Israel: Intellectual Property

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

Patents; 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; Certification Marks; Designations of Origin; Geographical Indications; Passing Off; Unjust Enrichment.

(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).

Copyrights; Designs; Plant Varieties.

Patents – 20 years from the filing date. A Patent Term Extension (PTE) of up to 5 additional years is available for pharmaceutical and medical devices patents, upon filing a petition and under certain conditions.

Trade secrets – as long as they remain confidential.

Trademarks (including certification marks; Designations of Origin; Geographical Indications) – 10 years from the filing date. Can be renewed indefinitely for a 10 years period each time.

Copyright – 70 years from the death of the author. 50 years for copyright in a work in which the State is the first owner of the copyright.

Design rights – Protection for a registered design lasts for an initial period of 5 years from the filing date. The registration must be renewed every 5 years up to a maximum of 25 years.

Plant breeder’s rights – 20 years from the registration date. Varieties of vines, fruit trees, forest trees and any other perennial plants are given 25 years of protection from the registration date. The registration is to be renewed annually.

Patents – The person and/or entity who submitted a patent application is deemed the owner of the invention, as long as the contrary has not been proven.

In the case of a service invention, the employer is the owner of an invention, which was, invented by an employee as a result of and during his employment.

Trademarks (including certification marks; designations of origin; geographical indications) –

The person/entity on behalf of which a trademark application was filed is deemed the owner of the trademark.

Copyrights –

1. The author of a work is the first owner of copyright in the work.
2. The producer of a sound recording is the first owner of copyright in a sound recording.
3. The employer is the first owner of copyright in a work made by an employee in the course of his service and during the period of his service, unless otherwise agreed.
4. In a work made pursuant to a commission, the first owner of the copyright is the author, unless otherwise agreed between the commissioning party and the author.
5. In a work which is a portrait or a photograph of a family event or other private event, made pursuant to a commission, the first owner of the copyright shall be the commissioning party, unless otherwise agreed.
6. The State shall be the first owner of a work made by, or commissioned for, the State or by an employee of the State in consequence of his service and during the period of his service.

Designs –

1. The designer is the first owner of a design.
2. The first owner of a design that was designed by an employee in the performance of his duties, or by actual use of the employer’s resources, is the employer, unless agreed otherwise between the employee and the employer.
3. The first owner of a design that was designed upon commission is the customer, unless agreed otherwise between the customer and the designer.

Plant breeders’ rights –

1. A breeder’s right in a variety shall be held by the person in whose name they are registered in the Register of Rights.
2. Where an employee has bred a variety in consequence of his service, the right to register a breeders’ right in the variety shall be the employer property, unless otherwise agreed by them, or unless the employer made a written waiver of the right within six months from the date on which the employee notified him about breeding the variety.

Patents; Trademarks (including certification marks; designations of origin; geographical indications) Designs; Plant breeder’s rights.

Patents – The owner of a patentable invention is entitled to apply for a patent.

The general procedure for patent registration is as follows:

1. Filing a patent application.
2. Disclosure under Section 18 of the Israel Patent Law. Prior to substantial examination, the applicant must submit any publications that could be considered to be material to a determination of patentability of the claimed invention. The duty of disclosure is continuous until acceptance of the patent application.
3. Substantial Examination of the application (no request for examination is required).
4. Publication of acceptance of the application for opposition purposes (three months).
5. Registration of the patent (if no opposition is filed within the opposition period, or if opposition has been dismissed).

Trademarks – Any person claiming to be proprietor of a trade mark used or intended to be used by him who is desirous of registering the same shall apply in writing to the Registrar.

The general procedure for trade mark registration is as follows:

1. Filing a trade mark application.
2. Examination of the application (usually within 6-8 months of its filing).
3. Publication of the application for opposition purposes (three months).
4. Registration of the mark (if no opposition is filed within the opposition period, or if opposition has been dismissed).

Designs – A proprietor of a design may file a design application.

The general procedure for design registration is as follows:

1. Filing a design application.
2. Substantial examination of the application (usually within 6-8 months of its filing).
3. Registration of the design.

