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Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

To be patentable, an invention must be industrially applicable, new and involve an inventive step. Additionally, it should not be excluded from protected subject matter.

What are the limits on patentability?

The following inventions cannot be patented:

  • methods for human cloning and human clones;
  • methods for modifying the genetic integrity of cells of a human embryo line;
  • use of human embryos in manufacturing and for commercial purposes;
  • solutions that are contrary to public interest, humanity and morals;
  • discoveries;
  • scientific theories and mathematical methods;
  • solutions relating to the external appearance of a product and directed towards the satisfaction of aesthetic requirements;
  • rules and methods for games and intellectual or economic activity;
  • computer programs; and
  • presentation of information.

To what extent can inventions covering software be patented?

Generally, claims that use a computer program as a generic concept are rejected based on the Civil Code, which lists computer programs among non-patentable subject matter. During examination of software-related inventions, examiners follow the Patent Regulations. According to the regulations, software-related inventions are not considered inventions in accordance with the Civil Code if all features differentiating the invention from the closest item in the prior art are characteristic of solutions that are excluded from patentability (eg, computer programs). If this is not the case, software-related solutions are patentable.

To what extent can inventions covering business methods be patented?

Business methods as such are excluded from patentability.

To what extent can inventions relating to stem cells be patented?

Inventions relating to stem cells are patentable unless they relate to human embryonic stem cells. The use of human embryos for industrial or commercial purposes cannot be patented. However, embryonic cell lines used for medical purposes, as well as processes for their production and use, are patentable.

Are there restrictions on any other kinds of invention?

Animal and plant varieties, as well as biological methods for producing them, are not patentable.

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

Russia has a six-month grace period. To calculate the six-month period, the date on which the application was filed (for Patent Cooperation Treaty applications, this is the international filing date) is used. The grace period is counted from the filing date, not from the priority date. According to the Civil Code, any public disclosure of information relating to an invention by the inventor, the applicant or anyone that has obtained the information directly or indirectly from it, will not make the invention unpatentable, as long as the application for the invention was filed with the Patent Office within six months of the disclosure of information. The burden of proof is on the applicant.

It is also possible to acquire protection for an invention through the Eurasian Patent System. Eurasia has a six-month grace period from the priority date. Eurasian patents have the same effect in Russia as Russian patents.

According to the Eurasian Patent Convention, disclosure of information relating to an invention application by the inventor, the applicant or anyone that has obtained the information directly or indirectly from it that would otherwise affect its patentability will not do so where the information has been made available to the public no earlier than six months before the filing date of, or the priority date claimed for, the Eurasian patent. The burden of proof is on the applicant.

On filing an application, no statement or documents need to be submitted to the Russian or Eurasian Patent Office in order to make use of the grace period. The effects of the grace period may be invoked at any time.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

Pre-grant opposition in Russia is not possible. However, after information regarding an application (made 18 months from the filing date) has been published, any third party can inspect the file and provide observations on the patentability of the invention to the Patent Office. The Patent Office will consider the observations during examination of the application. However, the party that submitted the observations has no procedural rights when the application is considered.

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

After the grant of a patent and during the term of its validity, any party can file an invalidation action with the Patent Office, claiming that:

  • the invention does not meet the patentability requirements;
  • the application documents filed on the filing date do not comply with the disclosure requirements;
  • the claims of the patent as granted contain features that did not appear in the application on the filing date; or
  • the patent was granted even though there were several applications for identical inventions with the same priority date.

After the expiry or early termination of a patent, its validity can be contested on the same grounds, but only by an interested party (eg, the party accused of patent infringement). Partial invalidation is possible.

How can patent office decisions be appealed in your jurisdiction?

Applicants can appeal Patent Office decisions invalidating an application, denying a patent or granting a patent within seven months of the relevant decision. Further appeals of Patent Office decisions can be made before the IP Rights Court.

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

The average processing time from filing to grant (if a request for substantive examination is filed without delay) is one-and-a-half to two years. The cost associated with the filing and prosecution of an application and grant of a patent is between $3,500 and $6,000, including official fees and patent agent fees. This figure does not include translation costs.

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

Although there are several possible remedies against patent infringement (eg, administrative, civil and criminal proceedings), civil proceedings are the most effective way for patent owners to enforce their rights.

Civil proceedings begin with a claim, which the patent owner files with the court. IP disputes fall under the jurisdiction of both the common and commercial courts. Under both jurisdictions, it is possible to request a preliminary injunction.

