At a glance: patent enforcement proceedings in Russia

Patent enforcement proceedings

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?

When infringement of patent rights occurs, it is possible to initiate administrative, civil or criminal proceedings. In the case of administrative proceedings, the patent holder shall lodge a complaint with the police. The police officers shall draw up an infringement report and initiate an administrative court action. The police may also initiate an administrative court action on their own initiative if they find infringement. The plaintiff in the administrative court action will be the police.

The patent holder may also initiate an administrative case in the anti-monopoly body, which considers the case itself. Its decision may be appealed in court.

The patent holder may initiate a civil court action and be the plaintiff in court proceedings.

If a criminal action has to be initiated, the patent holder shall lodge a complaint with the police, who will initiate a criminal case in court. However, a criminal case will be considered by the court only if the damage suffered by the patent holder is considerable. The amount of damage will be evaluated by the court. If the court decides that the damage is not large, it will not consider the case.

In all civil or administrative infringement cases, the court of first and appeal instance will be local courts whose judgments may be appealed in the IP Court. Criminal cases are considered within the structure of common courts (first instance, appeal and cassation).

If the patent holder is a natural person, any case will be considered by the common court.

What is the format of a patent infringement trial?

When a court action is initiated, the court sets a preliminary hearing followed by a substantive hearing. The court hearing may be adjourned if there are circumstances preventing the consideration of the case. The court accepts all kinds of evidence: documents, affidavits or live testimony. Cross-examination of witnesses may also take place. If the patent is complicated the court may appoint an expert to make a report. The conflicting parties may also petition for technical expertise. At the first instance court, there is normally one judge. Appeals are considered by a panel of three judges. Typically, the judgment at the first instance court is issued in four to six months. If the judgment is appealed in all court instances, the time span may be two or more years. If the case is complicated, it may take more time to be considered.

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

In case of infringement (unenforceability), each participating party shall prove the circumstances on which it relies. If this is an invalidity issue, the case will be considered by the patent office where the burden of proof also rests with each of the parties. The decision of the patent office may be appealed in the IP 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?

The patent holder or his or her exclusive licensee may sue for patent infringement directly. Other persons (eg, a non-exclusive licensee) may sue the infringer on the basis of a power of attorney issued by the patent holder. The infringer may bring a counter suit against the patent holder within the frame of court proceedings.

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?

Contributory infringement is not covered by the law. However, there have been some rare cases where the court examined contributory infringement applying systemic interpretation of the law and ruled in favour of the patent owner. Accordingly, wherever there is a fact of contributory infringement, it is advisable to initiate a court action.

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

Multiple parties may be joined as defendants in a lawsuit. The law provides that the exclusive right for a patent covers import, manufacture, offer for sale, sale, storage of patented products and any other actions aimed at marketing the patented products. A lawsuit may, therefore, be brought against any number of defendants who are involved in the above actions. When a patent infringement occurs through the joint actions of several persons, those persons shall be held jointly liable with respect to the patent owner.

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

Activities that take place outside Russia do not provide any support or influence court proceedings in Russia.

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

A patent is considered to have been infringed if every feature given in the independent claims is used in the product or the method, or a feature equivalent thereto. A feature will be considered equivalent if it gives the same result as the patented feature in the independent claim. Equivalence is to be determined by the court or, more frequently, by an expert appointed by the court. The expert makes a conclusion as to whether there is equivalence. The scope of equivalence is not considered. It either exists or does not.

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

When the plaintiff files a suit with the court, it gathers evidence itself. If any of the pieces of evidence cannot be obtained, the plaintiff may petition the court to order the defendant to provide the missing evidence. The same applies to third parties. If evidence located outside Russia is required, the court may ask the Ministry of Foreign Affairs to request appropriate bodies in the foreign country to provide such evidence. Whether there is a positive result to such a request will depend on the existence of bilateral agreements on legal assistance between Russia and other countries. Otherwise, this may depend on the goodwill of the foreign country.

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

The typical timetable for examination of an infringement case by a court depends on the workload of the court. Normally, the court appoints a preliminary hearing one or two months after filing the suit. The substantive hearing will be appointed one month after the preliminary hearing. The judgment of the first instance court may be issued four months after filing the lawsuit. If the judgment is appealed, the hearing in the appellate court will be fixed within one or two months after filing the appeal. The appeal itself shall be filed within one month after issuance of the first instance court judgment. It should be noted the terms above are average and in certain circumstances the terms may be extended.

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

The typical range of costs of a patent infringement suit is US$35,000 including preparation of the documents and court hearings. Appeal proceedings costs will amount to approximately US$15,000 because many of the documents prepared for the court of first instance may be used in the appeal proceedings too.

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

If an infringement patent suit is lost in the court of first instance, it may be appealed in the court of appeal. New evidence may be produced at the appellate court only if the party presenting new evidence proves that it did not have the opportunity to present it to the first instance court. Further, the case may be appealed at the IP Court and still further in the Supreme Court in its capacity as second cassation and supervisory instances.

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?

In theory, abuse of right may be invoked; however, in practice these cases are not known.

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

Alternative dispute resolution is available; however, it is very rarely used to resolve patent disputes.

Law stated date

Give the date on which the information above is accurate.

12 March 2021.