An extract from The Patent Litigation Law Review, 6th Edition
Types of patent
In Russia, patents cover three types of intellectual property: inventions, utility models and industrial designs. All three are subject to the relevant patentability requirements. The patent term for inventions is 20 years, with a possibility of up to five years' extension for pharmaceuticals, pesticides and agrochemicals; for utility models, as of 2015, it is 10 years; and for industrial designs it is now a first term of five years, which is renewable four times for a total of up to 25 years.
For inventions and industrial designs, national patents may be granted by the Russian Federal Service for Intellectual Property (ROSPATENT) or regional patents by the Eurasian Patent Office that are effective in Russia and seven other contracting states. For utility models, a patent may be granted by ROSPATENT only.i Invention patentsPatentability
An 'invention' is a technical solution, in any area, related to a product (including a device, substance, microorganism strain, and plant or animal cell culture) or method (process of affecting a material object using material means).2 An invention may be granted if it is new, involves an inventive step and is industrially applicable.Patentable subject matter
The following are not patentable under Part IV of the Code:
- methods of cloning a human being;
- methods of modifying the genetic integrity of cells of the embryonic line of a human being;
- use of human embryos for industrial and commercial purposes; and
- other proposals that are contrary to public interest, principles of humanity, and morality.3
The following are not deemed to be inventions in and of themselves:
- scientific theories and mathematical methods;
- proposals concerning solely the outward appearance of manufactured articles and intended to satisfy aesthetic requirements;
- rules and methods of games and for intellectual or business activity;
- computer software; and
- ideas on presentation of information.4
This subject matter is not patentable if the patent application refers to the above subject matter, with nothing more added.Novelty
An invention is deemed to be new if it is not anticipated by prior art. Prior art includes any information that becomes generally accessible anywhere in the world before the priority date of the invention.
In assessing novelty, the state of the art also includes, under condition of earlier priority, all earlier filed applications in Russia by other applicants for inventions and utility models that ultimately have been or will be officially published, and inventions and utility models that have been patented in Russia.Inventive step (non-obviousness)
An invention must involve an inventive step. For an invention to meet this test, it must not be obvious to a person skilled in the art. The state of the art includes any information published anywhere in the world and made available to the public before the priority date of the invention.Six-month grace period
Disclosure of information relating to an invention by the inventor, applicant or other person having received this information directly or indirectly from them, who made information on the essence of the invention public, is not an event that precludes the recognition of the patentability of the invention if a patent application for the invention was filed in Russia or under the Patent Cooperation Treaty (PCT) within six months of the date of disclosure of the information. The burden of proof that the disclosure was permitted under the grace period falls to the applicant.
In this situation, the applicant cannot rely on the six months before the priority date but only the six months before the actual filing date. In the Eurasian Patent Office, the applicant can rely on a grace period that is six months before the priority date. The burden of proof is on the applicant, who must show the circumstances took place by virtue of which there was disclosure of information that does not prevent the recognition of the patentability of the invention.Utility: industrially applicable
An invention is deemed to be 'industrially applicable' if it can be used in industry, agriculture, public health and other branches of the economy or social sphere. It is not a difficult test to satisfy.Supporting disclosure
Article 1350 of the Civil Code previously required three conditions for patentability of inventions: novelty, inventive step and industrial applicability. New amendments introduced in 2014 included a fourth requirement: sufficiency of disclosure. The new requirement is assessed by examiners in the course of substantive examination of applications.5
Insufficiency of disclosure is now a valid ground for both refusing an application and revoking an issued patent.6 'Sufficiency' means, as of the filing date, 'to disclose the essence of the claimed invention in the application documents in a manner sufficient for implementation of the invention by a person skilled in the art.'
Prior to this amendment, sufficiency of disclosure was a practical but not a statutory requirement, except to the extent that it had to be sufficient for 'realisation' of the invention.7 Sufficiency was assessed as a matter of practice, procedure and regulation under the legal requirement for 'industrial applicability'; however, the legal right to raise an objection of industrial applicability premised upon insufficiency of disclosure was often in doubt. To address this doubt, it was decided to formalise sufficiency as a separate requirement for patentability.
Regarding critical dates, although novelty and inventive step are determined as of the priority date, the assessment of sufficiency of disclosure is to be made on the basis of information contained in the specification as of the filing date (international filing date for PCT applications and the date of actual filing for applications filed directly with the Russian Patent Office).Utility models8
A utility model is a technical solution relating to a device. A utility model may be granted if it is novel and industrially applicable. There is no inventive step requirement.
Protection for utility models was introduced in Russia under the Patent Law of 1992. The public interest objective in introducing utility models was to grant patents expeditiously without substantive examination to encourage development of small businesses and innovation in an emerging economy.
