This country-specific Q&A provides an overview to intellectual property law in Israel.
It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.
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/index.php/practice-areas/intellectual-property/
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (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); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
Those mentioned above.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Duration is 20 years from the filing date, with some exceptions (see below).
The Israeli Patent Law allows for extending the term of a patent (PTE) relating to pharmaceuticals (including patents related to pharmaceutically active ingredients, pharmaceutical preparations, processes or use of active ingredients, and processes for producing a pharmaceutical preparation), or medical devices that require regulatory marketing approval.
According to the Patent Law, a PTE request must be filed within 90 days from registration of the pharmaceutical or medical device by the Israeli Ministry of Health, even when the patent application is still pending. The time limit for the request cannot be extended, however, according to recent ILPTO case law, the ‘date of registration’ from which 90 days should be counted, starts from the day the Marketing Authorization was delivered to the applicant by the Ministry of Health. The examination of a PTE application commences only after a patent is granted. The prosecution of an application that is pending a PTE decision is accelerated (the examination must begin within 30 days of the PTE submission and must be completed as soon as possible because the Registrar may shorten all deadlines for that matter).
Additionally, the grant of a PTE to an Israeli patent is tied to the grant and duration of term extension of corresponding and other related patents in “Reference Countries” which include the US, France, Germany, Italy, Spain and the UK.
Until recently, Israel acted in accordance with the Patents and Designs Ordinance – 1924, according to which the period of protection given to designs was 15 years. On July 26th, 2017, the Israeli Parliament adopted a new Design Law, which replaces the Patents and Designs Ordinance. Hence, newly filed design applications will be protected for 25 years under the new law.
According to the new law, designs submitted prior to the new Design Law are granted an extension of three years. Thus, the protection period for pending applications or for registered designs is 18 years.
According to the new law, unregistered designs which are novel and have ndividual character may also be protected for a term of 3 years, giving their owner the right to prevent unauthorised copying of the design.
Copyright in a work shall subsist during the life of its author and for 70 years after his death.
The period of protection given to trademarks is not limited in time as long as the renewal fees are paid.
Registered trademarks are valid for 10 years from the date of application, unless the registration date falls on or before August 6th, 2003, in which case they are valid for seven years from the date of application. Up until the end of August 2010, the renewal period was for a period of 14 years. From September 2010, the renewal period is for a period of 10 years.
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 first owner of an invention is the inventor himself or persons who derive title under him, being entitled to the invention by virtue of law, by transfer, or by agreement.
A patent owner is the person recorded in the Register as the person to whom a patent was granted or to whom ownership of a patent has passed.
Additionally, the Israeli Law also requires an employee to assign his or her rights to the employer for an invention that was envisaged as a consequence of the employee’s service and during the period of the employee’s service.
The Israeli Patent Act:
132.—(a) An invention by an employee, arrived at in consequence of his service and during the period of his service (hereafter: service invention) shall, in the absence of an agreement to the contrary between him and his employer, become the employer’s property, unless the employer relinquishes the invention within six months from the day on which notification under section 131 was delivered to him.
(b) If, in his notification under section 131, the employee stated that—in the absence of a contrary reply from the employer within six months after delivery of the employee’s notification—the invention will become the employee’s property, and if the employer made no contrary aforesaid reply, then the invention shall not become the employer’s property.
The owner of a trademark is the entity and/or individual in the name of which the trademark is applied-for or registered. Trademark rights may also be obtained through use in which case the owner is the entity and/or individual that uses the mark.
Which of the intellectual property rights described above are registered rights?
Patents, supplementary protection certificates, trademarks, association marks, certification marks, hallmarks, designations of origin, geographical indications, design, plant varieties.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Any inventor or owner of an invention may file a patent application. The procedure for registration requires filing an application and paying the subsequent fees. Israel is a Paris Convention country; thus, an applicant can enjoy the right of priority from an earlier application filed in a Convention country within the prior 12 months. Alternatively, the application may be filed as a National Phase from a PCT Application.
One who has a new and original design must submit an application form and drawings describing the protected design, a fee receipt, and a letter stating that the application is a new application for the sample. The examination is a substantive examination.
Any type of legal entity can register a trademark in Israel, including individuals.
