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.

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FAQs

Do foreign applicants need a Russian or Eurasian attorney?

Do foreign applicants need a Russian or Eurasian attorney?


It is mandatory according to Russian legislation that foreign applicants be represented before Rospatent (RUPTO) by a Russian patent attorney who is listed in the Russian Register of Patent Attorneys.

Similarly, for prosecution of a Eurasian patent application, applicants having no residence or principal place of business in the territory of any State party to the Eurasian Convention are required to be represented by a registered Eurasian patent attorney.

To be successfully guided through the intricacies of national and regional regulation and to ensure the widest possible scope of protection, it is important for the applicant to retain an experienced patent attorney skilled in the specific technical field.


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Which countries are covered by a Eurasian patent?

Which countries are covered by a Eurasian patent?


Currently: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and Turkmenistan are members of the Eurasian Patent Convention. Moldova left the Convention on February 27, 2012, but the patents registered on the basis of applications filed before that date, are valid.



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Do I have any protection after publication of a Russian patent application and before the grant of the patent?

Do I have any protection after publication of a Russian patent application and before the grant of the patent?


As in most patent jurisdictions, an applicant receives in Russia provisional legal protection of his or her rights during the period between the publication of the patent application and the publication of the granted patent (Article 1392 of the Russian Civil Code).

Any third party having used the invention during the said period shall pay to the patent holder a reasonable compensation. If the parties do not agree about the amount of the compensation, the same should be defined by the court. It is important to understand that the right holder can bring a legal action against such a third party only after the registration and publication of the patent.


Can the applicant file voluntary amendments during the processing of a Russian invention patent application?

Can the applicant file voluntary amendments during the processing of a Russian invention patent application?


It goes without saying that an applicant can file amendments to the application in response to an office action. In addition, he or she has an opportunity to file voluntary amendments (irrespective of received office actions) once, at any time after receiving the search report.


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What is the time limit for entering the Eurasian regional phase? Can this term be reinstated?

What is the time limit for entering the Eurasian regional phase? Can this term be reinstated?


The time limit for entering the regional phase before the Eurasian Patent Office is 31 months from the priority date or the earliest priority date of several claimed priorities; if no priority is claimed, the time limit is 31 months from the filing date of the international application. The said time limits can be reinstated within 12 months on the applicant’s request in case the Patent office acknowledges the validity of the reason for the delay. The official fee for the reinstatement amounts to 25,000 RUR.


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