A company planning to launch a product in Israel identifies an Israeli patent whose claims may cover part of the proposed technology. Must it postpone entry until the patent owner files an infringement action? Not necessarily. Section 187 of the Israeli Patents Law, 5727-1967, permits a person intending to exploit a product or process to apply to the competent court for a declaration that the specific planned exploitation does not infringe an identified patent.
The procedure allows a prospective market entrant to seek legal certainty, but it is not a substitute for examining all relevant patents, nor a shortcut to cancellation of the identified patent. The law imposes a specific prior-contact requirement, identifies the necessary respondents, limits the issues the court may hear and contains an unusual rule concerning litigation costs.
What Is a Patent Non-Infringement Declaration?
Under Section 187(a), a person intending to exploit a defined product or process may request a judgment that its proposed exploitation does not infringe the particular patent specified in the application. The court examines the patent claims and the actual planned technical features.
A declaration concerning one product and one patent is not a general freedom-to-operate certificate for an entire commercial project. It does not necessarily address other Israeli patents, future changes to the product, different manufacturing processes or rights held in other countries.
For a multinational manufacturer, the potential value is greatest where the launch plan is sufficiently developed to permit a meaningful claim comparison and the risk of infringement has commercial consequences such as delayed tooling, manufacturing or distribution agreements.
The Mandatory Prior Request to the Patent Owner
Section 187(c) establishes an important prerequisite. Before obtaining the declaration, the applicant must give the patentee full particulars of the product or process it intends to exploit and ask the owner to confirm that this exploitation does not infringe the patent.
The statutory ground for judicial determination arises where the patentee refuses to provide that confirmation or does not respond within a reasonable time. A generic letter asking whether the proprietor objects to “our product” may not satisfy the requirement where the features necessary to assess infringement have not been disclosed.
The Law does not define a fixed number of days constituting a reasonable response period. It also states that the court should not reject an application solely because it was filed before the lapse of a time that the court might otherwise regard as reasonable. The content and delivery of the request, and the response actually received, therefore matter.
Preserve the exact technical description sent to the owner. If the product described in court differs materially from that disclosed in the preliminary request, the applicant may face a dispute about whether the statutory preliminary condition was satisfied for the actual product.
Confidentiality and the Commercial Cost of Disclosure
The requirement to provide full product or process details creates a practical choice for an innovative business. Before asking for a declaration, the applicant may have to reveal technical information to a competitor who is also the patent owner.
Counsel should assess the extent of the information needed to make the request meaningful, and whether a confidentiality arrangement is available. The statutory requirement to send particulars does not by itself create a confidentiality agreement or justify withholding information essential to the infringement analysis.
Nor should the proposed product be described so broadly that the eventual judgment would provide little meaningful protection. Precision and commercial confidentiality must be addressed together.
Who Must Be Joined and Which Israeli Court Has Jurisdiction?
Under Section 187(b), the patent proprietor and any exclusive licensee are respondents to the application. Checking current records of the Israeli patent and relevant exclusive licences is therefore important before proceedings are filed.
Section 188(a) identifies the District Court in Jerusalem as the forum for certain patent matters other than infringement actions. A Patents Order from 1969 added the Tel Aviv–Jaffa District Court as a competent forum. The jurisdictional regime differs from ordinary patent infringement actions, for which Section 188(b) establishes a separate rule.
For foreign companies, the location of a distributor or an intended factory is not by itself a substitute for applying the particular statutory jurisdiction provisions governing declaratory relief.
How Does the Court Decide Whether the Planned Product Infringes?
The analysis begins with the patent claims and a technical description of the proposed product or process. Counsel should map the claim elements or steps against the actual implementation and identify the precise point of asserted non-infringement.
Section 49 of the Patents Law addresses exploitation that falls within the patent’s claims as well as exploitation involving a similar manner of use that, in light of those claims, embodies the essence of the invention. Therefore a purely literal difference in words or chemical notation does not invariably answer the infringement question.
Depending on the technology, the evidence may require drawings, process specifications, component data, experimental results and expert opinion. An application relying on a general description or an unstable product design may produce an overly narrow declaration that does not resolve the actual planned launch.
A later material modification should be analyzed anew; the original declaration is not a standing authorization for all future iterations of a product.
Why Patent Validity Cannot Be Litigated Under Section 187
Section 187(e) expressly prohibits arguments in these proceedings that the identified patent is invalid. The grant or refusal of a non-infringement declaration does not decide the patent’s validity.
