Extension.

  5. Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?

    Patents: The inventor or the owner of the invention may apply for registration by filing a patent application and paying the subsequent fees. The application is examined. Any person can lodge a pre-grant opposition within three months from publication of the acceptance of the application.

    Trademarks: Any legal entity may register a trademark in Israel, including individuals. The application is examined within 12-15 months from filing date. A response to an office action must be filed within three months, which may be extended up to eight months (subject to the payments of fees), provided that the examination of the application must be finalized within two years from the first Office Action. Any person can lodge a pre-grant opposition within three months from publication of the acceptance. If an opposition is lodged, the trademark will be granted only if the opposition is dismissed.

    Designs: A design owner may apply for design registration by filing a design application and paying the subsequent fees. The application will be examined, and a first examination report will be issued within 6-9 months. A response to an examination report must be filed within three months, and the examination of the application must be finalized within 12 months from the first substantive examination report. Extensions are available, subject to the payments of fees.

  6. How long does the registration procedure usually take?

    Patents: The overall time is 4-7 years from the start of the first examination until allowance/refusal and may be longer. This period includes standby time of 24-33 months and depends on the type of technology; and the examination time of 15-30 months depends on the type of technology.

    Accelerated examination is available under certain circumstances.

    Trademarks: Registration of a trademark takes 12-15 months, provided that no Office Actions are raised by the examiner and/or no oppositions are filed by third parties. Accelerated examination is available under certain circumstances.

    Designs: Registration may take between 6-24 months from the filing date of the application. Accelerated examination is available under certain circumstances.

  7. Do third parties have the right to take part in or comment on the registration process?

    Patents/Trademarks: Any person may submit third party observations during examination of a patent/trademark application, provided that such documents are submitted during a prescribed window of time. Third parties may challenge a pre-granted patent/trademark by filing an opposition.

    Designs: The examiner may rely on, inter alia, documents submitted by a third party.

  8. What (if any) steps can the applicant take if registration is refused?

    Patents and Trademarks: The applicant may file an administrative appeal against the examiner’s decision. The appeal will be heard by the patent registrar or deputy registrar. The decision may be appealed by right to a district court within 45 days from its issuance.

    Designs: If the registrar refuses to register a design, it may, at the applicant’s request, reconsider such refusal, provided that the petition to reconsider is filed within three months from the date the notice of the competent authority’s refusal for such registration was sent to the applicant. The decision may be appealed by right to a district court within 45 days from its issuance.

  9. What are the current application and renewal fees for each of these intellectual property rights?

    Patents:

    For the first 50 claims of an application – 2,038 ILS (approx. USD 567); an additional fee is paid for any additional claim and for an extra 50 pages above the 101st page.
    Once an application is allowed, there is an acceptance fee of 713 ILS (approx. USD 198). Once the patent is granted, renewals fees are paid based on the number of years since the filing date:

    1-20 years: 12,230 ILS (approx. USD 3,403)

    Or:

    1-6 years: 816 ILS (approx. USD 227)
    7-10 years: 1,630 ILS (approx. USD 454)
    11-14 years: 2,446 ILS (approx. USD 681)
    15-18 years: 4,077 ILS (approx. USD 1,134)
    19-20 years: 5,707 ILS (approx. USD 1,588)

    Trademarks:
    Application fees:
    Single class – 1,623 ILS (approx. USD 452)
    Any other class included in the application – 1,219 ILS (approx. USD 339)
    Renewal fees:
    Single class – 2,893 ILS (approx. USD 805)
    Any other type under the same name – 2,442 ILS (approx. USD 679)

    Designs:
    Fee for filing a design application in one class – 400 ILS (approx. USD 111)
    Application for set of articles – 600 ILS (approx. USD 167)
    5-25 years: 3,000 ILS (approx. USD 835)

    Or:

    1st renewal (5-10 years) – 500 ILS (approx. USD 139)
    2nd Renewal (11-15 years) – 600 ILS (approx. USD 167)
    3rd Renewal (16-20 years) – 700 ILS (approx. USD 195)
    4th Renewal (21-25 years) – 800 ILS (approx. USD 223)

    Designs that were accepted according to the Patents and Designs Ordinance and their variants and divisional applications may be renewed up to 18 years, subject to renewal fees.

