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Israeli Patent Law Decisions

21 Nov, 2023

Israeli patent law is regulated by the Patents Law, regulations established pursuant to it and by circulars of the Registrar of Patents. All of the above are taken into consideration by the Courts and the Patent Registrar in decisions regarding specific cases brought before them. The most important rulings are those that include binding precedents of the Supreme Court, and we shall refer to some of them here[1].

Hughes v. The State of Israel

If there is one court ruling you need to know in Israeli patent law, it is the Supreme Court’s judgment in the Hughes[2] case. The Hughes Aircraft Company was the owner of an Israeli patent on an information display system for pilots and its patent infringement claim was dismissed by the District Court on grounds of noninfringement. Hughes appealed this decision to the Supreme Court. The Supreme Court judgment deals with several key issues in patent law, such as patent interpretation, the scope of protection (the essence of the invention) and ways for examining the novelty and inventive step requirements, and we shall address only some of them here.

Patent Interpretation – It was held that the patent should be read as a whole, and the claims should not be separated from what is described in the other parts of the patent. The description and the drawings of a patent might give the terms in the claims a unique meaning that differs from the usual meaning according to the state of the art at the determining date.

The Scope of Protection – Patent infringement according to section 49 of the Patents Law is not limited to a verbal infringement of the claims, but also includes taking the “essence of the invention” in view of what is defined in the claims. The “essence of the invention” is a legal question that the court will determine based on the patent and the evidence. The doctrine of variants and the doctrine of equivalents are considered for this purpose, and replacing an element of the invention will not preclude patent infringement if the product performs essentially the same function as the claimed invention and is achieved by essentially identical ways to the claimed invention. The scope of protection of the patent will be determined in accordance with the contribution of the invention to the art.

Novelty – the novelty test refers to the essence of things, and only the execution of one prior art publication which inevitably leads to patent infringement, will negate novelty. In another ruling of the Supreme Court in the case of Sanitovsky v. Tamas[3], it was held that novelty can also be denied based on a prior art publication of the essence of the invention.

Inventive Step – The inventive step requirement is broader than the novelty requirement and demands an examination of the total body of professional knowledge in the relevant field, and for this purpose several prior art publications should be joined together. However, joining the publications together should be obvious, at the determining date, to the average skilled person who does not exercise inventive thinking. Auxiliary tests can be considered when examining inventive step, such as the long felt need test, the commercial success of the invention, the reaction of the professional community in the field and the copying of the invention by competitors.

Rav Bariah v. Habshush – Contributory Infringement

In the Supreme Court ruling in the case of Rav Bariah v. Habshush[4], the principle of contributory infringement of a patent was recognized in Israeli law.

The Rav Bariah company owned a patent for a system for locking a gear lever in a car and its claim for patent infringement was rejected by the district court because the defendant imported and marketed only some of the components of the system. The Supreme Court overturned the decision and found that the defendant infringed the patent by way of contributory infringement.

It was held that the conditions for contributory infringement are: (1) the sold components embody an essential part of the invention; (2) the marketer knew or should have known under the circumstances that the components are especially suitable for the infringing use and that they are actually intended for the same; and (3) the components are not a basic product suitable for another significant non-infringing use.

Barzani v. Ishkar – Employee Inventions

In the ruling of the Supreme Court in the case of Barzani v. Yishkar[5], the court recognized the possibility of conditioning the provision in the Patents Law that refers to the possibility of determining an employee’s compensation for a service invention in an employment agreement. In that case, an employee’s waiver on monetary claims was given effect so that the employee’s request to receive compensation for service inventions he was involved in was rejected.

Intra-Cellular v. The Patent Registrar – Inventive Step in the Pharmaceutical Field

In the matter of Intra-Cellular v. The Registrar of Patents[6], an appeal was granted against the Registrar’s decision, where he rejected an appeal for the refusal of a patent application. The patent application claims a crystal of the tosylate salt of the active ingredient lumateperone, which is used to treat depression and anxiety and various neurological disorders.

Inventive step in the pharmaceutical industry and in the field of salts and crystals were at the center of the discussion in the judgment. It was held that the question of inventive step should be examined in the light of the pharmaceutical industry and its special characteristics, including the complexity of the pharmaceutical task of crystallization.

