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;
  1. Insufficient disclosure;
  2. New matter in the claims;
  3. Presence of applications for identical inventions (utility models) having the same priority date;
  4. 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.

Disputes on patent validity in Russia
Your name *
Company name
Your phone
Email *
Comment
Upload File(s)
Avaiable file types: doc, docx, odt, xls, xlsx, ods, pdf and images. Not greater than 2Mb.

DO YOU HAVE ANY QUESTIONS? ASK OUR EXPERT!

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.


Get a Quote for a patent Application

Can inequitable conduct be a valid defense argument in a patent infringement case in Russia?

Can inequitable conduct be a valid defense argument in a patent infringement case in Russia?


Patent infringement litigation and invalidation proceedings in Russia are totally bifurcated and therefore, if an infringement action is initiated, invalidity arguments are not considered in the proceedings and cannot be asserted as a defense in patent infringement cases.

Moreover, currently the courts do not normally suspend infringement litigation if an invalidation action is filed with the RUPTO after the infringement suit has been brought.

As to invalidation proceedings, there is no such grounds for invalidity as inequitable conduct. The applicant does not face any repercussions in terms of patent validity for not disclosing any information known to them that would contradict patentability of the invention.


Get a Quote 

What are possible ways of accelerating prosecution of patent applications in the Eurasian Patent Office?

What are possible ways of accelerating prosecution of patent applications in the Eurasian Patent Office?


There are three different ways of accelerating prosecution of patent applications in Eurasian Patent Office:

  1. PPH pilot programs between EAPO and EPO, between EAPO and the Patent Offices of Japan and China have been launched. A PPH pilot program with the Korean Intellectual Property Office of the Republic of Korea (KIPO) started in 2019.
  2. In addition to the signed PPH programs, the Eurasian Patent Office adopted a Pilot Program of accelerated processing of PCT regional phase applications. On the applicant’s request, the substantive examination of the application shall take into consideration work products of the international phase prepared by several major Patent Offices including some of those with which EAPO does not have PPH programs. EAPO shall issue the first office action or allowance/rejection decision within 3 months from the acceptance of the request.
  3. Accelerated prosecution of Eurasian patent applications is available to applicants for an additional fee. The formal examination can be completed in 5-10 days. In case accelerated substantive examination is requested, the Eurasian patent office undertakes to dispatch the first official communication within 3 months from the acceptance of the request.

Get a Quote for a Eurasian Application

What is the deadline for filing a divisional application in the Russian and Eurasian Patent Offices?

What is the deadline for filing a divisional application in the Russian and Eurasian Patent Offices?


A divisional application can be filed with the Russian PTO:

  • at any time during the prosecution and, if the patent is granted, before the date of the registration of the patent;
  • in case of refusal, during the statutory time period allowed for challenging the decision of refusal, i.e.:
    • 7 months from the date of the dispatch of the decision of refusal or
    • 7 months from the date of the dispatch of the cited references provided that they have been requested within three months from the dispatch of the decision of refusal.

A divisional application can be filed with the EAPO:

  • at any time during the prosecution and, if the patent is granted, before the date of the registration of the Eurasian patent;
  • in case of refusal, during the time period allowed for challenging the decision of refusal, that is within three months of the date of receipt by the applicant of the notification of refusal.

Get a Quote for a patent Application

Can one and the same person hold Russian and Eurasian patents based on the same priority application?

Can one and the same person hold Russian and Eurasian patents based on the same priority application?


Yes, Russian and Eurasian patents based on the same priority application may coexist with slightly different or even identical sets of claims. However, it is important to note that a Eurasian patent covers eight countries, including the Russian Federation (in case of timely payment of patent annuities in the relevant countries). That is why obtaining both Russian and Eurasian patents based on the same priority application is usually redundant and it entails additional rightholder expenses connected with filing, prosecution and then maintaining the patent in force. However, this may prove practical for specifically important inventions in respect of which the risk of opposition is very high.


Get a Quote for a patent Application

A few of OUR advantages
  • We have nearly a century’s experience,

    guaranteeing you the highest quality service.

  • We have ample specialists in all areas of science and technology,

    allowing us to resolve even your most complex challenges.

  • Our patent attorneys and litigation lawyers work in tandem

    to provide you with the best-quality patents and to represent you successfully both in legal and in administrative disputes.

  • We provide an electronic interface to the patent offices

    with fully automated workflow to eliminate multiple data entry and avoid errors.

  • Proximity to the customer, both geographic and electronic.

    We have offices in the center of Moscow and in other major Russian cities. You can also access us remotely from anyplace in the world.

  • International IP publications rate us among the most prestigious world leaders

    in the area of Intellectual Property.

  • Transparent reporting and detailed invoicing

    provide you with complete information on our services.

  • Our professional liability is insured

    by one of the world’s leading insurance companies.