Plant breeders’ rights – The breeder is entitled to apply that a breeders’ right in a variety bred by him be granted him for it.

The general procedure for plant breeders’ rights registration is as follows:

1. Filing a plant breeders’ rights
2. Publication of the application for opposition purposes (90 days).
3. Examination of the variety.
4. Registration of the right.

Patents – usually 3-6 years from filing. Expedited examination is available under certain conditions.

Trademarks – usually 9-24 months from filing. In any case, examination will be completed within 24 months from the issuance of the first examination report. Expedited examination is available under certain conditions.

Designs – usually about 5-16 months from filing. In any case, examination will be completed within 12 months from the issuance of the first examination report.

Plant breeders’ rights – usually 3-6 years from filing.

Patents – Third parties can submit prior art to the examiner prior to examination until a specific due date. Third parties can submit a notice of opposition within 3 months from the date of publication of acceptance of the patent.

Trademarks – Third parties can submit a notice of opposition within 3 months from the date of publication of acceptance of the trademark.

Designs – no opposition period is available.

Plant breeders’ rights – Third parties can submit a notice of opposition within 90 days from the date of publication of filing of the Plant breeders’ right.

Patents – The Examiner’s decision can be appealed by requesting to conduct a hearing before the Registrar. The Registrar’s final decision may be appealed to the District Court. The District Court’s decision can be appealed to the Supreme Court only if granted leave. Such leave will usually only be granted based on a question of law.

Trademarks – The Examiner’s decision can be appealed by requesting to conduct a hearing before the Registrar. An appeal on the Registrar’s decision can be filed to the District Court in Tel Aviv or Jerusalem, according to the appealing party’s choice. The District Court’s decision can be appealed to the Supreme Court only if granted leave. Such leave will usually only be granted based on a question of law.

Designs – The Examiner’s decision can be appealed by requesting to conduct a hearing before the Registrar. The Registrar’s final decision may be appealed to the District Court. The District Court’s decision can be appealed to the Supreme Court only if granted leave. Such leave will usually only be granted based on a question of law.

Plant breeders’ rights – The Examiner’s decision to refuse registration can be appealed to the District Court in Jerusalem. The District Court’s decision can be appealed to the Supreme Court only if granted leave. Such leave will usually only be granted based on a question of law.

Patents – The application fee is NIS 2,077 (approx. USD 600).

The renewal fees are as follows:

Fee for renewal before the expiration of three months from the date of grant of the patent, up to the end of 6 years from the date of the application: NIS 813 (approx. USD 235).

Fee for renewal before the end of the 6th year from the application for the next 4 years: NIS 1,662 (approx. USD 480).

Fee for renewal before the end of the 10th year from the application for the next 4 years: NIS 2,493 (approx. USD 720).

Fee for renewal before the end of the 14th year of application for the next 4 years: NIS 4,154 (approx. USD 1,200).

Fee for renewal before the end of the 18th year of application for the next 2 years: NIS 5,816 (approx. USD 1,680).

Renewal for the entire patent period (20 years from the filing date): NIS 12,463 (approx. USD 3,600).

Trademarks – The application fee for one class is NIS 1,654 (approx. USD 477).

The application fee for each additional class is NIS 1,242 (approx. USD 360).

The renewal fee for one class is NIS 2,948 (approx. USD 850).

The renewal fee for each additional class in the same registration is NIS 2,488 (approx. USD 718).

Designs – The application fee is NIS 408 (approx. USD 118).

The renewal fees are as follows:

Fee for renewal for the years 5-10: NIS 510 (approx. USD 147).

Fee for renewal for the years 10-15: NIS 611 (approx. USD 176).

Fee for renewal for the years 15-20: NIS 713 (approx. USD 205).

Fee for renewal for the years 20-25: NIS 815 (approx. USD 235).

Renewal for the entire design period (25 years from the filing date): NIS 3,057 (approx. USD 882).

Plant breeders’ rights – The application fee is NIS 7,138 (approx. USD 2,060).

The annual renewal fee is NIS 133 (approx. USD 38).