The court must therefore address the scope of the claims and the proposed exploitation on the premise of a valid patent. A prior-art reference showing that the patent should not have been granted is not, by itself, proof that the planned product falls outside the patent claims.
Where the true objection is lack of novelty, inventive step or another validity defect, the party should consider an appropriate invalidity or cancellation procedure separately. Combining the two contentions without recognizing this procedural limitation can prevent the declaratory action from addressing the correct issue.
The Dexcel Litigation: Non-Infringement Versus Invalidity
The distinction appeared in Aktiebolaget Hässle v. Dexcel Ltd., Tel Aviv District Court, Civil Case 1153/99 and Motion 32931/99 (8 August 2002). The dispute concerned Israeli Patent No. 82911 covering a pharmaceutical omeprazole formulation. Dexcel argued that its proposed formulation differed materially from the protected composition and raised related questions about challenges to the patent’s validity.
The case illustrates the need to separate a request for a declaration that a specific pharmaceutical formulation does not infringe from a challenge seeking to invalidate the patent. Section 187(e) does not permit the court to decide invalidity within the statutory non-infringement declaration procedure.
Filing such an application should not be described as a judicial authorization to launch; what matters is the court’s actual disposition of the defined non-infringement question.
Direct Infringement, Equivalent Variants and Technical Risk
A planned product may omit a feature described in the exact wording of a claim yet operate in a way that raises a question about the scope of Section 49. The analysis must consider the invention as claimed and interpreted in light of the patent specification and relevant Israeli principles.
The English case Actavis UK Ltd. v. Eli Lilly & Co. [2017] UKSC 48 (12 July 2017) is a comparative illustration, not binding Israeli precedent. The dispute concerned alternative pemetrexed compounds. After different outcomes in the earlier stages, the UK Supreme Court held that the disputed alternatives infringed even though they did not fall within the normal wording of certain claims, because the variations were immaterial to the invention under the applicable UK test.
The case shows the commercial danger of assuming that a seemingly modest chemical substitution necessarily avoids infringement. The controlling legal analysis for an Israeli declaration remains Sections 49 and 187 of the Israeli Patents Law and the applicable Israeli authorities.
Declaratory Relief Versus Defense in an Infringement Action
In a conventional infringement suit, the patent proprietor or an exclusive licensee brings the claim based on exploitation said to infringe the patent. Section 183 provides for injunctions and monetary remedies where the statutory conditions are satisfied.
By contrast, a Section 187 application is initiated by a person contemplating exploitation who wants advance determination of whether the specific plan infringes. The procedure is optional; there is no general requirement to obtain declaratory relief before commercial launch. If the proprietor later brings an infringement claim, the defendant may raise appropriate defenses in that litigation.
A prospective applicant should consider whether the proposed design is stable, whether alternative technical configurations would avoid the relevant claims and whether litigation would actually reduce uncertainty more effectively than a design-around or negotiated licence.
The Special Costs Rule in Section 187(d)
Section 187(d) provides an unusual starting point: the applicant bears the parties’ costs unless the court directs otherwise. A company that succeeds in obtaining the declaration should therefore not assume that the patentee must reimburse its litigation expenses.
The court retains discretion, but the statutory default matters to the economics of pre-launch proceedings. A detailed technical dispute may require expert reports, significant document preparation and commercial disclosure, even if the question ultimately resolved is narrowly defined.
Preparing the Request Before Contacting the Patentee
Identify the particular Israeli patent, the current proprietor and any exclusive licensee. Examine the prosecution history and claims, prepare a reasonably final technical specification of the proposed product or process and document the comparison that supports non-infringement.
Decide what technical information can be provided to the patent owner and consider appropriate confidentiality safeguards. The prior request should sufficiently identify the proposed exploitation for the patentee to address it. Retain evidence of what was sent, when and how the patentee responded.
Before filing, also assess whether the dispute truly concerns non-infringement rather than invalidity, ownership or a possible compulsory licence. Those issues require different statutory procedures.
For the wider infringement framework see Patent Infringement Litigation in Israel, Compulsory Patent Licensing in Israel and Patent Litigation in Israel. The principal statutory provisions are Sections 49, 187 and 188 of the Patents Law. Further discussion appears in Yonatan Drori, Patent Law (Hebrew, 2023), Section 18.9.6.
