Your Israeli correspondent firm — for IP prosecution, office action responses, opposition and cancellation proceedings, and enforcement on behalf of your clients’ Israeli interests.

If you are a trademark attorney, patent practitioner, or IP law firm outside Israel whose clients have — or are about to have — intellectual property interests in Israel, this is the page for you. Gershoni & Co. acts regularly as Israeli counsel to international IP firms and in-house teams whose clients require local representation before the Israel Patent Office (ILPO), the Designs Department, and, where enforcement is called for, the Israeli courts.

The work we handle as correspondent counsel is varied: Israeli national-phase entries from Madrid, Hague, and PCT international applications; responses to office actions and substantive refusals at the ILPO; opposition and cancellation proceedings before the Registrar; appeals from Registrar decisions to the District Courts; customs recordals and cross-border enforcement; and, where the commercial stakes demand it, infringement proceedings on behalf of international rights holders. The common thread is that the instructing party is a fellow practitioner, not the end client — and our work is structured around the expectations and operating patterns that come with that relationship.

Your point of contact at the firm will be one of three attorneys. Adv. Sa’ar Gershoni — founder and managing attorney, LL.M. in Law and Technology, INTA member, author of a Supreme Court-cited work on parallel importation and intellectual property — leads the firm’s strategic and enforcement work. Adv. Avishay Bigman, head of the firm’s prosecution practice and contributor of the INTA Opposition Guide chapter on Israel, handles the prosecution and opposition matters that form the core of most correspondent engagements. Adv. Raanan Ben-Ishai — with over fifteen years of civil litigation experience and a judicial clerkship at the Israeli Supreme Court — leads contested matters that require court intervention. Matters are allocated based on their substantive requirements; your file remains with the same attorney throughout.

→   Regular correspondent counsel for international IP firms and in-house teams

→   Direct partner access  ·  same-day instruction acknowledgement

→   Full ILPO capability  ·  prosecution, oppositions, cancellations, appeals

→   Strict non-poaching policy  ·  the instructing firm’s client relationship is protected

→   Reporting in your format  ·  adapted to your docketing and case-management systems

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WHY FOREIGN COUNSEL INSTRUCT US

The practical criteria that matter

Foreign counsel choosing an Israeli correspondent typically care about a narrow set of operational questions — and the answers the chosen firm gives to those questions usually determine whether the relationship is a productive one. We set out below how we approach each of them, in the form a fellow practitioner would want to see the answer delivered.

A protected client relationship

The single most important commitment an Israeli correspondent can make to instructing foreign counsel is the commitment not to solicit or accept instructions from the instructing firm’s underlying client in matters outside Israel. We give that commitment unreservedly. Our practice is built on correspondent work, and the correspondent model only functions if the instructing firm can rely on the Israeli local firm not to compete for the broader client relationship.

The instructing firm’s client relationship is the asset that produced the instruction. Treating that asset with professional respect is the minimum entry requirement for correspondent practice — and it is a commitment we make in writing where it is helpful to do so.

Responsiveness calibrated to practitioner expectations

Foreign counsel instructing an Israeli correspondent are almost always working to a docketed deadline, a client reporting schedule, or a strategic timing consideration that the local firm does not see. Our response conventions are calibrated accordingly. Instructions are acknowledged on the business day they are received, with an initial substantive view on the matter where one is possible at that stage. Deadlines are confirmed, options for response identified, and any additional information we need requested in a single exchange rather than across a drawn-out correspondence.

Direct partner access throughout

The attorney corresponding with you is the same attorney who reviews the office action, drafts the response, attends the hearing, and signs the report. There is no handoff chain, no rotation, and no delegation to unfamiliar associates. Fellow practitioners generally want to know who they are dealing with at first contact, and to find the same person still dealing with the matter when it closes. We are structured to deliver on that expectation.

Reporting in the format you use

Every foreign IP firm has a preferred reporting style, a docketing system that expects certain data in certain fields, and a set of internal reporting conventions that make the correspondent’s output usable — or not — in the firm’s workflow. We work with our instructing firms on their preferred format from the outset, and we produce reports that drop into existing systems rather than require transcription. This includes deadline-tracking reports, status reports, filing confirmations, substantive office-action responses, and closing reports — all delivered in the structure the instructing firm’s systems expect.

Substantive Israeli-law advice, clearly expressed

Our written advice on Israeli IP law is produced in a form that fellow practitioners can action directly — not translated summaries, not procedural overviews that have to be unpacked before the strategic point emerges. Where Israeli procedure or substantive law differs materially from the frameworks foreign counsel are accustomed to (pre-grant patent opposition; the Israeli Designs Law 2017; the fair-use framework modelled on US law; the specifically Israeli features of the parallel-import landscape), we note the difference expressly and explain the practical implications.