Patents – There is a 6-mnoths grace period where the renewal fee can be paid together with extension fees. If the renewal was not paid by the end of the grace period, the patent will lapse. It is possible to file a request for reinstatement of the patent. If the Registrar is satisfied that the renewal fee was not paid due to a reasonable cause, that the patentee did not intend for the patent to lapse, and that the application for reinstatement of the patent was submitted as soon after the fact of non-payment had become known to the patentee or to any such person who is responsible on his behalf for payment of the fee, then he shall instruct the publication of the reinstatement for opposition. If no opposition is filed within the 3-months opposition period, the patent will be reinstated.

Trademarks – There is a 6-months grace period where the renewal fee can be paid together with extension fees. If the renewal was not paid by the end of the grace period, the trademark will expire. It is possible to file a request for reinstatement of the trademark within 12 months from the due date to pay the renewal, and the decision is at the discretion of the Registrar. If the Registrar decides that it is just to reinstate the trademark, the trademark be reinstated.

Designs – There is a 6-mnoths grace period where the renewal fee can be paid together with extension fees. If the renewal was not paid by the end of the grace period, the design will lapse. It is possible to file a request for reinstatement of the design within 6 months from the publication of the lapse of the design. If the Registrar is satisfied that the renewal fee was not paid despite reasonable measures were taken to pay the fee on time, then he shall instruct that the design be reinstated.

Plant breeders’ rights – There is a 6-mnoths grace period where the renewal fee can be paid together with extension fees. If the renewal was not paid by the end of the grace period, the right will lapse. It is possible to file a request for reinstatement of the right. If the Registrar is satisfied that the renewal fee was not paid due to a reasonable cause, that the right owner did not intend for the right to lapse, and that the application for reinstatement was submitted as soon after the fact of non-payment had become known to the right owner or to any such person who is responsible on his behalf for payment of the fee, then he shall instruct the publication of the reinstatement for opposition. If no opposition is filed within the 3-months opposition period, the right will be reinstated.

Patents – Rights in a patent may be transferred, and requires a written document.

Trademarks – A registered trademark may be assigned by the proprietor, and requires a written document and confirmation by one of the parties to the agreement, or by their counsel that, to the best of their knowledge, the assignment does not mislead the public. Alternatively, the fact that the assignment does not mislead the public can be learned from the assignment documents.

The Registrar may refuse to register a transfer as aforesaid if, in his opinion, the use of the mark by the assignee is likely to deceive the public or if, in his opinion, the transfer is contrary to public order.

Designs – The rights in a design are wholly or partially transferable, under agreement or under the provisions of any law, and require a written document.

Plant breeders’ rights – a breeders’ right may be transferred, and requires a written document.

Patents – The transfer of a patent by agreement is in effect only for the parties to the agreement, unless it was registered in the Register.

Trademarks – a document which was not recorded in the Register shall not be admitted in evidence in any court in proof of the title to a trademark unless the Court otherwise directs.

Designs – The transfer of rights in a registered design is not valid against any third parties unless registered in the Register.

Plant breeders’ rights – The transfer of a breeders’ right is not valid against any third parties unless registered in the Register.

Patents – A patent holder may give an exclusive or nonexclusive written license to exploit the invention for which the patent was granted. Requires a written document.

Trademarks – The proprietor of a registered trademark may authorise another person to use the trademark in relation to all or any of the goods in respect of which it is registered, and the Registrar may register it subject to such conditions and limitations as he may think fit. It requires a written document and confirmation by one of the parties to the agreement, or by their attorney, that to the best of their knowledge the licence would not mislead the public (unless a confirmation to this effect is included in the agreement itself). Furthermore, the applicant must specify the type of licence granted (i.e. sole/exclusive/non-exclusive) and whether the licence will be registered with respect to all of the goods/services or part thereof.

There are three types of licence which are recognised in Israel:

1. Exclusive – a licence that grants the licensee the exclusive right of use of the mark and prohibits the owner of the mark from making use of the mark.
2. Sole – a licence that grants the licensee the exclusive right of use of the mark and does not prohibit the owner of the mark from making use of the mark.
3. Non-exclusive – a licence that grants the licensee the right of use of the mark without limiting the right of use of the owner of the mark or others on his behalf.

