MIKHAILYUK SOROKOLAT & PARTNERS

Patent and Trademark Attorneys

REMEDIES

Patent in Russia | Frequently Asked Questions
1.  Monetary remedies for infringement
2.  Injunctions against infringementt
3.  Banning importation of infringing products
4.  Attorneys' fees
5.  Wilful infringement
6.  Time limits for lawsuits
6.  Patent marking




What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards tend to be nominal, provide fair compensation or be punitive in nature?

The general rule of Russian civil law is that the damages for infringement tend to provide fair compensation but do not have a punitive nature.

The right holder shall have the right for claiming the losses for each case of unlawful use of the patent. According to the article 15 of the Civil Code of the Russian Federation, the losses shall be understood to mean the expenses, which the person, whose right has been violated, made or will have to make to restore the violated right, the loss or the damage done to his or her property (the compensatory damage) and also the profits, not received, which this person would have derived under the ordinary conditions of the civil turnover, if his or her right were not violated (the missed profit).

The amount of the losses should be proved and this is accrued from the date on which the infringement existence is proven.

Alternatively instead of recovering the losses the rightholder may request the collecting of compensation from the infringer in the amount of:

- 10 000 to 50 000 000 RUB (exact amount is determined at the discretion of the court based on severity of the infringement);
- twice the amount of the usual cost of the lawful use of the invention.

In this case the rightholder should prove the fact of the infringement and is not obliged to substantiate the amount of losses inflicted by the infringement.

In the frame of the administrative proceeding, several sanctions of a material character may be imposed on the infringer (fine, equipment seizure, etc). The patent holder may also bring an additional claim for losses.





To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer's suppliers or customers?

No special provisions regarding injunctions in IP disputes is stipulated by legislation and the injunctions (temporary and preliminary) are applied on common grounds. To secure an infringement claim with regard to material carriers, equipment and materials that are presumed as infringing the exclusive patent right, the injunction measures set forth by the procedural legislation will be applied, including seizure of material carriers, equipment and materials. The plaintiff is obliged to prove the necessity of the injunctions. Counter injunctions may be applied by the decision of the court.

Also, according to existing court practice, the prohibition of selling the presumptively counterfeit products may be used as the provisional injunction measure. But its usage is very restricted and the courts, in general, are hostile to the usage of such a measure.





To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or proceeding available to accomplish this?

The legislation of the Russian Federation does not allow for administrative actions to block the importation of infringing products into the country. In the Russian Federation there is no specific tribunal or proceeding available for banning importation of infringing products.

Nevertheless, it is necessary to point out that according to article 1252 of the Civil Code of the Russian Federation the patent right holder may request a prevention of the actions infringing the right or creating a threat of its infringement and reimbursement of damages.





Under what conditions can a successful litigant recover costs and attorneys' fees?

In the Russian Federation court proceedings a successful litigant recovers court taxes and attorney fees in an amount that is at the discretion of the court. The recovery of the costs may be conducted in a separate proceeding.





Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate?

According to the general rule the liability for infringement is applied in case of a guilty activity. At the same time there are several exceptions from this rule, such as compensation of damages, which can be applied even if the infringer was not aware he is involved in an infringing activities. However such damages can later be recovered by way of redress from the original infringer.

In case of repeated or flagrant violation of intellectual property rights the prosecutor can initiate the liquidation of infringing legal entity or termination of registration of individual entrepreneur.

The fact of the wilful character of the infringement entails no additional punishment but it may influence the amount of the damages and recovery of attorneys' fees.

Any materials proving that the infringer has actual knowledge of the existence of the patent and the patent infringement can be taken into account by the court considering the wilful infringement.





What is the time limit for seeking a remedy for patent infringement?

Russian legislation does not provide a special time limit for seeking a remedy for patent infringement. For this reason the establishment of this time period has common grounds. According to the general legislative requirements the term for filing the court claim is three years after the date when the plaintiff found out or had the possibility of finding out the information concerning the infringement of his or her rights by the defendant.





Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?

According to the patent legislation of the Russian Federation, the special marking of the patented product is not obligatory. Nevertheless most patented products are marked with the information regarding the number of the patent and the information regarding the patent holder.

Responsibility for false patent marking may be imposed on the basis of the general rules, particularly of the anti-monopoly legislation.


Moscow

11, 1st Magistralny Tupik

Business Center "The Yard"

Stroenie 1, Suite 7

Moscow, 123290

Russia

Fax: +7 (495) 781 66 03

Email: moscow@mspcorporate.com

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