MIKHAILYUK SOROKOLAT & PARTNERS

Patent and Trademark Attorneys

PATENT ENFORCEMENT PROCEEDINGS

Patent in Russia | Frequently Asked Questions
1.  Lawsuits and courts
2.  Trial format and timing
3.  Proof requirements
4.  Standing to sue
5.  Inducement, and contributory and multiple party infringement
6.  Joinder of multiple defendants
7.  Infringement by foreign activities
8.  Infringement by equivalents
9.  Discovery of evidence
10. Litigation timetable
11. Litigation costs
12. Court appeals
13. Competition considerations
14. Alternative dispute resolution




What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Protection against patent infringement can be implemented by legal actions in the frame of civil, administrative or criminal proceedings.

According to the Civil Code any interested person may apply to the arbitration (commercial) court for the protection of its violated patent right.

The administrative or criminal action with the law enforcement agencies may be initiated on the basis of the Code of Administrative Offences and the Criminal Code.

The Criminal Code provides that violation of patent rights may be considered as a crime. The illegal usage of the invention, utility model or industrial design, the disclosure of the essence of an invention, utility model, or industrial design without the consent of its author or applicant and before the official publication or the illegal acquisition of authorship may be the grounds for the implementation of the criminal responsibility.

In February 2013, the specialised Court for Intellectual Property Rights was created in the Russian Federation. It is embedded in the system of commercial (arbitrage) courts and considers the disputes concerning intellectual property rights regarding:

  • the challenging of the regulations of the federal bodies in regard to intellectual property;
  • the termination of the legal protection of intellectual property objects;
  • the challenging of the non-normative legal acts, decisions and actions (omissions) of the Russian Patent and Trademark Office;
  • the establishment of the patent owner;
  • the invalidation of invention, utility model and industrial design patents issued in violation of right of authorship;
  • intellectual property rights infringement cases (as cassation instance).

Patent invalidation cases are also considered by the Board of Patent Disputes, which is a subdivision of the Patent and Trademark Office. Its decisions can be appealed to the Court for Intellectual Property Rights.

The decisions of the specialised Court for Intellectual Property Rights take effect from the date of their rendering and there is no appeal stage. Nevertheless parties to the proceedings have the possibility of challenging decisions by filing cassation claims to the presidium of the said court.

The specialised Court for Intellectual Property Rights also acts as the court of cassation instance for the decisions adjudicated by the arbitration courts of the regions of the Russian Federation in the first instance and by the arbitration appeal courts regarding the protection of intellectual property rights.

The Court for Intellectual Property Rights combines the authorities of the courts of the first and cassation instances to increase the quality level of Intellectual Property disputes consideration.





What is the format of a patent infringement trial?

Under the general principles of the legislation of the Russian Federation, the burden of proof lies on the person bringing an action. Thus a plaintiff in patent litigation is obliged by the law to prove the existence of the infringement. In this respect, the court does not regulate the manner in which an infringement is to be proven. Under the legislation of the Russian Federation the following is accepted as evidence:

  • depositions;
  • public documents;
  • private documents;
  • expert testimony;
  • judicial audit or inspection;
  • witnesses; and
  • photographs, writs and stenographic notes, and in general all other data resulting from scientific researches.

The legislation of the Russian Federation permits live testimony of witnesses. Also, an expert testimony can be filed as documentary evidences or as an on-trial report.

The consideration in the court is conducted by the judge. The jury participation in patent infringement actions is not stipulated.

The trial in the court of the first instance lasts approximately from 6 to 12 months, but this period may be extended due to the presence of various factors, such as the period of examination (if any).





What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

Each person participating in the case is obliged to prove the circumstances used as the grounds for claims or objections. Absence of guilt in an infringement case should be substantiated by the infringer.

Each person participating in the case must provide the evidence used in substantiation of the claims and objections to other parties participating in the case before the court session or within the term fixed by the court.





Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

Any patentee or exclusive licensee has the right to file a suit against a third party infringing his or her rights. An accused infringer may bring a lawsuit to obtain a judicial ruling or declaration on the accusation in some cases (eg, against the actions of the patent holder regarding spreading unsubstantiated information about the infringement), however, the practice of such cases is very limited.





To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

According to the Civil Code the extent of legal protection of the invention or utility model patent is determined by a set of claims. The patent infringement takes place in the case of the violation of the entirety of the claims.