In connection with the “obvious to try” sub-test for examining inventive step, a distinction was made between 3 categories of prior art: (1) publications that do not have concrete instructions on how to perform the combination of substances at the base of the invention – so it is very easy to establish inventive step; (2) publications that have concrete instructions or publications in which the combination of materials appears self-evident and the invention can be reached easily – then the tendency will be to determine that there is no inventive step (however there may be opposite cases, for example when a particularly surprising result is discovered); (3) cases in which there are certain instructions that are not detailed enough – require examining the circumstances in each individual case, and for example in the specific case at hand it was held that the case will be remanded to the registrar to examine these circumstances, while it was held that the use of conventional laboratory operations does not in itself preclude inventive step.

United Technologies Corporation v. Registrar of Patents – Computer Software

The judgment of the District Court in the case of UTC v. The Registrar of Patents[7] is an important ruling dealing with computer software inventions, a subject in which, as of today, no binding case law has been issued yet by the Supreme Court.

This is an appeal against a registrar’s decision regarding a patent application concerning a system for saving fuel in helicopters, which changes the state of the regulators according to changing data of altitude, speed, etc. The registrar broke down the invention into its elements and stated that the innovation is only in the algorithm – which is a collection of computer commands or a collection of “mental steps” or calculations, while a process is the handling of a certain compound to change its state or form. Because of this, the registrar determined that the invention is not eligible for a patent. The court accepted the appeal and ruled that the invention should not be broken down into its elements and that the system should be looked at as a whole – the physical components together with the computer software whose function is to drive the system.

The court ruled that “tangible technological processes” take place in the system, which are expressed in changes of state and operation time of the fuel valve in the helicopter’s engine feed system. The process should lead to a certain result, and in the same case when the software is connected to physical components, receives from them, processes and emits information and instructions, resulting in optimal changes in fuel consumption in the system, this is a result that allows protecting the invention with a patent. The UTC ruling was given back in 1994 and since then it has been mentioned in several decisions of the patent registrar, in which emphasis was given on the need for a “tangible technological process” and “an expression of physical properties in a component on which the invention is performed or in the nature of the operation that the product or process performs, being a product that indicates the technology.”

Registrar’s Decision in the matter of DABUS – AI-generated Invention

The decision of the Registrar of Patents in the matter of DABUS[8] deals with patent applications in which an AI machine known as DABUS was named as the inventor. The patent applications were filed in many countries around the world and served as a test case for how patent offices treat patent applications in connection with AI generated inventions. The patent registrar discussed the definition of “inventor” in the law, which does not include an explicit reference to a human person but stated that according to the natural interpretation of the word, every invention begins with a human inventor.

It was further determined that the owner of an invention according to the Patents Law is a person who acquired his right to the invention from a human inventor.

 

*The above is provided as a general background only and does intend to constitute a full or accurate description of the decisions.

[1] Supreme Court precedents bind all courts (including the Registrar of Patents) but the Supreme Court itself. Judgments of the other courts give “guidance” to lower courts. Patent cases are usually brought before District Courts (and not Magistrate Courts), and their decisions “guide” the Registrar of Patents.

[2] CA 345/87 Hughes Aircraft Company v. The State of Israel (2.7.1990)

[3] CA 4867-92 Sanitovsky v. Tamas Ltd (22.4.1996)

[4] CA 1636-98 Rav Bariah v. Trading House for Car Accessories Habshush (1987) Ltd (23.7.2001)

[5] HCJ 5353-14 Gideon Barzani v. Ishkar Ltd (8.7.2015)

[6] MCA (District Tel Aviv) 32365-05-20 Intra-Cellular v. The Registrar of Patents (14.4.2022)

[7] MA (District Jerusalem) 23/94 United Technologies Corporation v. The Registrar of Patents (25.10.1994)

[8] Decision of the Registrar of Patents re Patent Applications No. 268604, 268605 (15.3.2023)

The content provided by:

Adv. Lior Glassman and Adv. Adi Ann Berkovic
Gilat, Barket & Co. Attorneys at Law of the Reinhold Cohn Group