Read an article about licence agreements in Russia written by our trademark attorney Annikki Hämäläinen and patent attorney Erik Viik in the latest issue of the World Intellectual Property Review (March 2021).
Patent opposition proceedings in Russia
In Russia, third parties may dispute the validity of a granted patent by filing an opposition with the Patent Disputes Chamber, a department of the Russian patent office (Rospatent), located in Moscow. The opposition period is not limited, which means an opposition can be filed any time after a patent is granted.
The Chamber currently receives about 100 patent oppositions a year. To put this into perspective, Rospatent granted last year about 21,000 Russian patents, with about 13,200 patent grants to foreign applicants. The opposition can be filed in the name of a Russian patent attorney, and the interested party doesn’t need to be disclosed at any point. The opposition fee is reasonable, around 100 euros for each opposed independent claim.
After the opposition is received and docketed, the Chamber notifies the patent holder by sending a letter with a copy of the opposition to the patent holder. The documents are sent by mail to the address registered in Rospatent’s database – a good reason for patent owners to timely register any name or address changes with the office! The Chamber may send a brief notification to the patent attorney who was responsible for prosecuting the application, but no copy of the opposition or the annexes will be attached.
An opposition can be filed on the following grounds:
• The patent’s subject matter is not new, inventive or industrially applicable;
• The patent’s subject matter extends beyond the content of the application as filed; or
• The patent’s subject matter is not patentable under the applicable laws.
Patents filed after 1 October 2014 can also be opposed based on insufficient disclosure, which means that the invention has not been described in sufficient detail for a skilled person to carry it out. An opposition could also be filed on the grounds of incorrect inventor or patent owner, in which case it should be addressed directly to the Russian IP Court, not the Chamber.
After receiving the opposition, the Chamber will set the date for the first hearing, which is usually scheduled within two or three months. The patent owner may request postponement of the first hearing in order to have reasonable time to translate the opposition from Russian, prepare a response, and possibly amend claims.
In my opinion it is strange that it is not possible to request or obtain the postponement in advance, but this has to be done at the hearing. What it practically means is that the patent owner’s representative must be present at the first hearing and be prepared for the proceedings anyway, in case for some reason the postponement is not granted and the parties will be heard at the first hearing already.
The patent owner’s representative must have a power of attorney signed by the patent owner to be able to represent them in the proceedings. As Russian officials take formalities quite seriously, the Chamber is no exception. The power of attorney submitted to the Chamber must be original, not electronically filed or a printed copy.
At the end of the hearings, the Chamber issues its decision, which will come into force after it is verified and approved by the head of the Chamber. Based on the decision the patent will be kept in force without amendments, kept in force in amended form, or invalidated altogether. The full text of the decision and the reasoning behind it are usually issued within two or three months of the hearings. Typically, the whole process takes between seven and ten months, depending on the length of postponements.
Things to consider for the opponent
One important detail of the Russian opposition process is that the patent owner is allowed to restrict the scope of the independent claims only by adding features from the other claims. In other words, if a feature is disclosed only in the description but not in the claims, it cannot be added to the claims.
Another peculiarity, compared to the EPO, for instance, is that patent owners are not allowed to file multiple claim proposals (auxiliary requests) at the hearings. The opponent should also bear in mind that it is not allowed to submit additional prior art references during the proceedings – all the relevant prior art should be cited in the initially submitted opposition.
The decision comes into force immediately after it has been approved by the head of the Chamber, even if an appeal is filed to the Court. If the patent is invalidated, it is considered invalid retroactively from the filing date, not from the decision date.
The decision can be appealed to the IP Court within three months of the receipt of the full text of the decision. The information concerning the appeal will be available on the website of Russia’s state commercial courts within a couple of days of the appeal being filed. However, the content or copy of the appeal will not be publicly available on the website; instead, a copy will be mailed directly to the patent owner.
Are you considering invalidating a Russian patent? Our attorneys at Papula-Nevinpat are experienced specialists in Russian IP issues. We have a deep understanding of the Russian processes, and have successfully prosecuted several oppositions in Russia.