This is Part 2 of an 8-part series examining post-grant review proceedings, oppositions, and third party observations in the U.S., BRIC and several non-BRIC countries. To see Part 1, Post-Grant Oppositions in Japan, click here.
Third Party Submissions in Russia
One of the most fundamental amendments to Russia’s Civil Code (Code) part IV “Rights to the Results of Intellectual Activities and Means of Individualization” relates to Article 1386.5 concerning third party observations of the patentability of an invention. This amendment signed into law on March 12th, 2014 by Russian President Vladimir Putin, provides formal acceptance of observations to be submitted to the Russian Patent Office effective October 1st, 2014.
Under Article 1386.5, after publication of a patent application in Russia, any third party (who may use a straw man) may submit to the Russian Patent Office arguments regarding the compliance of the claimed invention with respect to the patentability requirements provided in Article 1350 of the Code. The patentability requirements provided in this article are novelty, inventive step and that the invention be industrial exploitable. There is no limit on the number of type or kinds of references that can be submitted (only that the references must be prior art). Such third party observations can be submitted up until the day the application is allowed by the Examiner. Finally, there is no official government fee for filing such observations.
Although third party observations were not previously prohibited and thus submissions were made to the Russian Patent Office, the enactment of this amendment means observations will at the least be considered during the examination of the challenged application. Similar to other countries, a third party has neither the right to participate in the examination of the invention for patentability nor the right to communicate with the Examiner.
The primary obstacle that remains for Russia’s allowance of third party observations is the lack of public access to prosecution files, which renders it difficult to ascertain which challenged claims are on file. The submission of such observations has played a significant role in opposition trials worldwide and it is yet to be seen what effect the legal acceptance of third party observations will have in Russia.
This post was written by Lisa Mueller and Kate Merath of Michael Best and Vladislav Ugryumov of Gowlings (Moscow).