Patent Invalidation

According to Russian law, the grounds for invalidating an invention (utility model) patent in Russia include the following:

  1. Non-compliance with patentability criteria below:
    - novelty, an inventive step, and industrial applicability for an invention,
    - novelty and industrial applicability for a utility model;
  2. Insufficient disclosure;
  3. New matter in the claims;
  4. Presence of applications for identical inventions (utility models) having the same priority date;
  5. Wrong designation of the patent holder(s) or the inventor(s).

An invalidation action can be brought during the term of the patent’s validity by any person who has become aware of the above patent law violations.

Moreover, a cancellation action can also be filed after the expiration of the term of the patent by any person having legal interest in invalidating the patent.

A legal action according to item 5 above should be brought to court; in all other cases, an opposition against the patent grant is filed with the Russian PTO’s Chamber for Patent Disputes.

The Rospatent decision is appealable to the Intellectual Property Court and, further on, to the Presidium of the same Court as a cassation instance.

A Eurasian patent can be challenged in any member state in accordance with this state’s national procedure after the expiration of the 6-month period provided for filing a notice of opposition with the Eurasian Patent Office (administrative revocation of the Eurasian patent).

Sojuzpatent’s patent attorneys and litigation lawyers represent the client’s interests before the Chamber for Patent Disputes, the Eurasian Patent Office, and Russian courts, including the Intellectual Property Court and the Supreme Court of the Russian Federation.

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FAQs

Does the Russian Patent Office require metric units in patent applications?

Does the Russian Patent Office require metric units in patent applications?


Although in the RUPTO regulation there is a mention that preferably metric units should be used in Russian invention patent applications, there is no prohibition to use imperial or US customary units.


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Can an inventor file an application for an invention that was disclosed by the inventor in specialized literature earlier?

Can an inventor file an application for an invention that was disclosed by the inventor in specialized literature earlier?


There is a so-called six month novelty grace period. The disclosure of information relating to the invention by the inventor, applicant or by any person having obtained the information directly or indirectly from them (including when invention is displayed at an exhibition), as a result of which information on the subject matter of the invention has become publically available, does not destroy the novelty of the invention provided that the patent application was filed with the RUPTO within six months from the date of the information disclosure.


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Is forum shopping available in patent/trademark litigation in Russia?

For most disputes related to patent invalidation/trademark cancellation, the venue is determined directly by Russian law. It is either the Federal executive authority in the sphere of intellectual property (Rospatent, the Chamber for Patent Disputes) or the Court for Intellectual Property Rights. For the remaining invalidation/cancellation actions (a few rare types of cases) the venue is defined according to general rules depending on the defendant's address.

At the same time, in infringement lawsuits, forum shopping is possible when the claimant can name multiple persons as co-defendants (e.g. manufacturer/importer, wholesalers, and retailers). In such cases, the claimant has the option to choose with which territorial court to file their action.

Do Russian and Eurasian patent offices require annual payments for keeping patent applications in force?

Do Russian and Eurasian patent offices require annual payments for keeping patent applications in force?


No annuities are due either in the Russian Patent and Trademark Office or in the Eurasian Patent Office while the patent application is pending.

According to Russian IP law, the first accumulative annuities should be paid together with the grant and registration fee, starting from the 3rd year for Russian invention patents and from the 1st year for Russian utility model patents. The due date is counted from the date of filing the application (international filing date for PCT national phase applications).

The year from which the annuities for a Eurasian patent should be calculated depends on the national rules of each respective country and varies for different countries (1st, 2nd, or 3rd year).


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Do I have to request a foreign filing license in Russia?

Do I have to request a foreign filing license in Russia?


Although a foreign filing license as a separate notion does not exist in Russia, there is still a similar requirement.

In case the invention has been developed in the Russian Federation, the applicant is required by Russian law to file their first application in Russia (direct national filing or international application filed with the RUPTO as the International receiving office).

Any subsequent application can only be filed abroad after a six-month check performed by the Russian Patent Office. The check is meant to reveal state secrets the invention may eventually contain. Rospatent does not issue any special permission to file foreign applications (as compared to the US foreign filing license, when the US PTO issues a corresponding notification). The lapse of  said six-month term automatically allows the applicant to file subsequent applications with foreign Patent offices. The term may be reduced by filing a request explaining that the application materials do not contain state secrets. Reduction of the term lies then within Rospatent’s discretion. It may normally be reduced to 3-4 months.

If, in breach of said rule, the applicant files the patent application with a foreign Patent office, Russian law stipulates administrative liability (monetary penalties). At the same time, if, after an unauthorized foreign filing, a state secret is revealed in the invention, both the applicant and the inventor become criminally liable.

 


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