Once filed, a trademark application is examined within approximately 15 to 18 months. Under certain conditions, and provided an affidavit is submitted and the official fee is paid, the examination may be accelerated. Once an office action is issued, the response must be filed within three months. This deadline may be extended by up to eight months, while the examination of the application must be finalized within two years of the first office action. Both absolute and relative grounds apply in the examination of trademarks. Once accepted, the mark is published in the Trademarks Gazette for a period of three months. If no oppositions are filed, the mark is registered shortly thereafter.
How long does the registration procedure usually take?
The pendency period for patent applications at the Israeli Patent Office has decreased in the last few years. Currently, the registration procedure lasts about 3-4 years.
There are a few provisions for expediting the examination of a patent application, including: expatiated examination of applications that were filed first in Israel, expediting examination of “green” technology inventions, PPH and GPPH procedures, and Modified Examination relying on corresponding granted patents.
In 2016, the average waiting time for the examination was 3.5 months, with the average duration of the examination also 3.5 months.
Usually the registration process lasts between 18 and 24 months but it can be longer depending on the complexity of the examination and the nature of the objections issued against a trademark application. For national applications, a foreign applicant requires an attorney for the filing, examination and registration of a trademark. When International applications designating Israel are concerned, a foreign applicant requires an attorney only if a response should be filed with the ILPTO directly and could not be handled through WIPO.
Do third parties have the right to take part in or comment on the registration process?
Any person, other than the applicant, has the right to submit to the examiner publications that are directly related to the invention. Such documents may be submitted during the prosecution but ending two months after the commencement of examination.
Once the patent application is allowed and published in the Patents Gazette, a third party has 3 months to oppose it.. If no opposition is filed within three months, the patent is granted.
Observations may be filed by any third party regarding the eligibility of the proposed mark during the examination of the mark by the ILPTO. The ILPTO notifies the applicant of such observations, allowing the applicant to respond thereto. Unless the applicant responds to the observations and/or requests to attend a hearing before the Registrar within three months, the ILPTO will issue a notification that the registration process has not been completed. Unless the applicant requests an extension or responds to said notification within three months, the application will be abandoned.
Once a mark is published there is a three-month period within which any third party who has a stand pursuant to the Israeli Trademark Ordinate may file opposition.
What (if any) steps can the applicant take if registration is refused?
The applicant can first try to overcome a refusal directly with the patent examiners. An application for appeal can be submitted to the Registrar of Patents as a second step, in which the applicant will argue against the objection in an attempt to persuade the registrar. The third step, in the case of a refusal by the registrar, is an appeal before the district court. The final step is a request of permission to appeal to the Supreme Court.
What are the current application and renewal fees for each of these intellectual property rights?
The fee for filing an Israeli patent application is 2014.00 NIS (approx. USD 564), while individuals, academic institutions or technology transfer companies solely owned by academic institutions, pay a reduced rate of 60% of the application fee (an additional fee is paid for any additional claim above the 50th claim, and for an extra 50 pages above the 101th page). Once an application is granted, an acceptance fee for an amount of 705.00 NIS (approx. USD 198) is paid (while individuals or academic institutions PAY 60% of the fee). After the patent is granted, renewals fees are paid based on the number of years elapsed from the date of filing:
1st to 6th years: 806.00 NIS (approx. USD 226)
1st to 10th years: 2417.00 NIS (approx. USD 677)
1st to 14th years: 4834.00 NIS (approx.. USD 1,354)
1st to 18th years: 8863.00 NIS (approx. USD 2,483)
1st to 20th years: 12086.00 NIS (approx. USD 3,386)
If the application was accepted within 6 years, the following renewal fees will be as follows:
7th to 10th years: 1611.00 NIS (approx. USD 451)
11th to 14th years: 2417.00 NIS (approx. USD 677)
15th to 18th years: 4029.00 NIS (approx. USD 1,129)
19th to 20th years: 5640.00 NIS (approx. USD 1,580)
The fees for filing a Design application in One Class – 396 NIS (approx. USD 111)
Application for a Set of Articles – 593.00 NIS (approx. USD 166)
First renewal (1st to 5th years) – 431.00 NIS (approx. USD 121)
Second Renewal (11th to 15th years) – 857.00 NIS (approx. USD 240)
The renewal fees will probably be updated once Israel’s new Designs Law will come into force (July, 2018).
