Are there any unique characteristics to IP litigation in Israel?
The Israel Patent Office (ILPO), which is the authority in Israel responsible for the registration of patents, designs, trademarks and appellations of origin, subject to examination, has a significant role in deliberating IP conflicts in the country. For example, under Israeli law, a party wishing to contest or challenge a patent’s validity has three courses of action:
- to initiate pre-grant opposition proceedings;
- to initiate post-grant revocation proceedings; or
- to argue against the patent validity as a defence in an infringement action, which would be brought against them.
The first two options are deliberated in the ILPO and the third is heard before a court. While the contentious proceedings before the ILPO are similar in many respects to those conducted in court (eg, and most importantly, affiants and experts are subject to cross examination), each of the above options has certain pros and cons. Hence, the decision as to which option to adopt may be crucial to the outcome of a conflict and should be decided on a case-by-case basis, after considering all relevant circumstances and risks. This unique situation may even lead to a race between the contesting parties concerning the forum that will deliberate the validity of the IP right in question.
How can those characteristics be leveraged to the benefit of the parties?
Initiating opposition, invalidity or revocation proceedings before the ILPO, where possible and applicable, may significantly decrease the risk of an interlocutory injunction being issued by the court based on the relevant IP right. In the case of opposition proceedings being initiated, no infringement action may be taken on the basis of the IP right being opposed. Another example relates to cross examinations conducted before the ILPO, which may lead to the exposure of valuable factual information that could also be used in corresponding proceedings between the parties, which are pending in other jurisdictions.
In what way can your skills and expertise assist your clients in protecting their IP interests?
The depth and range of my practice is unparalleled for its level of expertise and diversity. I am highly experienced in both contentious and non-contentious aspects of IP law, including licensing, commercialisation and prosecution. I have successfully appeared before all levels of Israeli courts and tribunals and have represented clients in many precedent-setting and high-profile cases and disputes. I have worked for clients in numerous local and international arbitration and mediation proceedings (including those before JAMS, WIPO and International Chamber of Commerce), and furthermore I personally serve as an appointed arbitrator and mediator in various IP conflicts. I have also served as lead counsel in major and multi-jurisdictional disputes involving the litigation of rights in parallel proceedings in different jurisdictions, and I have gained a stellar reputation for my cross examination skills. This, together with my strong academic background and constant updates about trends and developments, enables my team and me to: (a) assist our clients to see the greater picture; (b) to evaluate, in advance, the next steps of the counterparties or our clients and the ultimate position of the court/ILPO towards certain conflict; (c) to avoid unnecessary proceedings, conflicts and expenses; (d) to take the initiative where appropriate; (e) to consider the impact of particular arguments on future steps and positions, including in parallel multi-jurisdictional proceedings; and, most importantly, (f) to accomplish our clients’ best commercial objectives in the most cost-effective way.
What are the most important tips you can provide to your clients?
First, be aware of the legal landscape concerning employees’ inventions (also known as service invention), its significant potential exposure to both employers and purchasers of intellectual property, and the possibilities to minimise this in view of the Israeli Supreme Court decision that waivers signed by employees could, in principle, constitute a valid defence against claims for compensation for service inventions. Second, always keep in mind Lord Asher’s famous dictum (Ungar v Sugar (1892) 9 RPC 113): “Why, that a man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent”, which is even more true today than ever before. Finally, remember the maxim “Last in deed, first in thought” (the completion of an action begins with its initial thought).
Regarded as “a unique master in IP law” (The Legal 500) and “a top litigator”, Avi Ordo specialises in all areas of IP law. He has vast and unparalleled experience in handling, among others, complex and cross-border technology-related conflicts. Mr Ordo provides strategic legal counsel to international and domestic rights holders from an array of industries concerning the ownership, use, enforcement, protection, freedom to operate, registration and commercialisation of their valuable intellectual property.