The Russian legislation does not stipulate special liability for contributory or multiple party infringement. Still, in the case of multiple party infringement, all the infringers (producers, distributors, etc) may be sued jointly or individually with individual responsibility implemented for each of the infringers. If each party only practices the usage of part of the set of claims no patent infringement will be established. The parties of the multiple infringement will not be jointly or individually liable if their actions do not cover all the set of claims of the patent.





Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements (eg, the defendants are making, using or selling substantially similar methods or products, the defendants have some corporate or commercial relationship to the accused methods or products)? Must all of the defendants be accused of infringing the same patents?

A claim may be filed to the commercial court jointly against several defendants (joinder of the parties).

The joinder of parties is allowed if:

  • the subject matter of the dispute comprises the common rights and duties of several defendants;
  • the rights or duties of several defendants have the same ground;
  • the subject matter of the dispute comprises homogeneous rights and duties.

In proceedings, each of the defendants acts independently towards the plaintiff. Participants of a joinder of parties may entrust one or several participants of the joinder to conduct the case.

If there is involvement of another co-defendant in the case the case should be reconsidered.





To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Activities that take place abroad cannot support a patent infringement action in the Russian Federation.





To what extent are ‘equivalents' of the claimed subject matter liable for infringement?

According to Article 1358 of the Civil Code of the Russian Federation, exclusive right to use an invention, utility model, or industrial design by any means not contrary to the law belongs to the patent holder.

An invention shall be deemed as being used in a product or a process if the product contains, or the process involves, each feature of the invention stated in an independent claim contained in the patent claims of the invention or a feature equivalent thereto that has become known as such in this art prior to the priority date of the invention. A utility model shall be deemed as being used in a product if the product contains each feature of the utility model stated in an independent claim contained in the patent claims of the utility model.

With respect to determination of a scope of rights arising from a patent, equivalence is a recognition that at least one of the technical means or features used to solve a technical problem can be replaced by other means or a feature.

Solutions (features) are considered equivalent if they are characterised by the same technical function, with the same way of achieving the technical effect and if a possibility of a replacement is known prior to use in the patented object. However, it should be noted that if a feature is not known as an equivalent before the date of its use in the subject containing the patented invention, the patent should not be considered used.

In view of this, constancy of the subject matter, achievement of the same technical effect and anticipation of equivalency of a solution (feature) prior to use thereof in the patented subject are those criteria that define the extent of equivalents in determining whether the use of such equivalents can be considered as infringement.





What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

A plaintiff must provide the court with all available evidence to substantiate his or her demands. Evidence for a lawsuit should be collected by a claimant on its own. Evidence that cannot be obtained by the plaintiff may be vindicated by the demands of the court in the frame of the court proceedings.





What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Typically the term for the consideration in the court of the first instance is about 6 to 12 months depending on the course of the proceedings. The consideration of the case in the appeal court may take another three to five months, or even longer.





What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal?

The costs of a patent litigation infringement lawsuit mainly include court fees, attorneys fees and experts fees.

Litigation costs may vary depending a number of factors (the essence and the level of complexity of the case, the position of the parties, etc) and may range from about e8,000 to e15,000 for the trial of the first instance.





What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

According to the current procedure parties in the case (including the third parties involved in the proceeding) have the right to dispute a decision of the court of the first instance that is not entered into force in the appeal instance. An appeal may be filed within one month from the date of the full text of the disputed decision being issued. The appeal may not contain new claims that were not considered in the first instance.

From the results of the consideration the appeal court is entitled to:

  • leave the decision of the court of the first instance without amendment and the appeal without satisfaction;
  • reverse or amend the decision of the court of the first instance fully or in part and to issue a new judicial action on the case;
  • reverse the decision fully or in part and to terminate proceedings in the case, or to leave the statement of claim without full or part consideration.

Cassation claims on the decisions of the arbitration courts can be filed to the Court for Intellectual Property Rights within two months from the date of entry of the appealed decision into force.





To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

As a general rule, the patent owner has the right to use a patent in any legitimate manner, in particular through permitting or prohibiting the usage to other persons. The enforcement of a state-given right is presumed as not constituting a violation.

Nevertheless, the patent holder actions concerning unfair commercial competition in using or enforcement of the patent may be considered as an infringement by the Anti-monopoly Service of the Russian Federation.





To what extent are alternative dispute resolution techniques available to resolve patent disputes?

In spite of the fact that Russian legislation stipulates some alternative dispute resolution techniques, such as mediation procedure and an arbitration tribunal, they are not popular in patent disputes. At the same time, there are no provisions requiring the mandatory use of an alternative dispute resolution method or pre-trial actions concerning the patent dispute settlement before bringing a patent infringement action.


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