Single class – 1604 NIS (approx. USD 449)
Any other class included in the same application – 1205 NIS (approx. USD 338)
Single class - 2859 NIS (approx. USD 801)
Any other type under the same name – 2413 NIS (approx. USD 676)
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?
If the renewal fees were not paid, there is a 6 montha grace period during which the renewal fees can be paid, together with an additional late fee.
At the end of the grace period, the Patent expires (due to unpaid fees), and its expiration is published.
A patentee may request to revive a patent that has lapsed. Such request should provide arguments to convince the Registrar of Patents that the non-payment of the annuity was for a reasonable cause, that the patentee did not intentionally let the patent lapse, and that the request for revival has been filed as soon as possible after the patentee has become aware of the failure to pay the annuity, and provided that the associated revival fee is paid.
Following the filing of such a request, the examiner, after being convinced as such, will publish the intention to revive the patent in the Patents Gazette and the application will be opened for oppositions for 3 months. If no opposition has been filed during the opposition period, the Registrar of Patents will publish the revival, and he may set terms and stipulations for the re-establishment.
The term of protection is ten years from the filing date. There is a grace period of six months to renew a mark, provided that the relevant official fees are paid. Unless a registered trademark is renewed within the statutory deadline or the grace period, the trademark is abandoned. However, the abandoned trademark will remain valid for citation purposes for an additional period of 12 months.
What are the requirements to assign ownership of each of the intellectual property rights described above?
Upon filing the Israeli application, one should indicate whether the rights of ownership are being transferred by assignment or by employment. There is no need to submit a written assignment to the Israeli Patent Office.
In order to record an assignment of rights later on, a suitable request in writing needs to be submitted with the ILPTO by the assignee, with a supportive Deed of Assignment.
The assignment of rights must be submitted to the Registrar of Patents. Non-registration means that the assignment of rights is valid only between the parties.
A contract for the granting of a unique or exclusive license requires a written document.
In order to record an assignment of rights, a suitable request in writing needs to be submitted with the ILPTO by the assignee. This request must include an original Deed of Assignment that includes a statement that to the best of the assignee or assignor’s knowledge, the record of the assignment will not cause confusion amongst the public. If such a statement is not indicated in the deed of assignment document, a separate suitable affidavit may be provided.
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 and designs:
The ownership of design and patents are officially recorded at the Patent Office. The transfer of rights in a patent or design may be done in writing and should be recorded in order to be valid against third parties.
The assignment should be recorded with the ILPTO as soon as possible, or any use of the mark by the assignee may not be attributed to the assignee, which may lead to non-use cancellation actions.
What are the requirements to licence a third party to use each of the intellectual property rights described above?
In order for any license to be valid against third parties, the license should be registered by filing a suitable request supported by the license agreement.
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?
An application for registration of a license shall be submitted by the licensee, as the case may be, or his representative, the following documents shall be attached thereto, and the payment shall be effected as follows:
- Deed or license agreement.
- Payment of a fee according to item 7 of the First addition to the Regulations, for each application for registration of a trade mark or a registered trade mark in respect of which an authority has been registered.
- A power of attorney from the licensee, to the extent that the request was submitted by his representative.
Approval by one of the parties of the agreement or confirmation by their representatives that, to the best of their knowledge, the license does not mislead the public. Alternatively, reference to the absence of such misleading can be done by way of reference to the fact that this also arises from the license documents.
Recording of a license in Israel with the ILTMO is mandatory as otherwise the use of the mark in Israel by the licensee may not be attributed to the owner of the trade mark, leading to possible non-use actions.
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?
Non-exclusive licensee - Non-exclusive licensees cannot sue for patent infringement. However, in some circumstances, they can join a claim seeking compensation for damages suffered and unjust enrichment. When the license is non-exclusive / unique, the right to file a claim remains with the owner of the right and the licensee can join as a party to the proceeding.
Exclusive licensee - An exclusive licensee can sue for patent infringement, if the exclusive license has been registered in the patents register. A license that has not been registered is not binding on third parties.
The law does not relate to the distinction between licenses, but it is assumed that a unique license entitles the license holder to a right to file a claim. In a non-unique license, the right to file a claim remains with the owner, when the licensee can join as a party to the proceeding.
