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News >> A precedential decision with respect to awarding costs in patent matters
A precedential decision with respect to awarding costs in patent matters
 
A precedential decision with respect to awarding costs in patent matters
( 11/03/2008,  יום שלישי)
The Deputy Patent Registrar has recently awarded a precedential amount of NIS 120,000, considering the actual costs that were incurred by the winning party.
The proceedings refer to an opposition filed by "Teva" to a patent application of "Pfizer". Shortly after "Teva" submitted its pleading, "Pfizer" withdrew the application.
The Deputy Patent Registrar emphasized that once a party withdraws the proceedings, he shall pay the expenses of the other side, regardless of the cause for the withdrawal.
The Deputy Patent Registrar interpreted Section 162(b) of the Israeli Patent Act and held that the use of the words "reasonable costs" does not deprive the authority from ruling realistic costs. He added that the term "reasonable costs" shows the need to test the reasonableness of the winning party's costs, before awarding them. He also held that awarding realistic costs, requires the winning party to prove them.
In this case, "Teva" presented invoices for professional services. The Deputy Patent Registrar awarded costs according to these invoices, and indicated that there was no unusual behavior of either side, that should have influenced his ruling.
This is an extremely important and precedential ruling, since the amount of the awarded costs is significantly higher than the costs which are usually awarded in legal proceedings (and also in patent matters). This is, especially so considering the fact that the patent applicant withdrew the application at an early stage of the proceeding (right after the opponent submitted its pleading).

Following is a link to the decision
http://www.justice.gov.il/NR/rdonlyres/A70FAC3A-B141-4781-822F-9836534D924B/0/133957.pdf

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