  10. What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?

    Patents: There is a grace period of six months and if the fee is paid (with penalty) during the grace period then the patent is deemed to have never lapsed. If the fee is not paid, the patent’s expiry will be published. The patentee may apply for restoration of term, which will be allowed if it is shown that the annuity’s non-payment was for a reasonable cause, that the patent’s expiry was unintentional, and that the restoration was requested promptly after the patentee became aware of the failure to pay the annuity, provided that the associated restoration fee is paid. Any person who commenced (or made serious preparation to commence) exploitation of the invention after the patent’s expiry was published may continue doing so even if the term is restored.

    Trademarks: If a mark is not renewed by the due date or within the six-month grace period (with payment of belated renewal fees), it is removed from the register and may no longer be renewed. It is possible to request its restoration by filing a suitable affidavit; such request has to be filed within six months from the end of the grace period. If more than a year has passed since the renewal date, it is no longer possible to reinstate an expired trademark registration.

    Designs: six-month grace period; if fee is paid (with penalty) during the grace period, then the design is deemed to have never expired. If the fee is not paid, the design’s expiry will be published. The owner may apply for term restoration within six months from publication of the expiry; the application will be allowed if the registrar finds that the design owner took reasonable measures under the circumstances to pay the fees on time, provided that the associated restoration fee is paid.

  11. What are the requirements to assign ownership of each of the intellectual property rights described in section A?

    Assignment of registered rights must be in writing. An appropriate application to record the assignment must be filed with the Patent, Trademark and Design Office. It is highly advisable that the deed of assignment identify the Israeli IPR expressly by its number.

    Designs: Design rights may be assigned, in whole or in part, by agreement or by law, and the design owner may grant them an exclusive or non-exclusive license. An agreement for the assignment of rights in the design or granting of an exclusive license must be in writing.

    Trademarks: Deed of assignment must include a statement that to the best of the assignee or assignor’s knowledge, the deed will not cause confusion among the public. If such statement not indicated, a separate affidavit may be provided. A power of attorney signed on behalf the assignee is also required.

    Copyrights: Assignment of copyright ownership or for granting an exclusive license for it must be in writing.

  12. Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?

    Patents: Yes. Only the registered holder may file a lawsuit for patent infringement. There is no case law on the right of a registered holder to claim damages for infringements that occurred after the date of the contractual assignment and before the belated recordal of the assignment and registered patents.

    Trademarks: Yes. Failure to register an assignment may result in the trademark becoming vulnerable to cancellation due to non-use by its registered owner.

    Designs: Yes. Failure to register an assignment may result in the assignment of rights being valid only between the parties.

  13. What are the requirements to licence a third party to use each of the intellectual property rights described in section A?

    Patents: There are no requirements in the law concerning non-exclusive licenses. An exclusive license must be recorded for the exclusive licensee to assert the patent against third parties.

    Trademarks: For the licensee to be regarded as an authorized user, such license must be recorded in the Israeli trademark register. For such recording, the TMO requires a certified copy of the license agreement or a confirmatory short form of it as well as a formal confirmation by either the licensor or licensee that the license recordal is unlikely to mislead the public.

    Designs: An agreement for granting an exclusive design license must be in writing and should be recorded at the Patent Office to be valid against third parties.

    Copyright: Assignment of copyright ownership or for granting an exclusive license for it must be in writing.

  14. Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?

    See answer to (13) above.

  15. Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?

    Patents: Exclusive licensees may bring suit to assert patents against third parties. If the patentee or some of the co-patentees or an exclusive licensee did not join the action for infringement as plaintiffs, then they shall be joined by the plaintiff as defendants.

    Trademarks: Only the registered proprietor and a licensee may file suit. Exclusive and non-exclusive licensees may be listed as additional plaintiffs in a suit by the registered owner.

    Designs: Exclusive licensees may bring suit to assert designs.

    Copyrights: Exclusive licensees may bring suit to assert copyrights.

  16. Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?

    Patents: No criminal sanctions for patent infringement.

    Trademarks: Yes, certain acts of trademark infringement may result in criminal liability usually invoked by the trademark owner; it is a criminal offense to use the symbol ® in connection with goods or services, even where the mark is not registered.

    Copyrights: Yes, certain acts of commercial copyright infringement constitute a criminal offense.