Transparent fees

We offer fixed or capped fee arrangements for the work-types foreign counsel most often instruct: national-phase entries, office-action responses, routine prosecution steps, opposition representation up to defined milestones. For contested matters that do not lend themselves to fixed pricing, we provide early budget estimates with clear milestones for rebudgeting. We quote in USD or EUR on request, and we issue invoices in the form instructing firms typically pass through to their end clients.

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WHAT WE HANDLE AS CORRESPONDENT COUNSEL

The full range of Israeli IP matters

Trademark prosecution and contested matters

  • Israeli national-phase entries from Madrid Protocol international registrations. Monitoring designation status, responding to provisional refusals, and managing the national phase through to registration.
  • Direct Israeli trademark applications. Clearance searches, filing strategy advice, specification drafting, prosecution, and registration.
  • Office action responses. Substantive responses to objections raised by the Israeli Registrar — on grounds of descriptiveness, non-distinctiveness, likelihood of confusion with prior marks, and other statutory grounds — including, where appropriate, evidence of acquired distinctiveness and oral argument before the Registrar.
  • Opposition and cancellation proceedings. Representing applicants defending their applications against opposition and parties opposing third-party applications; pursuing and defending cancellation actions, including non-use cancellations; and managing appeals from Registrar decisions to the District Courts.
  • Portfolio management and watching. Renewal management, status reporting, and trademark watch services for Israeli marks within broader international portfolios.

Patent prosecution and contested matters

  • Israeli national-phase entries from PCT international applications. National-phase filing, managing the examination timeline, and coordination with the client’s international counsel on parallel prosecution.
  • Office action responses before the ILPO. Substantive responses to examiner objections on novelty, inventive step, utility, and subject-matter eligibility, attending hearings before the Registrar where required.
  • Pre-grant opposition proceedings. Israel operates a pre-grant opposition system — a feature that distinguishes it from many foreign jurisdictions and one that requires local expertise. We represent both applicants and opponents in these proceedings, including the affidavit and expert-evidence work they typically involve.
  • Patent cancellation proceedings. Post-grant cancellation actions before the Registrar, including revocation based on invalidity grounds.
  • Appeals from Registrar decisions. Substantive appeals to the District Courts on examination, opposition, and cancellation matters.

Designs prosecution and enforcement

  • Israeli national-phase entries from Hague Agreement international applications. Israel has been a Hague member since January 2020; national-phase entries via designation from WIPO are handled before the ILPO Designs Department.
  • Direct Israeli design applications. Filing strategy, preparation of visual material, prosecution, and registration under the Designs Law, 5777-2017.
  • Opposition and cancellation. Contested proceedings before the Registrar on grounds including lack of novelty, insufficient individual character, and ineligibility.

Enforcement on behalf of international rights holders

  • Cease-and-desist correspondence. Structured, effective demand correspondence in Israeli commercial practice — often resolving matters before formal proceedings become necessary.
  • Preliminary injunction applications. Ex parte and inter partes preliminary relief in the Israeli District Courts, including emergency applications where irreparable harm is at issue.
  • Substantive infringement proceedings. Full trial-level representation for trademark, copyright, patent, and design infringement; coordination with parallel foreign proceedings where part of a broader enforcement campaign.
  • Customs enforcement. Recordal of IP rights with the Israeli Customs Authority, response to specific detentions, and follow-on legal proceedings.
  • Online and platform-level enforcement. Takedown work, platform correspondence, and John Doe proceedings to unmask Israeli anonymous infringers.

Advisory opinions and due diligence

  • Opinions on validity, scope, and enforceability. Substantive opinions on specific Israeli IP rights for the instructing firm’s use with the end client — freedom-to-operate, infringement risk, validity assessments, and enforcement prospects.
  • IP due diligence on Israeli targets and assets. Focused Israeli-law IP diligence alongside the lead corporate firm on cross-border M&A and investment transactions involving Israeli targets.

WHY ISRAEL-SPECIFIC EXPERTISE MATTERS

Features of the Israeli system foreign counsel frequently encounter

Israeli IP practice shares the core architecture of most developed IP systems but contains specific features that foreign counsel benefit from understanding. We flag the most material ones below.