A claim of copyright infringement can be filed by the copyright holder. If a unique license is granted, then the licensee may file a claim as well.
Non-exclusive license - the license is granted to one or more licensee and does not preclude the holder from granting licenses to any other person and does not prevent the holder from using the mark.
Exclusive license - the license is granted only to one licensee and precludes the holder from using the mark and from granting licenses to any other person);
Sole license - the license is granted only to one licensee and precludes the holder from granting licenses to any other person but does not prevent the holder from using the mark.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
According to the new Designs Law (coming into force July, 2018), 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 holder, shall be liable to the significant fine prescribed in Section 61(a)(4) to the Penal Code-1977 (i.e., up to NIS 226,000, (approx. USD 62,414)):
- Manufacture of a product bearing the identical design as a registered design
- Importing a product that has a design identical to a registered design
In case the offense is conducted by a corporation, the fine will be doubled.
A person who infringes copyrights shall be liable to up to 5 years imprisonment or fined in the amount of ten times the fine provided for in Section 61(a)(4) of the Penal Act.
A person who sells or distributes infringing goods, shall be liable to up to 3 years imprisonment or fined in the amount of seven times the fine provided for in Section 61(a)(4) of the Penal Act.
A person who holds an object to produce copies which infringe copyrights, shall be liable to up to 1 year imprisonment or double the fine provided for in Section 61(a)(4) of the Penal Act.
In case the offense is conducted by a corporation, the fine will be doubled.
Plaintiff must prove that the defendant used the registered trademark without the rights holder’s authorization or approval, in a manner that may deceive a third party. If found guilty, defendants face imprisonment for up to three years, or fine in the amount of seven times the fine provided for in Section 61(a)(4) of the Penal Act.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
IP litigation in Israel generally follows the basic procedure of general Israeli litigation. Therefore, the owner of the property is granted procedural rights, including: civil court proceedings, alternative dispute resolution, copyright infringement claim, damages without proof of injury, injunction for copyright infringement, destruction of the infringing copies, a request for interim remedies, request for permanent injunction.
Apart from patents, the possibility of acting through customs authorities is subject to each of the intellectual property rights.
What is the length and cost of such procedures?
The length and costs of IP litigation in Israel, as with any other litigation, will vary from case to case, depending on the complexity of the issues, the need for outside experts, the number of motions and appeals, the number of parties involved, etc.
Where the cases are simple, the length of IP proceedings will be between 2-4 years and the cost between $100,000-$200,000. Yet in complicated cases, especially in Patent Litigation the procedure may take longer than 5 years and with costs exceeding $250,000.
Designs, Copyrights and Trademarks:
For simple cases, the length of proceedings may be between 6 months to 3 years and with costs between $50,000-$100,000. In complicated cases, the procedure may take longer than 4 years and cost more than $150,000.
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.
IP litigation in Israel generally follows the basic procedures of general Israeli litigation. On average, a case involving infringement can be expected to take anywhere from six months to three years. This does not include appeals, which may take from six months to two years.
Most IP claims are brought before the District Court as they usually involve injunction orders. If they involve only a monetary remedy up to NIS 2,500,000, they will be brought before the Magistrate court. In addition, decisions of the Patent and Design Registrar (e.g., revocations, discussed below) may be appealed before the District Court.
District Court decisions may be appealed to the Supreme Court. Similarly, the District Court hears appeals from decisions of the Trademarks Registrar (e.g., regarding oppositions, as discussed below). An appeal may take from six months to two years.
In practice, a minority of cases of intellectual property infringement are actually resolved in Israeli courts. Moreover, Israeli courts almost always demand that parties submit to non-binding mediation. Approximately one-third of all Israeli claims, including claims of intellectual property infringement, are resolved through court-mandated mediation.
