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.

Featured specialist

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

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 

Are software methods patentable in Russia?

Are software methods patentable in Russia?


Computer programs (software) are not considered inventions per se, but a software algorithm may under certain conditions be patented in the form of a method (method of processing, transmitting, converting data, etc.). Under Russian legislation, a patentable method consists in carrying out actions over material objects with the help of material means. An application for the grant of an invention patent may relate to an algorithm of a computer program described in the form of a sequence of actions on signals (material objects) providing a technical result achieved by means of a computer device (material means). In such cases, there are grounds for recognizing the claimed object as a technical solution having a technical result.


Get a Quote for a patent Application

What is the time limit for entering the national phase in Russia and neighboring countries?

What is the time limit for entering the national phase in Russia and neighboring  countries?


The time limit for entering the national phase in Russia is 31 months from the priority date (the earliest priority date if several priorities are claimed), and, if no priority is claimed, 31 months from the filing date of the international application.

The time limit for other post-Soviet countries are as follows:

Country

Time limit in months

As designated office

As elected office

Armenia,

31

31

Azerbaijan

30

31

Belarus

31

31

Estonia

31

31

Georgia

31

31

Kazakhstan

31

31

Kyrgyzstan

31

31

Latvia

There is no national phase, the application should enter the regional phase before EPO

Lithuania

There is no national phase, the application should enter the regional phase before EPO

Moldova

31

31

Tajikistan

30

31

Turkmenistan

30

31

Ukraine

31

31

Uzbekistan

31

31


  Get a Quote for a patent Application

What happens if the applicant does not meet the time limit for entering the national phase in Russia?

What happens if the applicant does not meet the time limit for entering the national phase in Russia?

The rights of the applicant with respect to an international application in Russia can be reinstated within 12 months upon the applicant’s request. The request should state the reasons for not meeting the time limit. The official fee charged for reinstatement amounts to 5,000 RUB.

Get a Quote for a patent Application

At which stage can a Russian invention patent application (PCT national phase) be converted into a utility model application?

At which stage can a Russian invention patent application (PCT national phase) be converted into a utility model application?


An invention patent application (including a PCT national phase) can be converted into a utility model application:

  •          before the publication of the application or issuing a decision of grant, whichever comes first;
  •          within 7 months of the refusal (or of the dispatch by Rospatent of the cited documents requested by the applicant within 3 months of the refusal).

After the grant, the conversion of an invention patent into a utility model patent can be used as a defense strategy during an invalidation proceeding in the RUPTO’s Chamber for Patent Disputes.

It is important that the claimed technical solution be related to a device.


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.