  • Pre-grant patent opposition. Israel operates a pre-grant opposition system: oppositions are filed after examination-acceptance but before grant, and a successful opposition prevents the patent from being granted. This differs from the post-grant models used in the United States and elsewhere, and shapes both defensive and offensive strategy materially.
  • Substantive examination, not formal examination. The ILPO conducts substantive examination of patent, trademark, and design applications. Office actions are common and substantive responses are typically required — not purely formal compliance.
  • Pre-registration opposition window for trademarks. Three months from publication of an accepted application. Third parties with conflicting rights need to monitor publications and respond within the window.
  • Well-known-mark protection without registration. Israel recognises and protects well-known marks even without local registration — an important consideration for international brand owners considering the sequence of their Israeli filings.
  • Statutory damages in copyright. Up to NIS 100,000 per infringement without proof of loss under section 56 of the Copyright Act, with parallel disgorgement available under the law of unjust enrichment.
  • Fair use modelled on US law. Israeli copyright law adopts an open-ended fair-use framework based on the four-factor US test — a useful familiar reference point for US-trained counsel but applied by Israeli courts with their own developing body of case law.
  • Hague Agreement membership (2020). Israel has been a Hague member since January 2020, materially simplifying design protection for international rights holders designating Israel through WIPO.
  • Active customs enforcement. Israel’s Customs Authority is materially active in IP enforcement at the ports — a distinctive strength for brand owners concerned with imported counterfeits and parallel imports.
  • Ex parte preliminary injunctions readily available. The District Courts grant ex parte preliminary injunctions in appropriate IP cases — a powerful tool where infringement is ongoing and harm is immediate.

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STARTING WORK WITH US

From first contact to active matter

The administrative path from a first instruction to an active file is intentionally short. We have worked with foreign counsel at enough IP firms — of all sizes, and in all the major IP jurisdictions — to know that the administrative onboarding of a new correspondent relationship is where many promising relationships stall. We keep it straightforward.

  • Initial instruction. Contact us by email with the matter, the deadline, and any client or conflict information required. We respond the same business day with confirmation of acceptance, initial substantive view where possible, and a clear statement of any additional information required.
  • Conflict check and engagement terms. We run a conflict check against our existing client base and issue standard engagement terms. For correspondent firms with standard terms of their own, we are comfortable adopting them subject to reasonable modification. For firms preferring our standard framework, we provide a two-page correspondent engagement letter that covers scope, fees, reporting, conflicts, non-poaching, and confidentiality.
  • Power of attorney. We provide the applicable Israeli power-of-attorney form for the relevant matter-type. Original signatures are generally accepted in electronic form by the ILPO; any original-signature requirements are flagged at the outset.
  • Reporting cadence. We agree the reporting cadence and format at the outset — status reports, deadline-tracking, filing confirmations, closing reports — tailored to the instructing firm’s docketing system and client-reporting requirements.
  • Fee arrangement. We quote fees upfront: fixed fees for defined work-packages; capped fees with milestone triggers for oppositions; time-and-materials with clear early estimates for open-ended litigation. Invoices issued in USD, EUR, or ILS as required.

Languages and communication

Working correspondence is in English as a matter of course. All of our attorneys work in English at the level required for substantive legal advice. Hebrew is used only for Israeli-law primary materials and for interaction with the ILPO and the courts — where required, we translate relevant portions of Hebrew materials in the course of our reports so foreign counsel can assess the position directly.

Time zone and availability

Israel is GMT+2/GMT+3 (depending on daylight saving), which gives us substantial working overlap with European counsel throughout the business day and overlapping morning hours with US East-Coast firms. We take scheduling into account when agreeing response timings with US West-Coast and Asia-Pacific firms, and we hold availability for urgent matters outside standard working hours when the matter requires it.

 

TYPICAL CORRESPONDENT MANDATES

A snapshot of the work we do

The range of correspondent work we handle varies by instructing firm and by end-client sector, but the typical categories include:

  • Madrid-route Israeli trademark national phases with the full subsequent prosecution through to registration.
  • PCT-route Israeli patent national phases with full examination through grant, including office action responses and examiner interviews.
  • Hague-route Israeli design national phases following January 2020 accession.
  • Substantive office-action responses on matters initially filed through other routes.
  • Pre-grant patent opposition representation — Israel’s distinctive opposition forum, requiring local procedural expertise.
  • Trademark opposition and cancellation proceedings before the Israeli Registrar.
  • Customs recordals and follow-on enforcement of detained goods.
  • Infringement actions in the Israeli District Courts, including emergency ex parte relief.
  • Israeli-law IP due diligence on M&A, investment, and licensing transactions involving Israeli targets.
  • Substantive opinions for use by instructing firms with their end clients — FTO, validity, infringement risk.

If you are considering instructing Israeli counsel — whether for a single matter, for a defined programme of work, or on an ongoing correspondent basis — we welcome a direct conversation about the matter and how we would approach it. Initial conversations are on a without-obligation basis, and we are happy to speak on a brief-introductory basis with foreign firms evaluating potential Israeli correspondents for their broader practice.

Strategic & enforcement: Adv. Sa’ar Gershoni  ·  Prosecution & opposition: Adv. Avishay Bigman  ·  Litigation: Adv. Raanan Ben-Ishai

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Saar Gershoni

Written By

Saar Gershoni,

Adv. LL.M. Founder

Attorney Saar Gershoni holds a Master's degree in Law and Technology and has years of experience representing and advising intellectual property rights holders in both criminal and civil matters. He specializes in providing strategic guidance to companies, from their formation through to their sale. Read More