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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Disputes on patent validity in Russia
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FAQs

I own a valid Russian patent. What happens if it turns out that somebody has used my invention before my filing the application?

I own a valid Russian patent. What happens if it turns out that somebody has used my invention before my filing the application?


According to Article 1361 of the Russian Civil Code, the person who has in good faith used a solution identical to the patented invention before its priority date, retains the right to use the same solution without increasing the scope of its use (the right of prior use). Therefore, the patent holder is entitled to request from the said person that the volume of use not be increased.

It is important to note that if the other party is able to prove that prior use de facto represented public prior use/open use (which means, in general terms, that the solution has been disclosed to the public in sufficient details), there is a threat of the patent’s invalidation on the grounds of lack of novelty.


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How can I transfer the Russian part of an international patent application (PCT) and of a Eurasian patent (application)?

How can I transfer the Russian part of an international patent application (PCT) and of a Eurasian patent (application)?


The Russian part of a PCT application (as any Russian patent or patent application) can be transferred/assigned to another party on the base of an agreement between the parties (the recordation of the transfer of rights under a Russian patent takes about two months within the RUPTO plus preparation work).

A transfer/assignment of a Eurasian patent (patent application) can only take place with regard to all the contracting states (Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, Turkmenistan). Therefore, if the patent holder intends to transfer their patent rights with regard to Russia only, they will be unable to do so as long as the Eurasian patent is maintained in force in other countries.  (And even if the patent holder has recently stopped paying annuities for some countries, the 3-year reinstatement right would be transferred together with the Eurasian patent).


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What are the consequences of failure to work a patent in Russia?

What are the consequences of failure to work a patent in Russia?


In Russia, no requirement is set for obligatory use of a granted patent; therefore, non-use of a patent does not endanger the patent holder’s exclusive right.

However, there is a provision in the Civil Code aimed at preventing a situation when failure to use a patent entails a shortage of some important products on the market.

In case an invention is not worked during four years after the grant, and if this affects the supply of a product or service, a court can obligate the patent owner to issue a compulsory license to the plaintiff. The price for the compulsory license is to be set in accordance with market conditions.

Any person is entitled to file a lawsuit requesting a compulsory license in case they have approached the patent holder and have been refused a license.


How can I invalidate a Eurasian patent?

How can I invalidate a Eurasian patent?


Within 6 months of the publication of the mention of the grant of a Eurasian patent, any person (non-residents of any contracting state – through a registered Eurasian patent attorney) can file an opposition against the grant of the Eurasian patent to the Eurasian Patent Office. After the 6-month period has expired, the Eurasian patent can be invalidated separately in each of the contracting states according to the national procedures. In Russia, for example, the nullity action, in most cases, should be filed with the Russian PTO, the decision of which is appealable to the Court for Intellectual Property Rights.


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What is the deadline for filing a divisional application in Ukraine?

Unlike Russian or Eurasian patent rules (under which a divisional application can be filed before the patent registration or before the lapse of the period allowed for challenging the refusal decision), Ukrainian legislation allows filing a divisional application only before the decision on the initial application is issued (decision of grant or refusal). This limitation is often a stumbling point for applicants familiar with Russian and Eurasian patent regulations.

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