Russian IP Court decision overturns longstanding practice for granting divisional patent applications

14.11.2023

Update 5 December 2023: AstraZeneca has filed an appeal against the Presidium’s decision with the Russian Supreme Court on 1 December 2023. The Russian Patent Office, whose decision to grant the patent was questioned by the Presidium, filed its appeal against the Presidium’s decision on 4 December 2023. If the Supreme Court accepts the appeals for consideration, it will take about 3 to 4 months for the final decision to be issued. However, if the Supreme Court does not accept the appeals for further review, the final decision will be published within one or two months.

A ground-breaking decision by the Presidium of the Russian IP Court changes the way priority is established for divisional patent applications of the second and subsequent generations. This now opens the way for patents based on such divisional applications to be invalidated.

On 6 October 2023, the Presidium of the Russian IP Court issued a ruling that – unless overturned by the Supreme Court of Russia – changes the way priority is established for the second and subsequent generations of divisional applications.

Under the new ruling, in order to inherit the priority date of an initial application, all subsequent divisional applications should be filed before the patent is granted on the initial application, or before the time period for appealing a rejection decision expires.

This change of practice now jeopardizes the validity of patents already granted on divisional applications filed after a patent was granted on a corresponding initial application. Such patents can now be invalidated on the grounds of lack of novelty.

As the Presidium’s decision only mentions division on the initiative of the applicant, it remains to be seen whether the new interpretation will also apply to divisional applications divided due to a unity objection from a patent examiner.

The background to the ruling

The ruling stems from a patent revocation request filed on 22 September 2021.

On that date, Slovenian generic-pharmaceutical company Krka filed revocation proceedings in Russia against AstraZeneca patent RU 2643764. Krka’s request claimed the invention not to be novel, as the priority had not been correctly established and thus not all relevant prior art references had been considered during the patent examination.

AstraZeneca Patent RU 2643764 had been granted on a second-generation divisional application filed with the Russian Patent Office when the first-generation divisional application (RU 2008122558) was still pending. The corresponding initial application (RU 2004137489) had already been accepted and the patent had been issued.

Russian Civil Code Article 1381(4) states that in order to inherit the priority of an initial application, a divisional application should be filed before the patent is registered on that initial application. In a case where the initial application is rejected, then the divisional application should be filed before the time to appeal this rejection decision expires.

Under the previous practise, the Russian Patent Office considered that each divisional application shall benefit from the priority claimed by the initial application. This meant that the second and subsequent generation divisional applications inherited the priority date of the initial application.

As the national filing date of disputed patent RU 2643764 was before the grant date of the corresponding first-generation divisional application (RU 2008122558), the Chamber did not satisfy the revocation request and issued a decision on 30 April 2022 to keep the patent in force.

Krka appealed this decision in the Russian IP Court, but that appeal was not satisfied either. The Court agreed with the Chamber’s earlier interpretation that the “initial application” mentioned in Article 1381(4) could also be a divisional application. The Russian IP Court confirmed that the priority claim of the second-generation divisional application was valid, as long as that application was filed before a patent was granted on the corresponding first-generation divisional application.

The Presidium steps in

 Unsatisfied with the IP Court’s decision, Krka then filed a cassation appeal with the Presidium of the IP Court. The Presidium proceeded to overturn the earlier decisions, concluding that the Patent Office’s interpretation of the term “initial application” was flawed.

According to the Presidium’s decision, a divisional application could not be regarded as an initial application, meaning that to inherit the priority of the initial application, any divisional applications should be filed before the patent is registered on the initial application.

The Presidium emphasized that it is permissible to file divisional applications of second and subsequent generations after the patent is granted on the initial application, but that such divisional applications will not benefit from the priority date of the initial application.

Based on this reasoning, the Presidium ruled that initial application should have been considered as prior art when assessing the novelty and inventive step of the second generation divisional. The Presidium thus obliged the Chamber of Patent Disputes to reconsider the revocation request taking into consideration this conclusion concerning the validity of priority.

Conclusion and implications

What sets this decision apart is that it does not introduce a new law with a transitional phase; instead, it redefines the interpretation of current legislation, thereby rendering certain patents retroactively invalid. Hundreds of existing patents could be affected, but the onus for seeking to invalidate them rests on third parties willing to invest the required time and effort.

It’s important to note that the ruling does not compromise the functionality of Russia’s patent system. Prosecution and examination of new patent applications will be carried out as usual.

For additional information or if you have any questions, please feel free to contact patent attorney Erik Viik.

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