Designs – An agreement for the grant of an exclusive license in a design requires a written document.

Plant breeders’ rights – There are no provisions concerning licence of a breeders’ right to a third party in the Plant Breeders’ Rights Law.

Patents – A license under a patent is in effect only for the parties to the agreement, unless it was registered in the Register.

Trademarks – A license shall not be valid unless it has been registered.

Designs – The grant of an exclusive license in a design is not valid against any third parties unless registered in the Register.

Patents – An exclusive licence enables the licensee to sue third parties for infringement, while a non-exclusive does not.

Trademarks – The Trade Marks Ordinance grants only the trade mark owner the right to sue for trade mark infringement. Having said that, according to some court decisions, it is possible for a licensee to sue in the name of the owner of the trade mark provided that he gets an adequate Power of Attorney from the owner.

Designs – An exclusive licence enables the licensee to sue third parties for infringement, while a non-exclusive does not.

Patents – There are no criminal sanctions for the infringement of patents.

Trademarks – Infringement of a registered trademark is a felony punishable by up to 3 years imprisonment or a fine of up to NIS 1,582,000 (approx. USD 487,195).

Copyrights – Infringement of a copyright is a felony punishable by up to 5 years imprisonment or a fine of up to NIS 2,260,000 (approx. USD 696,250).

Designs – Infringement of a design is a felony punishable by a fine of up to
NIS 226,000 (approx. USD 69,650).

Plant breeders’ rights – Infringement of a plant breeders’ right is a felony punishable by up to 2 year imprisonment or a monetary fine.

Enforcement of intellectual property rights is available through Civil Court proceedings.

The length and cost of an infringement lawsuit will vary depending on the type of intellectual property right infringed and the complexity of the case. The average length is 2-4 years. In many cases, a settlement is reached after the interim injunction stage. The cost will range between tens of thousands of US dollars in trademarks cases, and hundreds of thousands to over a million US dollars in patent cases.

The forum in which a claim for infringement is brought is either the Magistrate Court or the District Court, depending on the value of the relief sought: cases valued for, or seeking monetary relief of less than NIS 2.5 million will be heard before the Magistrate Court. Cases valued for, or seeking monetary relief of more than NIS 2.5 million will be heard before the District Court.

The proceedings are initiated by the filing of a lawsuit, followed by the filing of a statement of defence by the defendant and the filing of a statement in reply by the plaintiff. Once the parties complete the exchange of pleadings, they then conduct preliminary proceedings. These proceedings can include interrogatories, which the parties refer to each other, and the discovery and inspection of documents. Before the pre-trial stage, the parties must conduct an independent preliminary discussion in order to advance the resolution of the controversy. Subsequently, the parties submit their evidence. Time to trial is generally 6-8 months. Witnesses and summation during trial hearings will be heard orally (default procedure), or submitted in writing if the court so orders.

An appeal against a judgment rendered by the Magistrate Court is filed with the District Court. The District Court’s decision can only be appealed if granted leave, and such appeal would be filed to the Supreme Court.

An appeal against a judgment rendered by the District Court is filed to the Supreme Court of Israel. On very rare occasions, the Supreme Court is willing to hear a case again before a special panel of more judges (usually five). Such additional hearing may be held if the Supreme Court makes a ruling that is inconsistent with its previous rulings, or if the court deems that the importance or novelty of a ruling of the court justifies such hearing.

The appropriate legislation in Israel is the Trade Marks Ordinance and the Customs Ordinance. The Israel Customs Administration randomly inspects shipments of goods arriving in Israel, on its own initiative, and it is entitled to detain imported goods which it suspects to be infringing. The Customs Administration is also authorised to seize suspected goods, whether due to a complaint filed by the rights-holder or due to a random inspection of shipments arriving in Israel.

