A company reviewing the Israeli Patent Register discovers that a competitor’s patent has lapsed because the renewal fee was not paid. Relying on that information, the company begins preparing to manufacture a product incorporating the previously patented invention. Some time later, the patent owner applies to restore the patent, and the application is published for opposition.
The company must now consider two distinct legal questions. First, whether it has grounds to oppose restoration under Section 61 of the Israeli Patents Law. Second, whether its activities during the period in which the patent was no longer in force entitle it to continue exploiting the invention even if restoration is granted.
The answers may differ.
An opposition to patent restoration is not a proceeding to invalidate a patent for lack of novelty or inventive step. Its purpose is to challenge the legal basis for the Registrar’s decision to publish the restoration application. The governing provisions are Sections 56-64 of the Israeli Patents Law, 5727-1967, and Regulations 89-94 of the Patents Regulations, 5728-1968.
For foreign patent owners and their counsel, this distinction is especially relevant when an Israeli patent has lapsed following an error in international renewal-fee management or when a competitor seeks to enter the Israeli market during a period of lapse.
When Does an Israeli Patent Lapse for Non-Payment of Renewal Fees?
Section 56 of the Patents Law makes continued patent protection conditional upon payment of the prescribed renewal fees.
Section 57 provides a six-month grace period during which an overdue renewal fee may still be paid, together with the applicable surcharge. Payment within this period is treated as timely, and the patent is regarded as having remained in force.
If the renewal fee remains unpaid after the grace period, the patent lapses and the lapse is published under Section 58. The patent owner may subsequently apply for restoration under Section 59.
The distinction between the effective date of lapse and the date on which the lapse is officially published is particularly important.
Section 63 protects certain third parties who begin exploiting the invention, or make substantial preparations to exploit it, after publication of the lapse. The fact that a renewal fee was overdue, or that the patent had already lapsed before publication, does not necessarily establish entitlement to this protection.
A foreign company considering commercial activities in Israel should therefore establish the precise date of the official publication rather than rely solely on renewal-fee records or the patent’s apparent status.
The Three Requirements for Patent Restoration Under Section 60
Section 60 establishes three cumulative conditions for publication of an application to restore a lapsed patent.
The Registrar must be satisfied that the renewal fee was not paid for reasonable cause, that the patent owner did not intend the patent to lapse, and that the restoration application was filed as soon as possible after the non-payment became known to the patent owner or the person responsible for payment on the owner’s behalf.
These requirements call for an examination of the actual circumstances surrounding the failure to pay.
An explanation based on a general administrative error may be insufficient without evidence identifying how the error occurred, who was responsible for monitoring the renewal deadline, when the omission was discovered and what steps were taken thereafter.
Human error or an administrative oversight may constitute reasonable cause, but neither automatically satisfies the statutory requirements.
For example, where an international company claims that an external renewal service provider was responsible for paying Israeli maintenance fees, the relevant evidence may include the service agreement, renewal instructions, reminder notices, internal docketing records and correspondence following discovery of the missed payment.
A statement that the patent was commercially valuable to the company may support an assertion that lapse was unintended. It does not necessarily resolve whether the company had previously made a deliberate decision not to maintain the patent.
The Registrar’s assessment must address the statutory requirements rather than merely accept a generalized claim that the failure was inadvertent.
Who May Oppose Patent Restoration in Israel, and What Is the Deadline?
Section 61 permits any person to oppose an application for restoration.
An opponent need not be a licensee, direct competitor or party already exploiting the invention. However, the opposition must be based on the statutory ground that the Registrar had no proper basis for ordering publication of the restoration application.
The opposition must be filed within three months of publication of the restoration application.
This is not the date on which the patent originally lapsed, nor necessarily the date on which the opponent first learned that restoration was being sought.
The three-month period is particularly strict. Section 164(a) expressly excludes the deadline prescribed by Section 61 from the Registrar’s general authority to extend procedural time limits.
Accordingly, even compelling evidence that restoration should not be granted will not substitute for filing the opposition within the prescribed period.
For foreign counsel monitoring the Israeli patent portfolio of a competitor, the official publication date in the Israel Patent Office’s Patent Journal should be established immediately. Internal reporting delays, communication with foreign associates and the time required to obtain corporate instructions must all be managed within the statutory period.
