A granted Israeli patent may be challenged through a patent cancellation proceeding before the Israel Patent Office. Unlike patent opposition in Israel, which takes place before grant, cancellation is a post-grant procedure directed against a patent that has already been registered.
This distinction is important for foreign patent attorneys and litigation counsel. Once the patent has been granted, the party seeking cancellation bears the burden of establishing a sufficient basis for invalidating the patent. The evidentiary position is therefore different from a pre-grant opposition proceeding.
For a broader discussion of how validity challenges interact with infringement proceedings before the Israeli courts, see Patent Infringement Litigation in Israel: A Guide for Foreign Counsel.
Drori Stav IP represents both parties seeking cancellation of Israeli patents and patent owners defending their patents. We also work with foreign counsel where the Israeli cancellation proceeding is connected with infringement litigation, licensing negotiations or related patent disputes in other jurisdictions.
When Can an Israeli Patent Be Cancelled?
A request to cancel an Israeli patent may be filed after the patent has been granted.
Unlike patent opposition, which must be filed during the statutory period following publication of acceptance, patent cancellation is a post-grant mechanism. It is therefore particularly relevant where the opposition period has already expired or where the grounds for challenging the patent become material only after grant.
The fact that no opposition was filed before grant does not necessarily prevent a later challenge to the validity of the patent. The procedural position, however, is different because the patent has already been registered.
For the pre-grant procedure, see our guide to Patent Opposition in Israel.
Grounds for Patent Cancellation in Israel
A request for cancellation may generally be based on a ground that could have prevented the patent from being granted in the first place.
The relevant grounds are connected to the statutory grounds for opposing the grant of a patent. They may include a reason for which the Registrar could have refused to accept the patent application, a failure of the invention to satisfy the requirements for patent protection under Israeli law, or a dispute concerning entitlement to the invention.
In practice, a cancellation proceeding may therefore involve questions of novelty, inventive step, patentable subject matter, sufficiency of disclosure, ownership or other requirements affecting the validity of the granted patent.
A cancellation request should not simply assert that the patent is commercially problematic. The party seeking cancellation must identify the legal grounds on which the patent should not have been granted and establish those grounds through appropriate facts and evidence.
How a Patent Cancellation Proceeding Works
A patent cancellation proceeding before the Israel Patent Office is an adversarial proceeding involving pleadings, evidence and, where required, an oral hearing.
The cancellation request must set out the grounds and facts on which the applicant relies. The supporting evidence is generally submitted with the request.
The patent owner is then given an opportunity to respond by filing a counter-statement and evidence. Further evidentiary rounds may follow, allowing the parties to address the opposing evidence and develop the factual and technical record.
Depending on the issues in dispute, the evidence may include affidavits, prior art, prosecution records, technical documents and expert opinions.
A hearing may then take place before the Israel Patent Office. Witnesses and experts may be examined and cross-examined, after which the parties submit written summations. The Registrar ultimately issues a reasoned decision on the cancellation request.
The procedural framework has substantial similarities to an Israeli patent opposition proceeding, but the legal and evidentiary position differs because the patent has already been granted.
Burden of Proof in Patent Cancellation Proceedings
The burden of proof is one of the most important differences between patent opposition and patent cancellation in Israel.
In a pre-grant opposition, the patent applicant has not yet obtained a registered patent. In a cancellation proceeding, by contrast, the patent has already been granted.
Israeli law recognizes that registration of a patent does not make the patent immune from challenge. Nevertheless, once the patent has been granted, the burden of establishing that it should be cancelled rests on the party seeking cancellation.
The cancellation applicant must therefore present a sufficiently persuasive factual and legal basis for invalidating the patent. If that burden is met at the evidentiary stage, the patent owner may then need to respond with evidence supporting the validity of the patent.
This allocation of the burden should be taken into account when deciding whether to challenge an Israeli patent after grant and when preparing the evidentiary record for the proceeding.
Representing a Party Seeking Patent Cancellation
For a foreign company considering cancellation of an Israeli patent, the initial analysis should focus on the particular claims that create the commercial concern and the legal grounds available for challenging those claims.
The review may include the Israeli patent specification, prosecution history, prior art, amendments made during examination and materials from corresponding patent proceedings in other jurisdictions.
Foreign prosecution materials can be particularly useful where relevant prior art was identified before the USPTO, EPO or another patent office, or where the patent owner made statements or amendments that may affect the interpretation or validity of the Israeli claims.
Technical expert evidence may also be important. Issues such as inventive step, sufficiency of disclosure, the knowledge of the person skilled in the art and the interpretation of technical terminology often require analysis beyond the patent document itself.