Once a seizure has been conducted, Customs will notify the rights-holder and the importer. Furthermore, the rights-holder may file a complaint with the Customs Administration. If the shipment is small, in most cases a short procedure would be initiated, in which the rights-holder submits a written opinion, indicating the reasons for believing the goods are infringing, and provides a written obligation to compensate the importer for any financial damages that occur as a result of the seizure and to join the Customs Administration as a defendant in any lawsuit initiated by the importer. If no action is taken by the rights-holder, the goods will be seized. Alternatively, the Customs Administration may decide to initiate a long procedure, in which the rights-holder would have to file a lawsuit against the importer. In a long procedure, most often initiated when the quantity or the value of the goods seized in the shipment is high, the rights-holder will have to notify Customs if and why he believes the goods are infringing, and of his intention to file a lawsuit against the importer. As an initial step, the rights-holder will also have to file a bank guarantee to the Customs authorities in order to compensate the importer for any financial damages incurred as a result of the seizure or the filing of a lawsuit. Once the rights-holder files the bank guarantee, he is entitled to receive a sample of the seized goods and the details of the importer. The rights-holder may decide to either try to settle the matter with the infringer in an amicable manner or to file a lawsuit against him. In the event that the rights-holder does not take action, the seized goods will be released.

The parties must hold a preliminary meeting before pre-trial to examine the possibility of resolving the dispute through alternative dispute resolution, such as mediation or arbitration. If the parties decide to proceed in court, a mediation meeting must be held before pre-trial.

Settlement outside of court, mediation or arbitration.

Patents – Infringement is defined as exploitation of the invention for which a patent has been granted unlawfully or without the permission of the patentee, either in the manner defined in the claims, or in a similar manner that, in light of what is defined by those claims, involves the essence of the invention that is the subject matter of the patent.

An unauthorized exploitation of an invention is defined as production; use; offer for sale; sale; or import for the purposes of one of the above acts. An unauthorized exploitation of an invention which is process is defined as the use of the process.

Infringement can be literal infringement, and also using the essence of the invention in as defined by the claims. The court will use its discretion when defining the “essence of the invention”.

Contributory or inducement of infringement may constitute indirect infringement.

Trademarks – Infringement is defined as follows:

Unauthorised use of a registered trade mark or of a mark resembling it, in relation to goods in respect of which the trade mark is registered or goods of the same description.

Unauthorised use in advertising goods of a class in respect of which the mark is registered, or goods of the same description.

In an action for infringement, evidence shall be admitted of the usages of the trade in respect of the get-up of the goods for which the trade mark is registered and of any trade marks or get-up legitimately used in connection with such goods by other persons.

Trade mark infringement is assessed by applying a “triple test”, based on:

Phonetic and visual resemblance between the respective marks (the most important consideration).

Type of consumer and class of the goods in question.

Any other relevant circumstances.

Depending on the circumstances, protection can be extended also to conceptually identical but graphically different trademarks, including translations.

With regard to a registered trade mark, an unregistered well-known trade mark, or a mark resembling such a mark, the protection covers identical goods (goods in respect of which the trade mark was registered, or recognised), or goods of the same description.

If a well-known trade mark is registered, the protection extends to goods that are not of the same description, provided that the use could indicate a connection between the goods and the well-known mark, and that use will adversely affect the trade mark proprietor (see Question 2).

Designs – Infringement is defined as exploiting a registered design as described below without the permission of the proprietor of the registered design:

1. Manufacture, sale or lease, including a bid or position for sale or lease of a registered design product, in a commercial manner, the distribution of such product on a commercial scale or its import into Israel not for personal use, except importing to Israel a product manufactured abroad with the permission of the proprietor of the design, or anyone on his behalf;
2. Possession of a registered design product for the purpose of performing any of the acts enumerated in paragraph (1).

Copyrights – A person who does in relation to a work, any of the acts specified below, or who authorizes another person to perform any such act, without the permission of the copyright owner, infringes the copyright: reproduction; publication; public performance; broadcasting; making a work available to the public; making of a derivative work; rental.

An indirect infringement is defined as one of the foregoing acts with respect to an infringing copy of a work, if at the time such act was done the person knew, or he should have known, that such copy is an infringing copy:

1. Sells or lets for rental such infringing copy, including offering or displaying for sale or rental;
2. Possesses such infringing copy for a commercial purpose;
3. Distributes such infringing copy on a commercial scale;
4. Exhibits such infringing copy to the public in a commercial manner;
5. Imports into Israel such infringing copy that is not for personal use.