    Designs: Yes, a person who exploits a registered design through occupation and in a commercial manner, in one of the ways specified below and without the permission of the design owner shall be liable to a significant fine under section 61(a)(4) to the Penal Code-1977:

    1. Manufacture of a product bearing the identical design as a registered design;
    2. Importing a product that has a design identical to a registered design.

  17. What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in section A? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

    Customs and police enforcement is available for trademarks, registered designs and copyrights. All other enforcement is performed through litigation before civil (district and magistrate) courts.

  18. What is the length and cost of such procedures?

    Civil court procedures may last from a few to several years; see (‎32) below regarding costs.

    Police seizures may take place within 1-3 weeks from the filing date of the complaint, depending on the location of the site and the relevant IP police unit.

    As to Customs detentions, most cases are finalized with an agreement (sometimes in without filing an action). In such cases the procedure may take 3-8 weeks. If court proceedings are conducted in full (which is very rare), proceedings can take up to a year and a half.

  19. Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.

    Jurisdiction: patent infringement actions are litigated before a district court. Other IPRs infringement actions are usually litigated before a district court , which has jurisdiction over monetary claims exceeding ILS 2.5 million and claims where injunction is sought. Claims less than ILS 2.5 million are tried before a magistrate court. The plaintiff must pay court fees of up to 2.5% of the damages sought.

    Procedure and format: litigation begins with submission of pleadings, which must set forth the facts showing a cause of action. The defendant may file a defense statement within 60 days and the plaintiff may file a reply. After exchange of pleadings, preliminary proceedings of discovery and written interrogatories are conducted; there are no depositions. The court may hold pretrial hearings. At the last pre-trial hearing the court will issue an order setting a timetable for filing written evidence (affidavits and expert opinions). The court will then set a date for trial during which the affiants and experts will be cross-examined. The parties may also subpoena a person unwilling to sign an affidavit to testify in trial. Following trial, the parties file written summations and the judge takes the case under advisement and renders judgment.

    Time to judgment: the average length of a patent trial, from filing of the action until a final decision, is several years.

    Appeal: Final judgements may be appealed by right to the Supreme Court. Appeals on other decisions requires leave.

  20. What customs procedures are available to stop the import and/or export of infringing goods?

    a. Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?

    Judges generally do not have technical experience. In patent cases the judge may appoint an assessor. The judge may also be educated by the parties’ respective experts and may also appoint its own expert.

    b. What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

    Discovery and interrogatories are available. A party not satisfied with the counterparty's response may file a motion to compel, which should in principle be successful for relevant information that is not privileged, provided that the request is not overly burdensome.

  21. Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.

    There are no mandatory out-of-court dispute resolution mechanisms.

  22. What options are available to settle intellectual property disputes in your jurisdiction?

    The courts usually press the parties to settle or to agree to mediation. Parties may agree to mediation before or during litigation, and they may also agree to arbitrate in lieu of litigation.

  23. What is required to establish infringement of each of the intellectual property rights described in section A? What evidence is necessary in this context?

    Patents: That the defendant exploits the invention’s user by literal infringement or by the doctrine of equivalents. Exploitation means manufacture, sale, offer for sale, use or importation of a patent product or a product produced in a patented process.

    Copyrights: A person who performs in relation to a work any of the acts below or who authorizes another person to perform any such act, without the consent of the copyright owner, infringes the copyright, unless such act is permitted:
    Reproduction, broadcasting and making a work available to the public with respect to all categories of works;

    Public performance in respect of a literary work, dramatic work, musical work and sound recording;

    Making a derivative work and performing any act set forth above in respect of the aforesaid derivative work with respect to a literary work, artistic work, dramatic work and musical work;

    Rental in respect of a sound recording, cinematographic work and computer program.

    The presentation or description of the original work must show the date of its creation.

    Trademarks/Designs: That the infringer sold/offered for sale or performed a prohibited act with respect to the proprietary right at issue within the borders of the State of Israel.

  24. How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular – a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

    a. Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?

    Judges generally do not have technical experience. In patent cases the judge may appoint an assessor. The judge may also be educated by the parties’ respective experts and may also appoint its own expert.

    b. What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

    Discovery and interrogatories are available. A party not satisfied with the counterparty's response may file a motion to compel, which should in principle be successful for relevant information that is not privileged, provided that the request is not overly burdensome.

