MIKHAILYUK SOROKOLAT & PARTNERS

Patent and Trademark Attorneys

DEFENCES

Patent in Russia | Frequently Asked Questions

1.  Patent invalidity
2.  Absolute novelty requirement
3.  Obviousness or inventiveness test
4.  Patent unenforceability
5.  Prior user defence




How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in which to do this?

According to the Civil Code of the Russian Federation the validity of a patent may be challenged on the following grounds:

1) failure to correspond to the criteria of patentability (novelty, inventive level or industrial applicability) stipulated by the legislation;
2) failure to disclose the character of the invention in the initially filed application materials at a level that would allow any expert in a corresponding field of invention to replicate it;
3) essential features in the claims of the granted patent were absent in the description or claims of the application at the filing date;
4) grant of a patent in the presence of the several applications for an identical invention with the same date of priority;
5) grant of a patent with the wrong declaration of the inventor or patent owner.

Patent invalidation disputes based on the grounds 1-4 mentioned above are considered by the Board of the Patent Disputes. Decisions of the Board regarding such cases can be appealed to the Court for Intellectual Property Rights. Patent invalidation disputes related to the wrong declaration of the inventor or patent owner are considered by the Court for Intellectual Property Rights directly.





Is there an 'absolute novelty' requirement for patentability, and if so, are there any exceptions?

An invention shall be considered to be novel if it does not form part of the state of the art. The state of the art shall include any information published anywhere in the world and made available to the public before the priority date of the invention. The exception to absolute novelty requirements is a disclosure of information relating to an invention by the author of the invention, applicant or other person having received this information directly or indirectly from them and who made public information on the fundamentals of the invention within a six month period before filing the application to the Russian Patent Office.





What is the legal standard for determining whether a patent is 'obvious' or 'inventive' in view of the prior art?

An invention shall involve an inventive step, if having regard to the state of the art, it is not obvious to a person skilled in the art. According to the Russian administrative regulations, checking the inventive step may be conducted in the following ways:

  • identifying features described in an independent claim of the claimed invention that are different from the features of the closest analogue (distinguishing features);
  • identifying solutions from the prior art with features corresponding to the distinctive features of the claimed invention;
  • analysing the prior art in order to confirm known effects of features that coincide with the distinctive features of the claimed invention leading to the technical result indicated by the applicant.

The invention is recognised as not being obvious to a person skilled in the art if, in the course of the above-indicated checks, no solutions with features coinciding with the distinctive features of the claimed invention have been identified or such solutions have been identified, but known effects of these distinctive features leading to the technical result indicated by the applicant have not been confirmed.





Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?

According to Article 1362 of the Civil Code of the Russian Federation, if a patent holder cannot use an invention to which he or she has the exclusive right without thereby infringing the rights of a holder of another patent (the first patent) who has refused to conclude a licence contract on terms corresponding to common practice, the patent holder shall have the right to initiate court action against the holder of the patent (the second patent) for the granting of a compulsory simple (non-exclusive) licence of the invention of the holder of the first patent for use within the territory of the Russian Federation.





Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?

Any person who was using the patented method or device in good faith within the territory of Russia before the priority date shall have the right to proceed with the usage on a non-repayable basis provided that the scope of the usage is not extended. The same applies for the person who started the necessary preparations for such usage. Such defence covers commercial use of all types of inventions.


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