Plant breeders’ rights – Infringement is defined as exploitation of the variety for which a breeders’ right has been granted, unlawfully or without the authorization of the right holder. To establish infringement, evidence will have to prove unlawful or unauthorized exploitation of the variety in one of the following ways: cultivation or propagation; preparation for propagation; an offer for sale; sale, export, import or marketing in any other manner; maintenance for purposes of one of the acts mentioned above.

1. There is no technical judge or specialized IP courts in Israel, however some judges have technical/IP experience. The court can appoint an expert on its behalf, and the parties can present expert opinions.
2. In the event that a party is unsatisfied with the extent of the other party’s discovery, he can submit an application to the court requesting to order general discovery, further discovery, or discovery of specific documents or inspection, as appropriate. The right to inspect documents extends to all documents that the other party referred to in its pleadings and affidavits, including its discovery affidavit, subject only to privileged documents. In the event that a relevant document is in the possession of a third party, a party can subpoena the third party as a witness in order to present the document. A motion for a confidentiality order can be filed relating to confidential information requested.

Evidence in writing is usually submitted in the form of an affidavit or an expert opinion. The affiant will usually be cross-examined by the other party’s lawyer. The potential for cross-examination of oral witnesses has an effect on the choice of witness put forward, since the affiant has to be a person who has personal knowledge of the facts that relate to the matter.

Patents – The defendant can raise an argument that the patent in question is not infringed or invalid, on the grounds on which the patent can be opposed: non-patentable subject matter, lack of novelty, lack of inventive step, insufficient disclosure, withholding information by the patent holder, etc. The defendant can raise an argument of prior use on the ground of prior commercial exploitation on the filing date or the priority date of the patent in question.

The defendant can also raise an argument of a right based on prior exploitation. Any person, who have exploited, on the date on which application for the patent was submitted in Israel (or its priority date), in good faith, in Israel, the invention for which the patent is sought, or if he in good faith made actual preparations towards exploitation, then he shall be entitled to exploit the invention himself and in the course of his business without consideration.

Trademarks – The defendant can raise an argument of non-infringement due to several grounds. For example: no likelihood of confusion (no similarity between the marks; differences between the mark’s goods/services); and genuine use (parallel import; genuine use of a person’s name), etc.

In addition to non-infringement, there are several other defences according to which the mark is invalid for different reasons. For example: generic mark; descriptive mark; invalid registration; non-use, etc.

Designs – The defendant can raise an argument of non-infringement on any ground under which a registered design can be cancelled or an argument of ineligibility for protection by an unregistered design.

Copyrights – The defendant can raise an argument of non-infringement on various grounds, such as: the work in question is not eligible for copyright protection; non- original work, therefore not entitled to copyright protection; the work is in the public domain; use of the work is a “permitted use”, such as fair use, incidental use of a work, temporary reproduction, the copyright owner is unknown or was not located, public performance in an educational institution; the defendant was granted a licence by the copyright owner; the defendant did not know at the time of the infringement, or could not have known, that copyright subsists in the work, etc.

Plant breeders’ rights – The defendant can raise an argument of non-infringement on the ground of invalid registration.

Any person or third party can challenge each of the intellectual property rights.

Patents – Any person can oppose the grant of the patent, within three months from the date the acceptance of the patent has been published.  A motion for cancellation of a registered patent can be filed at any time after grant.

Trademarks – Any person can oppose the grant of the patent, within three months from the date the acceptance of the patent has been published.

A motion to invalidate a registered trade mark, regarding all or some of the goods or classes of goods for which the mark is registered, can be filed based on the following grounds:

1. The trade mark is not eligible for registration under Sections 7 to 11 of the Trade Marks Ordinance (i.e. Absolute and Relative Grounds).
2. The registration of the trade mark creates an unfair competition with respect to the applicant’s rights in Israel.
3. The application for the registration of the mark was filed in bad faith.
4. There was no bona fide intention to use the trade mark in connection with the goods regarding which the revocation is requested, and in fact, there has been no bona fide use of the trade mark in connection with the goods for which the revocation is requested; or
5. There had not been any such use during the three years preceding the application for revocation.