Drori Stav IP assists foreign counsel in assessing the available grounds for cancellation, preparing the Israeli proceeding, developing the evidentiary record and representing the cancellation applicant before the Israel Patent Office.
Defending an Israeli Patent against Cancellation
A patent owner facing a cancellation request should first determine precisely which claims are being challenged and on what grounds.
The analysis should address the prior art and evidence relied upon by the cancellation applicant, the prosecution history of the Israeli patent and the legal basis of each asserted ground for invalidity.
Where corresponding patents exist abroad, it may also be important to review related prosecution, opposition, invalidity or litigation proceedings. Arguments made in one jurisdiction may have strategic implications in another, even where the applicable legal standards are not identical.
The defense of the patent may require technical expert evidence, analysis of the claimed invention in light of the prior art and a detailed explanation of why the statutory requirements for patentability were satisfied.
Where the Israeli patent is commercially significant, the cancellation proceeding should also be coordinated with the owner’s broader enforcement, licensing and international patent strategy.
Patent Cancellation and Parallel Court Litigation
Patent validity may become relevant not only before the Israel Patent Office but also in litigation before the Israeli courts.
This is particularly important where a cancellation request is connected with an existing patent infringement dispute. A defendant accused of infringement may challenge the validity of the patent, while a separate cancellation proceeding may also be pending or contemplated before the Israel Patent Office.
Israeli procedure contains rules governing the interaction between proceedings before the Registrar and related court proceedings. The timing and sequence of those proceedings can therefore have strategic significance.
Where litigation is already pending when a cancellation request is filed, the existence of the court proceeding should be addressed from the outset. Likewise, where court proceedings begin after a cancellation request has already been filed, the relationship between the two proceedings may need to be considered by both the court and the Registrar.
For foreign litigation counsel, this makes early coordination particularly important. The Israeli cancellation strategy should be developed together with the infringement defense, expert evidence and positions being taken in related proceedings. For a focused comparison of the two routes, see Challenging Patent Validity in Israel: Patent Office vs Court Proceedings.
For broader representation in infringement and validity disputes, see our Patent Litigation in Israel page.
Patent Opposition versus Patent Cancellation in Israel
Patent opposition and patent cancellation both allow a third party to challenge patent rights in Israel, but they apply at different stages.
Patent opposition takes place after acceptance of the patent application but before the patent is granted. Patent cancellation takes place after the patent has already been registered.
This timing difference affects the procedural and evidentiary position of the parties. In particular, once the patent has been granted, the party seeking cancellation bears the burden of establishing that the patent should be invalidated.
Where a potential challenger becomes aware of a relevant Israeli patent application during the opposition period, it may therefore be important to consider whether to act before grant rather than wait for a later cancellation proceeding.
Where the patent has already been granted, cancellation remains an important mechanism for challenging its validity.
For a detailed explanation of the pre-grant procedure, see Patent Opposition in Israel.
Working with Foreign Counsel in Israeli Patent Cancellation Proceedings
Foreign patent attorneys, IP firms and litigation counsel may instruct Drori Stav IP to act as Israeli counsel in patent cancellation proceedings.
For a new matter, foreign counsel can provide the Israeli patent number, the relevant patent family, the claims of commercial concern, potentially relevant prior art and information regarding related proceedings in other jurisdictions.
Where litigation or invalidity proceedings are already pending abroad, it is also useful to provide relevant pleadings, expert reports, prior art analyses, claim construction materials and prosecution histories.
We review the Israeli legal and procedural position, advise on the cancellation strategy, prepare the required pleadings and evidence and conduct the proceeding before the Israel Patent Office. Where the cancellation proceeding is connected with Israeli or international litigation, we coordinate with instructing counsel to maintain a consistent overall strategy.
Patent Cancellation, Infringement and Commercial Strategy
A patent cancellation proceeding should not be considered in isolation from the commercial dispute that gave rise to it.
For a company facing a blocking patent, the validity of the patent may affect market entry, product development, freedom to operate, infringement exposure, settlement discussions and licensing negotiations.
For the patent owner, the cancellation proceeding may affect enforcement strategy, licensing value and ongoing commercial negotiations.
The decision whether to seek cancellation, defend the patent, pursue settlement or coordinate the matter with infringement proceedings should therefore take account of both the legal merits and the commercial objectives of the client.
Israeli Patent Law Expertise
Our lawyers have authored publications on Israeli patent and intellectual property law, including the English-language book Intellectual Property Law in Israel and the book Patent Law. These publications address Israeli patent law, patent validity and patent proceedings in greater depth.
See our books and publications.
For representation in broader patent disputes, see Patent Litigation in Israel. For pre-grant challenges, see Patent Opposition in Israel.
For instructions concerning cancellation of an Israeli patent, contact our patent team at office@dwo.co.il.