  25. How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?

    All declarations are subject to cross-examination. Refusal to allow cross-examination is very rare.

  26. What defences to infringement are available?

    Patents: Main defenses are non-infringement (the infringement does not fall within the scope of the patent claims, Bolar exception, experimental use exception) and invalidity. Prior user rights may also serve as a defense. Many other generally applicable defenses may apply, such as waiver, limitation and the like.
    Trademarks: No likelihood of confusion, descriptive fair use, laches and bad faith registration. Rights acquired through use may also serve as a defense.
    Designs: 1) Registered: the grounds for canceling the registration of registered design will serve as a good defense in the action for violating the registered design; 2) Unregistered: a claim that an unregistered design was not eligible for protection under the provisions of the Designs Law will serve as a good defense.
    Copyrights: Main defenses are: no copyrights subsist in the work; no infringement since the use is not substantial or quantitative; defenses of fair use, lack of originality or lack of ownership. Many other generally applicable defenses may apply, such as waiver and limitation.

  27. Who can challenge each of the intellectual property rights described above?

    Patents: Oppositions may be submitted by any third party. Cancellation of a granted patent may be submitted by any party.

    Copyrights: The defendant in a copyright action may claim that the plaintiff does not own the rights or did not create the allegedly infringing work.

    Trademarks: Any person and/or legal entity may file an opposition or a cancellation.

    Designs: There are no oppositions to design registrations; cancellation of granted designs may be submitted by any person.

  28. When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?

    Patents: Oppositions in Israel are pre-grant procedures. An opposition may be filed within three months of the publication of an intent of grant. Cancellation applications may be filed at any time.

    Trademarks: Oppositions may be filed within three months of the publication of the mark’s acceptance, prior to its final registration. Cancellation may filed on grounds that the mark has not been used in the last three years or that the registration was made in bad faith; other grounds for cancellation (such as lack of distinctiveness/ descriptiveness or likelihood of confusion) may be raised only within the first five years of the marks’ registration.

    Designs: Cancellation may be requested at any time so long as the design is valid.

  29. Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?

    Oppositions and cancellations are brought before the Registrar of Patents, Trademarks and Designs. The same arguments can also be raised before the court.

    Cancellation proceedings resemble those of a trial (common law approach), with submission of evidence in the form of affidavits, cross-examination of the affiants and written summations.

    Patents: The grounds for pre-grant opposition may also be the basis for a cancellation application

    1. any reason, because of which the Registrar could have refused to accept the patent application (including novelty, inventiveness, sufficiency of disclosure, utility, validity and so forth);
    2. the invention is not patentable because it is not novel due to exploitation or exhibition of the invention in a manner that enables a skilled person to make it according to the particulars thus made known;
    3. the opponent, and not the applicant, is the owner of the invention.

    Designs: Grounds for cancellation include: 1) design not eligible for registration (due to lack of novelty and/or originality under previous ordinance, or lack of novelty and individual character, under new law. 2) design application not filed by design owner; 3) two applications filed for same (or substantially similar) design.

    Trademarks: See (28) above.

  30. Are there any other methods to remove or limit the effect of any of the intellectual property rights described in section A, for example, declaratory relief or licences of right?

    It is possible to ask a district court to issue a declarative judgment holding that certain activity will not infringe a granted patent. Compulsory licenses for patents are available in extreme situations and licenses of rights are not available. Declarative judgments of non-infringement may also be obtained in respect of other IPRs.

  31. What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in section A?

    Temporary injunctions may be granted in all proceedings, subject to the plaintiff filing a security for compensation of the defendant if the temporary injunction is lifted.

    Permanent injunctions and compensation for damages are also available in all proceedings. Statutory damages, ranging up to ILS 100,000, are available in cases of copyright infringement and in passing off actions.

  32. What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?

    Costs vary depending on IPR type and case complexity and range between several tens of thousands US dollars to over a million. Israel has a system of "loser pays" but attorney fees awarded by the courts are generally a fraction of the actual costs. It is possible to ask for security for costs and such security will be provided primarily where the plaintiff is a corporation that cannot prove that it will be able to pay the attorney fees that may be awarded against it if it loses.