A large portion of patent infringement cases commence with a motion for a preliminary injunction seeking to stop the allegedly infringing activities, which is filed with the complaint for infringement. Under Israeli common practice, patent infringement trials commence not with validity questions, but rather with the issue of infringement. If the court decides that an infringement has occurred it will proceed to examine issues of validity – for example, questions related to novelty and non-obviousness. The parties rely on testimony in the form of affidavits and documents submitted to the court by witnesses. During the oral hearings, each witness is cross-examined on his or her affidavit by the other party. There is no obligation for parties to provide testimony from expert witnesses. However, due to the inherent technical aspects of most patent lawsuits, it is common to have expert witnesses in patent cases. Usually, the parties submit their experts’ opinions in the form of affidavits. The court also has the authority to appoint an expert on its own behalf for any technical matter in dispute between the parties, in which case the court-appointed expert’s opinion will carry much greater weight than those of the parties’ experts. Any expert, whether appointed by the court or the parties, may be cross-examined on his or her opinion on behalf of the other party (a court-appointed expert may be cross-examined by both parties). The average length of a patent trial, from filing of the action until a final decision, is two and a half to three years. This includes pre-trial hearings, hearings regarding preliminary injunctions, and hearings on the main subject matter of the action.
An accused infringer (or any other person) may file a petition to the district court requesting a declaratory judgment of non-infringement or invalidity. In the case of invalidity, an accused infringer may instead choose to file a request with the Registrar of Patents for revocation of the patent due to invalidity.
What customs procedures are available to stop the import and/or export of infringing goods?
Customs procedures are available for infringement of trademarks, copyrights, and designs, but not patents.
Border measures in Trademarks:
According to the Customs Ordinance, the Customs Authority is entitled to detain imported goods that are suspected of infringing trademarks. It is possible, though not mandatory, for rights holders to file a complaint while recording their registered trademarks with Customs. It is highly recommended that such a complaint be filed if the rights holder is aware of specific shipments of infringing goods bound for Israel or if it wishes to bring certain trademarks to the attention of Customs. The following documents must be submitted with a complaint filed with Customs:
- A guarantee in which the trademark owner undertakes to indemnify Customs and/or the importer for any unjust damages;
- Photographs and/or catalogues of goods depicting the trademark, in order to enable Customs to distinguish genuine goods from infringements;
- Power of attorney; and
- Specific information regarding the importer and country of origin of the infringing goods, if available.
Notwithstanding the above, Customs is authorised to seize suspected goods (whether as a result of a complaint submitted by the rights holder or as a result of a random examination of shipments arriving in Israel). Once such goods are seized, Customs must send appropriate notice to the rights holder and the importer.
In most cases the rights holder must submit a bank guarantee to Customs in order to compensate the importer for any financial damage that may be inflicted as a result of the seizure or the filing of a lawsuit. Upon receiving notification, the rights holder has three working days (an extension of three working days is available) in which to respond. He may either submit the required bank guarantee or request a three-day extension in which to submit it. Only after the bank guarantee has been submitted will Customs advise the rights holder of the importer’s details and allow them to obtain a sample of the seized goods.
Where the goods are indeed counterfeit, the rights holder can either settle the matter amicably with the importer or file a lawsuit against it within 10 working days of the notice date (an extension of 10 working days is available upon filing a reasoned request). Should the rights holder choose to take no further action, the goods will be released.
In some cases, Customs may agree to destroy the goods based on a written opinion submitted by the rights holder, in which he indicates the reasoning behind its belief that the goods are indeed infringing and an undertaking that the rights holder will compensate the importer for any financial damage that may be inflicted as a result of the seizure, as well as to join Customs in any lawsuit initiated by the importer. Such circumstances include the following:
- The goods are in a small shipment which includes several brand-name goods;
- The shipment is suspected of violating the rules of legal imports; or
- The goods arrive in a parcel through the mail.
Border measures in copyrights: are similar to the measures taken in trademarks infringement, yet extremely rare.
Border measures in design: according to the new law, Customs may detain suspected goods, following owner request. This provision does not apply to goods imported for personal use.
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.
What options are available to settle intellectual property disputes?
As is well known, litigation is often the most expensive and least effective means of enforcing one’s IP rights. Non-judicial alternatives are usually less expensive and substantially quicker. However, in many cases, it is still necessary to file a claim with the court to induce another party to settle. As noted above, Israeli courts often pressure parties to settle prior to trial, and usually delay the commencement of trial to allow sufficient time for settlement negotiations.
The following alternatives to litigation are available in Israel:
(i) Settlement During ILPO/ILTO Proceedings
Under Israeli Trademarks and Patents laws, parties may settle a dispute during the application process for a patent or trademark.
