Israel: Patents: Contributory Infringement

The Supreme Court recently issued two important judgements regarding patent laws. One judgement, dealing with parallel importation of pharmaceuticals was reviewed in our last (August 2001) newsletter. In the second judgement, the Rav-Bariach case, the Supreme Court introduced, by way of judicial legislation, the concept of Contributory Infringement into the Israeli Patent laws.

The Appellant, Rav-Bariach, was the proprietor of a patent that claimed an arrangement for prevention of car theft that includes a certain combination of elements. The system consisted of three parts: (i) a rigid bar secured to the body of the car in the vicinity of (and parallel to) the gearshift stick; (ii) a padlock body fixedly mounted onto the bar; and (iii) a padlock yoke adapted to be locked to the padlock body, thereby enclosing the gearshift. The defendant imported and marketed in Israel the padlock body and the padlock yoke, but not the rigid bar. However, the padlock was adapted so as to enable its mounting onto the bar. The District Court found in favor of defendants (the alleged infringers), because the Patents Law, 1967, does not deal with the issue of contributory infringement. The Supreme Court reversed the District Court’s decision and found the defendants liable for contributory infringement of the patent.

The Supreme Court noted the absence of controlling statutory provisions. After reviewing the comparative law in the United States, England, Germany and Canada, it decided that it would be appropriate to introduce the concept of Contributory Infringement into the Israeli Patent laws by way of judicial legislation.

The Court ruled that in order to impose liability on the basis of contributory infringement, the following three conditions need to be met:

(i) the components sold constitute a material part of the invention;

(ii) the seller knows (or ought to have known, having regard to the circumstances of the case) that the product sold by him is especially adapted for the infringing combination and is actually intended therefore;

(iii) the item sold is not a staple product that is suitable for substantial non-infringing use.

As may be apparent to those familiar with the provisions of U.S.C. 35 ß 271(c) and with Section 60(2) of the British Patents Act, 1977 (which follows Article 26(1) of the EPC), the above conditions are essentially a mixture of both.

The Court noted that in the United States the courts have added a forth requirement, namely, that actual infringement be proven to have occurred. The Court found this requirement to have been met in the case at hand. The Court did not expressly decide, however, that this is an additional requirement for imposing liability in a case of contributory infringement.