Securing Patent Value for Israeli Medical Technology Companies

by White & Case LLP

Israel is a leader in medical technology and life sciences innovation. Though the life sciences industry in Israel is young, it is growing fast: in the last 15 years the industry has expanded from just over 180 life sciences companies in 1996 to over 1,000 by 2010.[1] With over half of these companies located in the medical device sector, Israel leads as the number one country for medical device patents per capita.[2]

Small- and medium-sized medical technology companies in Israel looking to capitalize on growth opportunities need to ensure that their technologies are protected in the global marketplace. This requires diligent attention to patent prosecution and enforcement in the US, especially with the recent patent law changes brought on by the America Invents Act (AIA), in force as of March 16, 2013.[3]

Engage in early patent planning and careful patent enforcement strategy.

Recently announced large-scale acquisitions of Israeli technology companies have had an energizing effect on the technology sector in the country and have underlined the importance of a company's patent portfolio to its acquisition, investment, and business expansion prospects.[4] For those Israeli medical technology companies with an eye toward acquisition by a US-based company, or for those companies seeking to conduct business in the US, early patent planning is crucial. By obtaining and then enforcing patent rights in the US, a company is securing its future value for potential buyers, founders, investors and employees. Without careful patent planning, companies run the risk of inadvertently creating invalidating prior art.

In May 2013, a federal judge in New York overturned a jury verdict in favor of Medisim, an Israeli medical device company producing non-invasive thermometers. Medisim had brought a patent infringement suit against its former US distributor, Colorado-based BestMed.[5] In overturning the verdict, not only did the court reverse an over three million dollar judgment in favor of Medisim, but it found evidence that Medisim's previous thermometer model, the FHT-1 under US Patent No. 6,280,397, qualified as prior art and anticipated its own later model, the FHT-1A under US Patent No. 7,597,668.[6] In holding the later '668 patent invalid, the court relied on the similarity of the two products, as described in both oral testimony and in the company's own documents.[7] Attentiveness to prior art in the patent prosecution process and careful planning of patent enforcement strategies may help diminish these types of outcomes. Especially when engaged in business in the US, whether through suppliers, distributors or other arrangements, diligent attention should be paid to safeguarding US patent rights.

Consider adopting policies and procedures to prevent leaks of sensitive information.

Under changes brought on by AIA, small entities may be disadvantaged if they do not have the resources to immediately file under the new first-to-file system. Because of this, emerging medical technology companies should consider adopting policies and procedures preventing the leak of confidential information to potential collaborators in the R&D process. This is especially important for Israeli medical technology companies as they increase their reach into the US and experience a corresponding increase in exposure for their technologies under R&D partnership programs, such as those made bilaterally between Israel and the states of New York, Massachusetts and, most recently, South Carolina.[8] Policies and procedures controlling the flow of sensitive information can prevent a race-to-file by a competitor or collaborator. Additionally, companies should engage with counsel to deploy necessary confidentiality or non-compete agreements with employees or partners, and should ensure that human resources and external relations staff are properly trained to prevent the flow of sensitive information to those outside the company.

Be aware of non-US activities.

With the expanded definition of prior art under AIA, companies must be cognizant of not only existing patents or publications outside the US, but also of any item outside the US that is in public use.[9] Specifically, a medical technology company's presentation at a trade show, a medical device manufacturer's road show, or a publicly made investor pitch occurring outside US soil are all activities that may now be interpreted as potentially invalidating prior art. While the one-year grace period under AIA still stands, any public exhibition or sale of a medical device by a company—in Israel or elsewhere outside the US—falling beyond the one-year grace period could be an impediment to patentability.

[2]—Id. at 4.
[3]—Leahy-Smith America Invents Act of 2011, 35 U.S.C. §102 (2011).
[4]—For example, the announcement of Google's acquisition of Waze, an Israeli social mapping and location data company, for a reported sum of over $1 billion, has emphasized the value of a company's technology and patent portfolio. Waze Could Lead Way to Israeli Internet Growth, USA TODAY (Jul. 4, 2013, 10:34 AM):
[5]—Medisim Ltd v BestMed, LLC, No. 10 Civ. 2463 (SAS), 2013 BL 129139 (S.D.N.Y. May 15, 2013).
[6]—Id. at 77.
[7]—Id. at 38, 51.
[8]—South Carolina-Israel Agreement Announced, THE WALL ST. J., May 8, 2013,
[9]—Leahy-Smith America Invents Act of 2011, 35 U.S.C. §102 (2011).

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© White & Case LLP | Attorney Advertising

Written by:

White & Case LLP

White & Case LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.