Transcript Invalidation of patents in Russia

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PATENT PROTECTION OVER RUSSIA
St. Petersburg
Moscow
Russian Patent
or
Eurasian Patent
EA
EURASION PATENT
Eurasian Patent Convention entered into force on August, 1995
 Regional convention providing protection for inventions
 protection over territories of up to 9 former USSR republics*
 protection by one single patent in the Russian language
 no indication of countries during the application prosecution
 no validation/translation of patent in national patent offices
 cost efficient if patent protection in more than 1 country
Eurasian Patent Office is located in Moscow, Russia
* - Member states: Azerbaijan, Armenia, Belarus, Kazakhstan, Kyrgyzstan,
Moldova (left in April 2012, but earlier filed applications are valid), Russia,
Tajikistan, Turkmenistan
POST-SOVIET STATES and Regional PATENT
CONVENTIONS
LT
EPC
BY
LV
EE
RU
MD
GE
UZ
KG
EAPC
AZ
UA
AM
TJ
TM
KZ
RU
CO-EXISTENCE OF Russian and Eurasian
EA
Patents
Art.1397 of the Russian Civil Code provides that:
▐ Eurasian patent and Russian patent for identical
inventions with same priority date can co-exist
 shall be used with observing interests of all
parties if belong to different assignees
 shall be licensed together if belong to one and the
same assignee
Patent Invalidation as Defense in
Infringement Suit
▐ The Russian law does not permit to have patent
invalidation trial (for lack of patentability) directly in the
Court but first the invalidation claim must be filed with
the Chamber for Patent Disputes of the RU PTO
▐ The invalidation claim can be filed in the RU PTO
anytime after patent is issued and published while it is in
force (planned amendments to the law permit
invalidation of lapsed patents also)
▐ Infringement case is not suspended if invalidation
action against patent has been filed in the RU PTO
▐ The terms of consideration within Chamber for Patent
Disputes of the RU PTO are rather short 4-7 months so
invalidation case is usually faster than of infringement
Procedure of invalidation of the Russian invention or
utility model patent
▐ Grounds: 1) New matter in the granted claims
▐ 2) Lack of patentability (novelty, inventive level and
industrial applicability for inventions)
▐ Peculiarities: the invalidation action filed can not be
amended and is considered as filed. New grounds can be
filed as separate new invalidation action
▐ If some inventions of the multiple claims are found non-
patentable the patent holder is invited to amend the
claims and patent is recognized invalid in part
▐ Decision is announced after oral hearings but in writing it
is being prepared within two months after the hearings
Procedure of invalidation of Eurasian patent
▐ Within 6 moths after issuance and publication Eurasian
patent can be opposed within the Eurasian Patent Office
before the ad hoc panel of 3 experts. Decision of such
panel is to be confirmed by the President of the Eurasian
Patent Office. Such decision revokes Eurasian patent for
all member states.
▐ After 6 months opposition term has expired Eurasian
patent is to be invalidated in every member states
according to it National Legislation. I.e. in Russia it can
be invalidated in the chamber for patent Disputes of the
RU PTO. Decision of each body is for each country only.
The legal consequences of successful
invalidation procedure
▐ The invalidation decision of the RU PTO (Chamber for
Patent Disputes) invalidates patent from the filing date
(i.e. retroactively) not from decision date
▐ If infringement suit based on this patent is being
considered simultaneously (in parallel)– the court case
is to be dismissed (no infringement of invalid patent can
be recognized)
▐ If infringement claim based on this patent previously has
been satisfied – the Court decision is to be reconsidered and over-ruled based on newly opened
matter (invalidation fact).
▐ The invalidation decision of RU PTO is immediately in
force even if it has been lately appealed in the court
CURRENT SYSTEM OF ARBITRATION
COURTS IN RUSSIA – system of
consideration of patent infringement cases
Supreme
Arbitration Court
(supervising)
Regional
Appeal Arbitration
Court
Arbitration Court
(first instance- 81)
(second or appeal
instance-20)
(third or cassation
instance -10)
2-6 months
2-4 months
Arbitration Court
4-12 months
Federal District
CURRENT SYSTEM OF ARBITRATION
COURTS IN RUSSIA – system of
consideration of appeal on the Chamber for
Patent Disputes Decision
Supreme
Arbitration Court
(supervising)
Moscow City
Appeal Arbitration
first instance
2-nd instance
Arbitration Court
Court for 9 Circuit
Moscow Federal
District Arbitration
Court
3-d instance
The newly adopted system of patent disputes
consideration in Russia (to be established in 2013)
Supreme
Arbitration Court
(supervising)
Chamber for
Patent Disputes
Court for Intellectual
Property
(single judge)
Presidium of
Court
for
Intellectual
Property
Invalidation of patents in Russia -statistics
▐ The annual amount of
invalidation cases considered
by the Chamber for Patent
Disputes is within:
▐ Inventions -227 in 2010,
347 in 2009 (max)
▐ Utility models- 106 in 2008,
140 in 2009 (max)
350
300
RU+EA
Invent
250
200
RU UM
150
100
EA
Admin
50
0
2010
Peculiarities of invalidation procedure –
statistics and results
▐ In average in the years of 2009-2011 about 25-30
percent of invalidation actions have been satisfied by the
Chamber for Patent Disputes (patents have been
invalidated). So the patents issued are rather stable
▐ The statistics shows that Eurasian patent in the RU PTO
can be invalidated easier than Russian invention patent
▐ The statistics shows that appeal against RU PTO decision
in the Court is successful only in about 15-20 percent
THANK YOU VERY MUCH !!!
Legal address:
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Postal address: 13 Bldg. 5 Myasnitskaya St., 101000 Moscow,
K-9 GSP-9, 101999, Russia
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