Israeli courts often recommended arbitration. The decision of the arbitrator is final and binding on the parties. The arbitrator’s decision requires and usually receives court approval, which renders the decision a binding judicial ruling.
Mediation is usually mandated by the court where the parties have expressed a willingness to negotiate and settle. Unlike arbitration, mediation is non-binding and statements and offers made in mediation are not admissible in court.
(iv) Out of Court Settlement
An out-of-court settlement is usually the quickest and least expensive resolution of IP claims. The settlement generally involves agreement on a certain amount of compensation, royalties, cross-license arrangements, etc.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
There are no clear rules and each case will be examined according to its circumstances. Generally speaking, in order to establish infringement, the person who claims the violation will be required to prove that he has a proprietary right. In the case of patents, designs and trademarks - will be required to present the license certificate.
In the case of copyrights, a presentation or description of the work will be required and in the absence of registration, the date of its creation.
To prove the infringement, the person claiming the infringement must prove that the infringer sold / offered for sale or did a prohibited action in the property right of the person claiming an infringement, within the borders of the State of Israel.
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?
There is no technical judge; The court may appoint an expert or an expert agreed by the parties. In addition, Section 189 of the Israeli Patents Law permits the court to appoint a scientific adviser:
189.—(a) In proceedings under this Law, the Court may appoint a scientific adviser, who shall assist it in taking evidence and shall advise it, but who shall not take part in making judgment.
(b) The scientific adviser’s remuneration shall be set by the Court and paid out of the State Treasury.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Each party in a proceeding may file a petition requesting the court to grant an order for discovery directed to any of the other parties. The court may order the responding party to produce, in the form of an affidavit, a list of all documents in its possession that are relevant to the subject matter of the proceeding. This petition to the court may not be filed unless the petitioner has first requested the other party to provide a list of the documents. In a similar manner, the court may order a party to state whether a specific document is or has been in its possession. The court may also order a party, subject to provisions of confidentiality and relevance, to let the other party inspect and copy the listed documents. With respect to unlisted documents, a party may file a petition to the court for inspection and copying of a specific document held by another party that has not been specified in any pleading or affidavit.
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?
Israel has an adversarial legal system, and accordingly, witness testimony is presented in court and is subjected to cross-examination.
The testimony of witnesses is necessary to establish infringement before the courts. That said, most direct testimony is filed as an affidavit, and witnesses are only subjected to cross-examination in court.
What defences to infringement are available?
The first defense argument is the claim that the owner of the right, has no rights and / or should not have received it. In patents, the claim will be that the owner should not have been given the patent. In copyrights, a claim that the owner has no rights in the work, etc. The second defense argument is that there is no infringement. In patents, the infringement does not fall within the scope of patents claims, in designs – this is not a blatant imitation of the design. Copyright – no significant part of the work was taken, in trademarks – that there is no misleading similarity.
Each of the laws has specific defenses, such as in patents – Prior use defense (section 53 to the Israeli Patent law):
53. If, on the determining date, a person in Israel in good faith exploited the invention for which the patent is applied for, or if he in good faith made actual preparations for its exploitation, then he shall be entitled to exploit the invention himself and in the course of his business without consideration; for the purpose of this provision, the “determining date” is the date on which application for the patent was submitted in Israel or—if priority right under section 10 is claimed for that application—the date of submission of the previous application on which the claim for priority right is based.
Other defenses available to an alleged infringer include:
The patent is not infringed because:
- The activity of the alleged infringer does not fall within the scope of the claims; or
- The activity does not fall within the definition of ''exploitation'' of the invention, such as non-commercial use, experimental use aimed at improving the invention or making another invention and experimental use towards obtaining regulatory marketing approval for use after the expiry of the patent.
- Invalidity of the patent.
- The ownership of the invention belongs to the alleged infringer and not to the patent holder.
- The alleged infringement was commenced after publication of the patent's expiry, even though it was subsequently reinstated.
- The allegedly infringing use is made by a prior user, who under the law has the right to continue such use.
The patent holder has acquiesced or impliedly consented to the allegedly infringing use. Additional defences in all areas of intellectual property are defences of equity, such as acquiescence, laches, fair use, innocent infringer and good faith.
