Amending claims during opposition proceedings in Russia – IP Court’s decision

22.6.2016

In a recent decision СИП-32/2015 the Presidium of the IP Court withheld earlier decisions of the IP Court and the Chamber of Patent Disputes to revoke Russian patent 2222332 in full due to lack of novelty. What makes this case particularly interesting is the decision not to allow the patentee AstraZeneca AB to amend independent claim 1 during the opposition proceedings by introducing new features from the description.

Dependent claims can provide invaluable fallback, not only during substantive examination of a patent application, but also during an opposition of a granted patent. The Russian patent legislation limits the applicant’s possibilities to voluntarily amend the claims after an acceptance decision has been issued. The examination procedure closes after the issuance of the acceptance decision, and the applicant is allowed to correct only obvious or typographical mistakes and delete some of the claims. There is no procedure for voluntarily narrowing the scope of the claims after grant. Making voluntary amendments is allowed only during the substantive examination phase and only once. However, during opposition proceedings the patentee is allowed to amend the claims in order to respond to the opponent’s objections.

Introduction of new features based on the description not allowed

A granted Russian patent can be opposed by a third party by filing an opposition with the Chamber of Patent Disputes, which can be done any time during the life of the patent. During the opposition proceedings the claims can be amended only by incorporating features from dependent claims. In practice, introduction of new features solely based on the description is not allowed. This procedural peculiarity may come as a surprise to some of the applicants who may expect that any new features could be added to the claims, as long as they have support in the application as filed.

Case AstraZeneca

The opposition against AstraZeneca’s patent was filed already on 28 August 2013. After reviewing the arguments filed by the opposing party and the patentee’s response, the Chamber found that granted claim 1 was not novel over the prior art cited during the examination, and the patent was revoked in full on 28 October 2014. The amended claims proposed by the patentee to the Chamber during the proceedings were not accepted because they contained features disclosed solely in the description. According to the Chamber, the addition of new features from the description to the granted independent claims contradicts the Russian Patent Regulations and Rules for filing and reviewing appeals and oppositions, as it leads to a completely new set of claims which has not been examined during the substantive examination phase. The Chamber pointed out that such claim amendments are only allowed during the examination phase.

The patentee appealed the Chamber’s decision to the IP Court, where a panel of three judges specializing in intellectual property reviewed the procedural and normative aspects of the decision and kept it in force on 26 June 2015. Within the two-month appeal period, the patentee filed an appeal to the Presidium of the IP Court – a higher instance reviewing the decisions issued by the IP Court. However, the five-member panel of the Presidium, including the head of the IP Court Mrs. Lyudmila Novoselova, did not change the decisions of the previous instances. In the final decision issued on 30 November 2015 it was explicitly stated that amending the claims after patent grant by incorporating new features from the description is not allowed. This is because it leads to a patent that would comprise claims not having been examined during the examination phase, thus having a new scope of protection, which could affect the interests of 3rd parties.

In the opposition proceedings, the independent claims of a Russian patent can be amended by incorporating features only from the granted dependent claims. We would recommend that every important aspect and embodiment of the invention, which are not claimed in the dependent claims as filed, should be covered by making voluntary amendments during the examination phase and by adding new dependent claims. This will provide valuable fallback for possible opposition proceedings.

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