Grounds for Opposition and the Required Evidence
An opposition to restoration should address the legal and factual foundation of the Registrar’s decision to publish the restoration application.
It is not sufficient to argue that the patented invention lacks novelty, that the claims are excessively broad or that the patent should never have been granted. Such arguments may be relevant to a separate patent cancellation proceeding, but they do not independently establish the ground for opposition under Section 61.
The central questions concern the reasons for non-payment, the patent owner’s intention regarding continued protection and the promptness of the restoration application.
A dispute may arise, for example, over when the patent owner first learned that the renewal fee had not been paid.
The patent owner may assert that the omission was discovered only after receiving an inquiry from a customer. The opponent may produce evidence that a renewal reminder had been sent months earlier to an employee or professional representative responsible for maintaining the patent portfolio.
The fact that a reminder was sent does not necessarily establish that it was received or read. It may, however, justify closer examination of the company’s patent docketing system, allocation of responsibilities and internal communications.
Relevant evidence may include renewal-service records, emails, invoices, internal management decisions, payment instructions and testimony from employees or external service providers.
For multinational patent owners, the evidence may be distributed among the foreign parent company, an overseas patent agent, an Israeli associate and an international renewal-fee provider. Establishing who had responsibility for payment, and when the relevant information became known to that person, may be decisive.
Yonatan Drori’s treatise Patent Law (2023), Section 11.2.2.5, distinguishes between the conditions the patent owner must establish in seeking restoration and the evidentiary burden borne by a party opposing restoration.
Suspicion alone, or the mere fact that a renewal fee was not paid, does not establish the statutory ground for opposition. The opponent must substantiate why the material before the Registrar did not justify publication of the restoration application.
Opposition Proceedings Before the Israeli Registrar of Patents
Regulation 92 requires an opponent to submit a written notice of opposition identifying the grounds relied upon and accompanied by the prescribed fee.
Under Regulation 93, the procedural rules governing opposition to the grant of a patent apply, with the necessary modifications, to an opposition against restoration.
For these purposes, the patent owner and an exclusive licensee are treated as applicants, while the party filing the opposition is treated as the opponent.
The proceedings may involve written pleadings, affidavits, documentary evidence, witness examination and legal submissions, in accordance with the applicable procedural rules and the Registrar’s directions.
The underlying restoration application is subject to separate requirements.
Regulation 89 provides that an application for restoration must be submitted in writing, supported by an affidavit and accompanied by the prescribed fee.
If the Registrar is not satisfied that the application should be accepted, Regulation 90 allows the applicant to request an opportunity to present arguments within one month of receiving notification of the refusal.
Where the Registrar accepts the application, Regulation 91 requires the patent owner to pay the outstanding renewal fees and applicable publication fee within one month of notification.
Following payment, the restoration application is published for opposition.
These preliminary stages should be distinguished from the adversarial proceedings that arise if an opposition is filed after publication.
The Israel Patent Office’s official guidance on patent restoration explains the filing requirements, fees and publication process. Companies and represented applicants are required to use the Patent Office’s online filing system.
Should a Competitor Oppose Restoration if It Has Already Begun Exploiting the Invention?
Not necessarily.
Section 63 provides a separate form of protection for a person who began exploiting an invention in Israel, or made substantial preparations for its exploitation, after the lapse of the patent was published under Section 58.
Such a person may continue exploiting the invention for the purposes of their business, even after the patent is restored.
Section 64 restricts the transfer of this right. It cannot be transferred independently of the business in which the invention was exploited.
These provisions are particularly important for companies assessing whether they can continue manufacturing, importing or marketing a product following the restoration of a competitor’s patent.
A company that ordered specialized manufacturing equipment after publication of the patent’s lapse may be able to demonstrate substantial preparations for exploitation.
By contrast, a company that merely conducted a preliminary commercial assessment, or began its relevant activities before publication of the lapse, cannot assume that it satisfies Section 63.
The relevant dates, the nature of the preparations, the extent of the investment and the connection between those preparations and the particular invention may determine whether the statutory protection applies.
The protection under Section 63 is separate from an opposition to restoration under Section 61. A third party may therefore have a legally significant right to continue exploitation even if it does not oppose restoration or its opposition is unsuccessful.
