Patents

  • Given that truly effective patent advice requires a combination of both legal and scientific analysis, together with commercial application, our team, comprising IP specialists and patent attorneys, many of whom are science graduates, is uniquely positioned as a true "one-stop shop" in Israel for patent protection and enforcement.

     

    Indeed, not only has our patent practice been described by Intellectual Asset Management 1000 as "the only Israeli full-service law firm offering a major, fully realised patent practice" it is also regularly ranked in the top tier by Chambers Global and Legal 500 as well as specialist trade publications, including Managing Intellectual Property and Patent Litigation 250.

     

    Our team has unrivalled experience of litigating patents before the Israeli courts and before the Israeli Patent Office, advising on patent infringement, opposition procedures, validity issues, patentability and claims for compensation by current and former employees in respect of patentable inventions created during the course of their employment.

     

    On the non-contentious side we handle all aspects of the commercialisation of patents at every stage of the innovation cycle, including non-disclosure agreements, R&D agreements, patent licences and manufacturing agreements. We have extensive experience advising on patent issues arising in corporate transactions, in particular conducting legal diligence of patent-related issues in the financing of technology and innovation companies, mergers, acquisitions, business sales and patent portfolio acquisitions.

     

    We advise clients from a wide range of sectors including pharmaceuticals, biotechnology, genetics, medical devices, biomedical products, electrical engineering, chemical engineering, mechanical engineering, telecommunications, computer software and computer-implemented inventions and agro-chemicals.

     

    We have been at the forefront of changes in patent law and practice for over 50 years and our practitioners continue to lead the way in their involvement in the legislative process.

    • Representing Teva, the world’s largest manufacturer of generic medicines, in numerous patent litigation cases in Israel, regarding a wide array of generic versions of various blockbuster drugs (drugs having annual sales in excess of US$ 1 billion) including patent opposition proceedings against:

     

    (i) Merck, in respect of the blockbuster JANUVIA for the treatment of diabetes and in respect of Fosamax Once Weekly (an osteoporosis drug);

    (ii) Novartis, in respect of the blockbuster GLIVEC for the treatment of various types of cancers, and in respect of the blockbuster EXFORGE for the treatment of high blood pressure;

    (iii) Gilead, in respect of the blockbuster TRUVADA and ATRIPLA for the treatment of HIV; and

    (iv) patent opposition proceedings relating to other drugs including LIPITOR, PLAVIX, EFFEXOR and AVANDIA

     

    • Representing Teva on numerous patent infringement actions, including two major patent claims filed against it by Aventis in connection with the anti-allergy drug Telfast/Alegra and representing Teva in the enforcement of its rights in the blockbuster COPAXONE (the leading treatment for MS) and acting for Teva on the enforcement of its patents in the medical device sector
    • In perhaps one the most important IP dispute cases in Israel during the past decade, successfully represented Iscar (one of the world's largest producers of cutting tools for metalworking and a wholly owned subsidiary of Berkshire Hathaway) in proceedings instituted by a former employee, Gideon Barazani, before the Compensation and Royalties Committee (a statutory committee appointed under the Patents Law, 1967), relating to whether certain patents held by Iscar in its patent portfolio were invented by him and whether, accordingly, he was entitled to royalties by virtue of such patents being "service inventions". The Committee's decision is a precedent in this field of law as it removed the doubt raised in previous decisions as to whether employees can effectively waive their rights to receive compensation, in addition to their salary, for service patents
    • Advising and representing the Pharmaceutical Division of the Manufacturers’ Association of Israel in connection with the drafting of the necessary legislation to implement the agreement entered into by the State of Israel with the United States Trade Representative (USTR) in relation to Israeli IP legislation.  Also advising the client on the drafting of proposed changes to the laws in Israel concerning "service inventions" – inventions discovered by employees of a company and the remuneration payable to such inventor employees
    • Representing Neurim Pharmaceuticals Ltd. before the Registrar of Patents in disputed patent extension proceedings for Circadin, a drug that is used to treat insomnia, in two rounds of litigation.  Parallel proceedings were also commenced in the English courts and in the European Court of Justice and in other major jurisdictions in the world
    • Representing Celltrion Inc. (a South Korean cooperation) and Perrigo Israel Pharmaceuticals Ltd., a subsidiary of the U.S. based Perrigo Company Inc., in a request to revoke a patent owned by Genentech Inc..  The relevant patent claims to cover Herceptin® (for the treatment of breast cancer).  In addition, representing Perrigo in a variety of IP related matters, including two additional cases of patents revocation
    • Representing Pelephone Ltd., Cellcom Israel Ltd., Partner Communications Ltd., Israel's leading cellular providers, in patent litigation regarding pre-paid calls
    • Representing Rav Bariach Ltd., Israel's largest manufacturer of doors and locks, in a patent infringement action commenced against it by a subsidiary of Assa Abloy (one of the world's largest and leading door and lock manufacturers), Mul-t-Lock Ltd.  Assa Abloy claimed that the locks used by Rav Bariach in certain ranges of their doors infringed their patent, while Rav Bariach claimed both non-infringement and sought to have the patent of Assa Abloy cancelled on the grounds that the patent lacked novelty or otherwise did not constitute an inventive step
    • Representing Ecotech Ltd. in the successful settlement of its claim for patent infringement against Mifal Hapayis, the national lottery company, concerning online scratchcards
    • Representing Pfizer in defending the patent relating to Viagra against opposition from Bayer.  This litigation formed part of the worldwide litigation that had been commenced against Pfizer relating to the compounds protected by the Viagra patent
    • Representing:

     

    (i) a government company in claims brought against it by its former CEO; and

    (ii) the Israel Electric Company in claims brought against it by a former employee, before the Compensation and Royalties Committee (a statutory committee operating by virtue of the Patents Law, 1967), claiming rights to remuneration for service inventions

     

    • Representing Waterfall Security Solutions Ltd., the leading information security company, in opposition proceedings against the registration of Waterfall's patent brought by AFCON Control and Automation Ltd. The representation included advising Waterfall on the protection of its patents and trade secrets
    • Representing the technology transfer arm of a leading Israeli university in a claim against a faculty member who had commercialised a technology developed at the university in breach of the university's patent and other intellectual property rights
    • Representing Abic Ltd. in a claim against two manufacturers of veterinary vaccines concerning the infringement of its patents
    • Representing ITIS Holding PLC (a leading supplier of traffic and travel information) in comprehensive patent litigation