Before filing suit, rights holders should take the following steps:

  • collect and secure evidence;
  • prepare the suit and claims;
  • send copies of the suit to the defendants; and
  • pay the state fee.

In IP infringement proceedings, evidence should include documents which can help to establish the link between the defendant and infringing product and evidence of the claimant’s exclusive rights. Evidence can be collected by the rights holder alone or together with an investigator or the notary public. All official foreign documents must be properly executed (ie, notarised and legalised with an apostille, if applicable) to be admissible. Original documents must be provided where possible.

Under the Civil Code, rights holders have three years to protect their rights by filing suit against an infringer. The same term applies to patent infringement cases. This means that a rights holder must file suit within three years of the date on which it learns, or should have learned, of the infringement.

The law provides an option for patent owners to claim monetary compensation instead of damages in the following amounts:

Rb10,000 to Rb5 million, to be determined by the court based on the nature of the infringement; or
double the value of the right to use the corresponding patent based on the price that is usually charged for the lawful use thereof.

In practice (particularly in unusual cases), patent owners usually send a cease and desist letter to the infringer before litigation, as it is both a cost-effective and time-efficient means of stopping the infringement.

What scope is there for forum selection?

The common courts or the commercial courts hear disputes connected with patent infringement. The common courts have jurisdiction over cases where at least one party in the dispute is a natural person. The commercial courts have jurisdiction over cases involving legal entities.

The commercial court structure has four levels:

  • the commercial courts of the constituent units of the Russian Federation (first instance);
  • the commercial courts of appeal (appeal);
  • the IP Rights Court (cassation); and
  • the Supreme Court (second cassation and supervisory instance).

At first instance, a single judge hears the case. Decisions of the first-instance commercial courts may be appealed before the commercial courts of appeal, where three judges hear the appeal. Further appeals can be made before the IP Rights Court; the final level of appeal is with the Supreme Court.

Pre-trial
What are the stages in the litigation process leading up to a full trial?

Consideration procedures before the first-instance commercial courts have four main stages. At the first stage, the first formal requirement is to file a claim. The first stage takes about five days. If all formal requirements are met, the claim is accepted and the court sets a date to meet with the parties and schedules a preliminary hearing.

After meeting with the parties and holding a preliminary hearing, the case is prepared for a substantive hearing. At this second stage, the court:

  • clarifies the circumstances of the case;
  • asks the parties to deliver their arguments and provide all evidence;
  • determines whether additional evidence is required; and
  • determines whether other witnesses or expert opinions are required.

The second stage of the court proceedings takes one or two months if no expert reports have been ordered, since preparation of these reports can take months. In addition, injunctive measures can be issued at this stage. When the case is being prepared, the date of the court hearing on the merits is set.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

The court may adjourn a hearing if it recognises that the case cannot be considered at that time because:

  • a party to the proceedings is not present;
  • technical devices (eg, videoconferencing systems) used during the hearing experience technical failures; or
  • a party is granted an adjournment in order to submit additional evidence. The other party may argue against the motion to adjourn the hearing.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

A patent may be recognised as invalid in whole or in part where:

  • the invention, utility model or industrial design does not meet the conditions of patentability (novelty, inventive step and industrial applicability);
  • the application materials submitted at the date of filing do not meet the disclosure requirements;
  • there are claims contained in the decision granting the patent that were absent on the filing date of the application;
  • the patent was granted even though there were several applications for identical inventions, utility models or industrial designs with the same priority date; or
  • the patent was granted to someone other than the inventor or patent owner without the consent of the inventor or patent owner.

Any interested party can file an opposition with the Patent Office.

At trial
What level of expertise can a patent owner expect from the courts?

Most judges have no special technical background. The courts routinely conduct special technical examinations, involving experts in the relevant field. Usually, parties submit expert candidates to the court for approval. When appointing an expert, the courts will evaluate his or her professional experience and skills. In some cases the parties do not file motions for examination. In this situation, the court will render a decision based on other documents submitted by the parties.

Further, the IP Rights Court handles matters pertaining to the review of Patent Office decisions, including patent revocation cases that have first been tried before the Chamber for Patent Disputes. It also determines issues of IP ownership and authorship. Some IP Rights Court judges have both a legal and technical background. The technical background of the new judges is considered when appointing them.