Who can challenge each of the intellectual property rights described above?
The opposition procedure in Israel is a pre-grant procedure. The period of opposition is 3 months from the publication on an intent of grant. Such an opposition may be submitted by any third party. Due to the pre-grant procedure, applicant is not able to initiate a patent infringement action during the opposition procedure.
One of the main defenses raised in a patent infringement action, is invalidity of the patent.
Cancellation of a granted patent may be submitted at any time as long as the patent is in force. Cancellation can be filed by any party, including the patent holder.
There are no oppositions to design registration.
During a copyright infringement action - the defendant may claim that the plaintiff does not own the rights or did not create the allegedly infringing work. It is also possible to submit a motion for declarative relief.
Any person and/or legal entity can file an opposition, provided there are grounds to do so. Israeli opponents do not have to be represented by an attorney, but foreign opponents need to work with a local counsel. The same applys to cancelation proceedings of a registered trademark.
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)?
A challenge to Patents, Designs and Copyrights can be made throughout the right period. Patents – 20 years, Designs – 25 Years (according to the new Designs Law), and copyrights – during the life of the author and for 70 years after his death.
In patents and trademarks - A request for opposition may be filed after the acceptance of the mark, prior to its final registration (Pre-grant opposition). Trademarks may be challenged at any time by filing a cancellation request on grounds that the mark has not been used in the last 3 years , or on the grounds that the registration was achieved in bad faith. Other grounds for cancellation, may be raised only in the first 5 years after the marks’ registration.
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?
Opposition and cancellation are brought before the Registrar of Patents, Trademarks and designs. As mentioned above, the same arguments can also be raised before the court.
The grounds for opposition include: (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.
The grounds for cancellation include: 1) the design was not eligible for registration (due to lack of novelty and/or originality under the previous ordinance, or lack of novelty and individual character, under the new law. 2) the design application was not filed by the owner of the design; 3) two applications were filed for the same (or substantially similar) design.
As discussed above in answer 28.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
Yes, declaratory relief.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
The following remedies are available to IP owners for infringement claims:
Monetary damage awards are relatively small compared to the norm in OECD countries. An award of damages generally requires proof of infringement and amount of damages, or, at least, a reasonable estimate of damages. In assessing the amount of monetary damages, a court may require the plaintiff to provide an accounting of the amount of the damages. However, the court’s final award of damages will not necessarily be bound by this accounting. Courts routinely award statutory (stipulated) damages, without proof of damage, in the amount of up to NIS 100,000 (approximately US$27,700) for each infringement.
(ii) Punitive Damages
Punitive damages are available in Patents if the court concludes that the infringement continued after the rights owner gave notice to the infringer. In trademarks, designs and copyrights, the Court may also take into consideration punitive interest when determining the damages. In which case the amount of the punitive damage award will not exceed the amount of the award for actual damages.
(iii) Preliminary and Permanent Injunctions
Preliminary injunctions may be issued if a party can provide apparent proof of cause, convince the court of urgency and, in most cases, provide its own or a bank guaranty. Approximately one month later, the court usually holds a more comprehensive hearing to consider the continuation of the preliminary injunction. Often the preliminary injunction is left in force throughout the litigation of the main claim. Since such litigation may continue for years, and given the dynamic pace of change in high-tech sectors, the preliminary injunction is usually sufficient to restrain or repress competition.
(iv) Giving Account
The court may order a defendant to provide the plaintiff a complete report on details and accounts with regards to its infringing activities.
The courts generally award costs to the prevailing party in litigation. However, costs are usually subject to caps set by regulation and rarely amount to more than 50% of the actual legal fees expended.
(vi) Collection and/or Destruction of Infringing Items
In cases of trademark or copyright infringement, a trademark or copyright owner may demand that the infringer deliver to the owner or destroy all copies of the infringing material as well as the relevant printing plates. In cases of trade secret infringement, the court may issue an order to enter into private premises and seize relevant evidence.
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?
The courts generally award costs to the prevailing party in litigation. However, costs generally are subject to caps set by regulation and rarely amount to more than 50% of the actual legal fees expended.
Before an order based on prima facie evidence is granted, the court will require the petitioner to provide a security to cover damages suffered by the respondent, in the event that the order is revoked.