Supreme Court of the Russian Federation restores established practice on divisional patent applications

A recent ruling by the Supreme Court of the Russian Federation overturns the controversial decisions of the IP Court Presidium. It reinstates the earlier practice of establishing the same priority date for divisional patent applications beyond the first generation.

Background of the case

In Russia, the established practice was that all divisional applications inherited the priority date of their initial (first filed) application, regardless of when they were filed. However, in October 2023, the IP Court Presidium issued two rulings (СИП-552/2022, 23 October 2023 and СИП-570/2022, 6 October 2023) that changed this practice and altered the priority date rules for divisional applications of the second and subsequent generation.

According to the Presidium, to maintain the initial priority date, subsequent divisional applications should be filed before the initial patent grant or the appeal deadline for a rejection. The ruling jeopardized the validity of patents based on the second and subsequent generation divisional applications filed after the grant of the initial patent.

Supreme Court’s ruling

On 4 June 2024, The Supreme Court of the Russian Federation ruled overturning the IP Court Presidium’s rulings. After considering appeals from AstraZeneca AB and the Russian Patent Office filed in December 2023, it restored the original practice. The Supreme Court argued that all divisional applications should have the same priority date as their parent application since a single invention links them. In the ruling, the Supreme Court argued:

“Since divisional applications are linked by a single (parent) application, they will always have the same priority date, and a divisional application filed on the basis of an earlier divisional application will retain the priority of the earliest application.

Under a different interpretation, subsequent divisional applications would be practically impossible to file because they would not meet the patentability requirement of “novelty” in relation to the earliest application, since the earliest application would prevent the grant of a patent on the subsequent divisional applications”.

Implications for patent applicants

Under the Supreme Court’s ruling, all divisional applications will be considered according to the original, longstanding practice allowing all divisional applications to inherit the priority date of their initial (first filed) application. The Supreme Court’s ruling provides more certainty and flexibility for filing divisional applications in Russia.

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