Are cases decided by one judge, a panel of judges or a jury?

A single judge hears all first-instance patent infringement cases in the commercial courts, except cases which:

  • are remanded to the commercial court of first instance with an order to reconsider them in a panel;
  • the head of a judicial chamber decides to consider in a panel, due to their complexity and based on a reasoned application by a judge; or
  • are within the IP Rights Court’s jurisdiction.

Appeal and cassation commercial court cases, as well as those under supervisory review, are considered by a panel of three judges.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

N/A.

What role can and do expert witnesses play in proceedings?

The courts usually order expert opinions in patent infringement cases where the judge lacks the necessary technical background.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The doctrine of equivalents applies to Russian and Eurasian patents and may be invoked where it is necessary to establish the use of an invention in a particular product or process – in particular, where this is required to prove patent infringement.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

The patentee may file a preliminary injunction motion at any stage of the proceedings in order, among other things, to prevent the defendant from using the alleged product or process until the court issues a decision. However, the patentee must demonstrate that the court’s decision will not be enforced if the motion is not granted and that the absence of a preliminary injunction would cause substantial damage to the patentee.

How are issues around infringement and validity treated in your jurisdiction?

Patent invalidation is a separate administrative procedure handled by the Patent Office. Patent invalidity cannot be raised as a defence during a patent infringement case.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

The courts usually consider decisions of the higher courts (eg, the appeal courts, the Cassation Court and the Supreme Court) regarding similar cases. However, the courts do not consider decisions from other jurisdictions.

Damages and remedies
Can the successful party obtain costs from the losing party?

The legal expenses incurred by the successful party may be recovered from the losing party. Expenses are recoverable within reasonable limits, to be determined by the court.

What are the typical remedies granted to a successful plaintiff?

The following remedies can be granted to a successful plaintiff:

  • injunctions, which are granted if the defendant’s product contains every feature of the independent claim of the patented product;
  • damages (if they are proven) and compensation;
  • seizure and destruction of counterfeit products; and
  • publication of the court decision.

How are damages awards calculated? Are punitive damages available?

Damages can include:

  • costs suffered by the patentee;
  • costs that the patentee has incurred for restoration of the violated right, loss or damage to its property (actual losses); and
  • costs for income that the patentee would have received under ordinary circumstances had its right had not been violated (lost profits).

If an infringer received income as a result of its infringement, the patentee can demand compensation (along with damages) for lost profits in an amount no less than the infringer’s income.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

A permanent injunction can be granted if the defendant’s product contains every feature of the independent claim of the patented product. In most cases patentees claim a permanent injunction only.

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

As most first-instance patent cases require the appointment of experts, they usually take between six and eight months, after which the decision enters into force if no appeal is filed.

How much should a litigant plan to pay to take a case through to a first-instance decision?

Litigants should expect to pay approximately $35,000 to take a case through to a first-instance decision.

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

An appeal may be filed within one month of the decision. Appellate proceedings last between three and six months, depending on whether a new examination is required. After the appellate proceedings, the decision enters into force. Cassation appeal proceedings take approximately three months. Before filing the appeal, the appellant may request that the enforcement of the court’s decision be suspended.

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Under Article 14 of the Competition Law, acts of unfair competition – including those involving the unauthorised use of intellectual property – are prohibited. Rights holders may file a petition with the Federal Anti-monopoly Service, the government authority that supervises competition in the market.

The essential requirements for anti-monopoly proceedings are:

  • competition between patentee and infringer in the same segment of the Russian market; and
  • infringement of the patentee’s IP rights.

If the Federal Anti-monopoly Service considers the infringer’s activities to constitute unfair competition, it will issue a ruling prohibiting such activities. The Federal Anti-monopoly Service ruling may be appealed before the arbitration courts. Federal Anti-monopoly Service proceedings typically take up to six months. 

Disputes may also be resolved through mediation. However, disputes that affect public interests or the rights and legitimate interests of persons that are not parties to the mediation agreement cannot be mediated. Parties may refer a dispute to mediation by concluding a mediation agreement before or after the dispute has arisen. Parties are also entitled to enter into meditation agreements after the dispute has been brought before a court or arbitral tribunal. The Law on Mediation provides no compulsory legal grounds for mediation in cases where no agreement to mediate has been concluded. Where mediation is initiated after a statement of claim has been filed, parties can engage professional mediators only. The mediators must keep all information obtained in the course of mediation confidential.