Many inventors are unable to realize the economic potential lying in an invention only because they did not protect it correctly and effectively from the beginning of the process. Details that may look minor and insignificant to us may make all the difference between failure and success. Owing to this, the importance of early planning and correct conduct is critical and will establish the invention’ economic value and the inventor’s future.
A patent is a legal document that grants its owner protection for a limited, 20 year period for an invention that is useful insofar as it can be applied, it is new insofar it has not been published before being filed, and has inventive progress insofar as it is not immediately obvious.
As the inventor receives proprietary protection in a patent for a lengthy 20 year period in which nobody can use it, the manner of filing the patent registration application is crucial. The broader the protection, the more optimally the patent owner can exploit his invention and enjoy its proceeds.
After filing the patent registration application, the examiner is allowed to accept it to the extent that the patent complies with the requirements of the law. If the patent examiner decides to accept the application, it will be announced to the public pursuant to Section 26 of the Patents Law, 5727-1967 for objections.
Any person is allowed to object to an application within 3 months of its announcement as set forth, if and when there is a reason pursuant to which the registrar is authorized to refuse to accept the patent application, there is a reason whereby the invention is not patentable under Section 4(2) of the Patents Law; the objector, rather than the applicant, owns the invention.
The Patents Law allows any person who is not the patent owner to file an application to cancel a patent, if he has found that there is a cause by which granting the patent can be objected to. It should be noted that an objection proceeding and a cancellation proceeding are legal proceedings to all intents and purposes that are held before the registrar.
The Patents Law also formalizes the issue of infringement claims. The patent owner and a unique license holder are the only parties entitled to file an infringement claim. For a jointly owned patent, each partner is allowed to file an infringement claim. The causes for objecting to granting a patent will serve as a good defense in the case of an infringement claim; in other words, if there is a reason whereby the registrar was authorized to refuse to accept the patent application; the invention is not patentable under Section 4(2) of the Patents Law (the most common defense argument); the objector, rather than the applicant, is the patent owner. If the court accepts the defense, it will order the patent cancelled, in part or in full, as relevant.
In an infringement claim, the plaintiff is entitled to relief in the form of an injunction and compensation. When awarding compensation, the court will take into account the defendant’s infringement act and the plaintiff’s situation owing to this act, and is allowed to take into account inter alia the direct damage sustained by the plaintiff; the extent of the infringement; the profit that the infringer has gained from the infringement act; reasonable royalties that the infringer would have to pay had he been given a license to exploit the patent to the degree by which the infringement was committed. To the extent that an infringement was committed after the patent owner or unique license holder warned the infringer of it, the court is allowed to compel the infringer to pay punitive compensation, in addition to the compensation it prescribes under Subsection (B), as long as it does not exceed the sum of that compensation.
Our office recommends to any inventor and entrepreneur to exercise great care in the beginning of his work, whether on the matter of registering the patent or contractual protection with investors. Patent registration and commercialization is a long journey that requires great professional knowledge. The best example for underlining the importance of advice is when the inventor naively reveals his invention to third parties before filing the registration application. The results of his actions may be irreversible and result in the invention being unpatented. Such disclosure may be considered as a previous announcement of the invention, meaning that the patent is no longer new. Therefore it is important to consult an attorney who is well versed in this field to support you from the concept stage to the invention commercialization stage.