The Honorable Justice Procaccia noted there that "in the interim period between the publication of the acceptance of the patent application and the decision of the Registrar in the application, the owner of the invention does not have a proprietary right in the invention. His proprietary right is formed only upon the granting of the patent, to the extent that the Registrar decides to grant it following a decision on objections. In the absence of a proprietary right in the interim period, and in the absence of assurance that a patent will eventually be granted, the owner of the invention, according to the Patents Law, does not have the right to protect the invention against the entire world by way of obtaining remedies against infringement, between injunctions and infringement damages. At this stage, the concept of patent law is that free competition in the market should not be limited by way of providing remedies against the competitor, the purpose of which is to prevent the exploitation of the details of the invention, which is the subject of the patent application, and its use of its details. At the same time, even with regard to this period, the law does not grant absolute priority status to freedom of competition. It states that where a competitor uses the details of the invention during the intermediate period, and at the end of the day the patent owner is granted a patent, the patent owner is entitled to claim infringement damages from the competitor, which relates not only to the period after the patent was granted but also to the interim period, before the patent was granted, from the date of publication of the acceptance of the application onwards" (ibid., at paragraph 25).
Against this background, the defendants claim that the plaintiffs are silenced from the claim against them for theft of trade secrets on the basis of the Commercial Torts Law, since the patent proceeding has not yet been decided.
- I cannot accept this argument. This is for factual reasons as well as for more fundamental reasons.
102. On the factual level , the court's expert explained in his testimony (655, Q. 5-10) that the plaintiffs' patent applications from April 2020 did not disclose their main secrets. Therefore, these requests do not negate the law of trade secrets (ibid., S. 11-14). This testimony is strengthened by the testimony of Dr. Luzzatto, the defendants' expert, who stated in his fourth opinion (see: paragraphs 3.1 and 19.1) that the trade secrets in question do not appear in the patent applications filed by the plaintiffs on April 5, 2020, but only in the patent application they filed in August 2020.
The theft of the trade secrets and their use therefore occurred prior to the filing of the plaintiffs' later patent applications, so the Merck case cannot apply in our case.
- However, beyond the factual argument, it seems to me that the defendants' interpretation of the Merck case is far-reaching. This is a situation in which the patent applicant included details about the invention. In this situation, he does not have the power to prevent others from using these details, during that interim period until the patent is recognized, but he can claim compensation for this use after the recognition, if it is received.
This rule, of course, relates to a situation in which the competitor exploits the advertisement and the details of the invention in it. The publication accompanying the patent application transfers the trade secret to the public domain. Certainly, it is not a matter of merely an instrument of theft of trade secrets and the use of details that are not in the public domain. Certainly, a person whose trade secrets were stolen, prior to the publication of the invention, does not lose his ability to receive declaratory remedies because they were stolen, injunctions or other remedies.