Enforcement through the courts

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.

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.

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