A motion to invalidate a registered trade mark, based on the grounds mentioned in sections 1–2 above, can be made only within five years of the registration of the mark. An application for invalidity of a registered trade mark, based on the grounds mentioned in sections 3-5 above (bad faith and lack of use), may be submitted at any time.

Designs – Any person who is not a proprietor of the registered design may request that the Registrar cancel the registration of a registered design in the Register.

Plant breeders’ rights – Any person can oppose the registration of the right, within 90 days from the date the filing of the right has been published. A motion for revocation of a granted right may be filed at any time.

Patents – Oppositions and cancellation proceedings are brought before the Registrar of Patents, Trademarks and Designs.

The following are the grounds for opposition to the grant of a patent and cancellation of a registered patent:

1. There is a reason, because of which the Registrar could have refused to accept the patent application;
2. The invention is not patentable under section 4(2);
3. The opponent, and not the applicant, is the owner of the invention

Trademarks – Oppositions and cancellation proceedings are brought before the Registrar of Patents, Trademarks and Designs.

An application for invalidity of a registered trade mark, regarding all or some of the goods or classes of goods for which the mark is registered, can be filed based on the grounds mentioned above  – see section 28.

Designs – Cancellation proceedings are brought before the Registrar of Patents, Trademarks and Designs based on the grounds mentioned above – see section 28.

The following are the grounds for cancellation of a registered design:

1. The design was ineligible for protection as a registered design;
2. The application for registration of the design was not filed by the proprietor of the design;
3. Two or more separate applications were filed for registration of the same design or of a design that differed from it only in immaterial details, and the design was not registered in the name of the person who first duly applied for it.

Plant breeders’ rights – Oppositions proceedings are brought before the Council of Plant Breeder’s rights on the following grounds:

1. The opponent’s right to be registered as the holder of the variety outweighs the applicant’s right;
2. The variety does not meet the requirements for registration (new, uniform, stable).

Cancellation proceedings are brought before the Council of Plant Breeder’s rights on the following grounds:

1. The variety does not meet, any longer, the requirements for registration (new, uniform, stable);
2. The breeder did not provide the council propagating material of the variety;
3. The breeder has not permitted an examination of the measures taken by him for the preservation of the variety;
4. A court decided that the right of another to be registered as the holder of a breeders’ rights outweighs the rights of the registered holder;
5. The right was granted to a person not entitled to it, unless it was transferred to a person who is entitled to it.

A motion for declaratory relief can be filed, requesting the court to confirm a certain act does not constitute an infringement of an intellectual property right.

A compulsory licence in patents and plant breeders’ rights may be granted, however these are very rare and apply in extreme circumstances only.

As in civil cases in Israel, the remedies available for infringement of intellectual property rights include the following:

1. Permanent injunction.
2. Damages (including on the basis of lost profits or loss of reasonable royalties).
3. An account of the profits gained by the infringer.
4. The court has the authorisation to order the forfeiture and/or destruction of the infringing goods or property used in the infringement.
5. Any other relief the court deems appropriate, which is under its authority.

The costs recoverable from the losing party are determined either by an assessment conducted by the court or by an account of profits gained by the infringer. If the costs are determined by the court’s assessment, they usually do not cover the actual expenses of the plaintiff. However, if the costs are determined according to an account of profits gained by the infringer, they could cover the actual expenses of the plaintiff, provided that the actual expenses are reasonable.

The plaintiff can be requested to deposit security for costs depending on the circumstances of the case.

At the beginning of the COVID-19 pandemic, certain temporary procedures were introduced, such as changes to deadlines, examination of witnesses by visual means, etc., however as of June 2022, such matters are mostly back to normal.

It is worthwhile mentioning that during the pandemic, the Ministry of Justice published, for public review, a draft of regulations, regulating the authority of the Patents and Trade Marks Registrar to hold all types of hearings, including hearings in which witnesses are heard, by means of visual communication, as a regular procedure. According to the suggested regulations, the Registrar will have the authority to order such hearings, in appropriate circumstances, even without the consent of the parties. The suggested regulations haven’t been approved.