For a foreign manufacturer or distributor, this distinction can affect the decision whether to invest in an opposition proceeding, negotiate a license or rely upon an existing statutory right of continued exploitation in Israel.
Lieberman v. Deitelzweig: Protecting Third-Party Commercial Reliance
In Lieberman v. Deitelzweig, CA 18/75, the Supreme Court of Israel considered the protection afforded to third parties who had relied upon a patent no longer being in force.
The Court interpreted the right of continued exploitation in a manner that recognized the commercial reliance of persons who established a business or invested in production facilities during the period in which the patent had lapsed.
The protection is not necessarily limited to selling inventory accumulated during the lapse. It may permit the continuation of commercial activities based on exploitation that began during the relevant period, subject to the statutory conditions and the scope of the business concerned.
The underlying rationale is that a third party who reasonably undertook commercial activity while a patent was no longer effective should not necessarily suffer substantial losses solely because the patent owner subsequently obtained restoration.
The limits of this protection remain important. Section 63 does not confer an unrestricted, transferable patent license.
In Aryeh v. S.M.L. Hatzlacha, a 2013 case involving baby feeding bottles, the court examined a defense based on Section 63 following the lapse and subsequent restoration of a patent.
Evidence concerning purchasing and marketing activities during the lapse period was presented in relation to some defendants, while questions arose as to whether others had commenced their activities only after restoration.
The infringement action was ultimately dismissed because infringement had not been established.
The case illustrates the importance of evidence identifying precisely when each defendant entered the market and what activities were undertaken during the relevant period.
It should not be read as establishing that every person who sold a product while a patent had lapsed automatically acquires immunity from all future infringement claims.
What Happens if the Opposition Is Accepted or Rejected?
Under Section 62, if no opposition is filed within the prescribed period, or if an opposition is filed and rejected, the Registrar must issue an order restoring the patent.
The Registrar may impose conditions on the restoration.
Regulation 94 requires the restoration to be entered in the Patent Register and a corresponding certificate to be issued to the patent owner.
If an opposition is successful, the restoration application cannot proceed on the basis of the Registrar’s challenged publication decision.
The commercial consequences depend on the procedural circumstances, the status of the patent and whether third parties have acquired rights of continued exploitation under Section 63.
A party adversely affected by a decision of the Registrar should also consider the applicable appeal mechanism, including whether the decision is final or interlocutory.
An intention to appeal does not, by itself, extend the three-month deadline for filing an opposition under Section 61.
For foreign companies, the decision whether to oppose restoration should therefore be made independently of any broader litigation or appeal strategy.
Opposition to Restoration Is Not Patent Cancellation
The rejection of an opposition to restoration does not establish that the patented invention satisfies every substantive requirement for patentability.
Restoration proceedings address whether a patent that lapsed for non-payment of renewal fees should be returned to force.
Patent cancellation proceedings concern the validity of the patent itself and may involve questions such as novelty, inventive step and other statutory requirements.
The distinction is also important when comparing Israeli procedures with those in other jurisdictions. For example, a European Patent Office opposition is a post-grant challenge to a patent, whereas an Israeli opposition to restoration concerns a patent that has already been granted but subsequently lapsed.
A party wishing to challenge the substantive validity of a granted Israeli patent should consider the separate procedures described in Patent Cancellation in Israel.
Likewise, where the dispute involves alleged unauthorized exploitation of an Israeli patent, the relevant remedies and defenses must be examined under the rules governing Patent Litigation in Israel.
Where several proceedings may be pursued concurrently, their distinct legal grounds, evidentiary requirements, remedies and procedural consequences must be considered together.
An opposition under Section 61 is appropriate where the challenge concerns the basis for restoring the patent. It is not a substitute for every other legal mechanism available to contest patent rights in Israel.
The governing statutory provisions are Sections 56-64 and 164 of the Israeli Patents Law, 5727-1967, and Regulations 89-94 of the Patents Regulations, 5728-1968. The relevant filing arrangements are described in the Israel Patent Office’s official restoration guidance.
Further analysis of patent restoration, opposition proceedings and the rights of third parties during the lapse period appears in Yonatan Drori, Patent Law (Hebrew, 2023), Section 11.2.2.
