The Israeli Court recently issued an important judgment that broadens the scope of what constitutes patent infringement. In this judgement, the Rav-Bariach (C.A. 1636/98 Rav Bariach v. Havshush Car Accessories trading House Ltd.; 23 July 2001, not yet reported), the Supreme Court introduced, by way of judicial legislation, the concept of Contributory Infringement to 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; (iii) a padlock yoke adapted to be locked to the padlock body, thereby enclosing the gearshift. 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 mounting it to the bar. The District Court found in favor of defendants (the alleged infringer), because the Patents Law, 1967, does not deal with the issue of contributory infringement. The Supreme Court reversed this decision and found the defendants liable for contributory infringement of the patent.
The Supreme Court noted the absence of controlling statutory provision. 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 to the Israeli Patent laws by way of judicial legislation.
The Court ruled that an 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, it ought to have known, having regard to the circumstances of the case), that the product sold by him is especially adapted for the patented combination and is actually intended therefore;
(iii) the item sold is not a staple product, suitable for substantial non-infringing use.
As may be apparent to those familiar with the provisions of U.S.C. 35 § 271(c) and with the British Section 60(2) of the Patents Act, 1977 (which follows Article 26(1) of the EPC), the above conditions are a 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 net in the case at hand. The Court did not expressly decide, however, that this is an additional requirement for imposing liability in the case of a contributory infringement. An additional issue, which was not at all raised by the parties and, hence, not touched upon by the Court, is the question of permissible repair.
This judgment substantially broadens the scope of the monopoly afforded by a patent. In today’s world, where many of the inventions are new combinations of a number of elements, at least part of which are known, this judgment strengthens the exclusivity afforded by the patent to the patent holder and in making the life of the infringer substantially more difficult.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