Unfortunately, although the regime delivered some benefits to the public interest, the system was manipulated for undesirable purposes. Utility model applications were often inappropriately used as a means for quickly obtaining a patent to use against others. Because there was no substantive examination, vexatious applicants would apply for patents for subject matter that was very likely already in the public domain. They would then try to assert those patents against bona fide business entities legitimately using the technology, (e.g., manufacturers of products or Russian distributors).
New revisions to the law were enacted in 2014. The new amendments seek, by various means, to curb those abuses:
- Prior art: until 2014, prior art for evaluation of the utility model's novelty was limited to published information about any means having the same intended use as the claimed model; however, the amended Article 1351 expanded the meaning of prior art so that it includes any information that became publicly available before the priority date of the utility model, regardless of the technical field to which it applies. Moreover, under the previous definition of prior art, only information available in Russia regarding use of the means having the same intended purpose was considered. This restriction has now been removed, such that prior art includes information that was publicly available anywhere in the world. Prior art now also includes earlier filed invention patents and design patents.
- Substantive examination: in addition to broadening the definition of prior art, there is now substantive examination of applications. Previously, the only form of examination was clerical in respect of filing formalities. Substantive examination is carried out to verify compliance with both the requirements of subject matter and patentability.9
- Literal infringement only: the scope of protection granted to a utility model is now more limited. Under the previous legislation, a utility model patent was deemed to be infringed if the article possessed features equivalent to the features included in the utility model claims. Under the amended Article 1358, infringement based on the 'doctrine of equivalents' with regard to utility models has been abolished.
These amendments are directed at positioning utility models where they were intended to be in terms of the public interest.Novelty
A utility model is deemed to be new if the sum of its essential features is not anticipated by the prior art. The state of the art includes any kind of information published anywhere in the world and made available to the public, before the priority date of the claimed utility model, concerning devices of similar function and in use in Russia or elsewhere.
The state of the art also includes, on condition of their earlier priority, all applications filed in Russia by other applicants for inventions and utility models that have been in due course officially published, inventions and utility models that have been patented in the Russian Federation.Six-month grace period
Disclosure of information relating to a utility model by the author of the utility model, applicant or other person having received this information directly or indirectly from them, who made information on the essence of the utility model public, is not a circumstance precluding the recognition of the patentability of the utility model, if an application for the grant of a patent for the utility model was filed with ROSPATENT within six months of the date of disclosure of the information. The burden of proof that the disclosure was permitted under the grace period falls to the applicant.Industrially applicable
A utility model is deemed to be industrially applicable if it can be used in industry, agriculture, public health, other branches of the economy or the social sphere. It is not a difficult test to satisfy.Not utility models
Legal protection as utility models cannot be granted for proposals that solely concern the outward appearance of manufactured articles and that intend to satisfy aesthetic requirements, or for layout designs (topographies) of integrated circuits.10Industrial designs
A design qualifies as subject matter for a design patent if it is an artistically designed solution of an article, manufactured industrially or by artisans, that defines its outward appearance. An industrial design may be granted legal protection if its essential features are new and original.11Essential features
The essential features of an industrial design include any features determining the aesthetic or ergonomic characteristics of the outward appearance of the article, or both, including shape configuration, ornament and combination of colours.
In 2014, the requirement to express in writing the claims to the essential features was eliminated from the law; however, for classification purposes, the patent office continues to require the inclusion of a written description of the design for all nationally filed applications. Applications filed using the Hague System are not subject to this requirement.Novelty
An industrial design is deemed to be new if the aggregate of its significant features reflected on images of the article's appearance is not known from information generally available in the world before the priority date of the industrial design application.12
When determining the novelty of an industrial design, all pending priority applications for industrial designs filed in Russia by other persons that are ultimately granted will also be treated as prior art. If prior art is pending in Russia, it will not be cited against the other application, and the owner of the prior art will be required to file a subsequent revocation action in the Patent Chamber.Original
An industrial design is deemed original if its essential features are the result of the 'creative nature of the special aspects of the article'.13Six-month grace period
Disclosure of information relating to an industrial design by its author, the applicant or other person having received this information directly or indirectly from those who made information on the essence of the industrial design public is not deemed to be a circumstance preventing the recognition of the patentability of the industrial design if an application for the grant of a patent for the industrial design is filed within six months of the date of disclosure of the information. The burden of proof that the proper circumstances have taken place falls to the applicant.Not industrial designs
Legal protection as an industrial design is not available for solutions that are determined exclusively by the technical function of an article; solutions that relate to works of architecture (with the exception of minor architectural forms), industrial, hydro, technical and other stationary structures; or solutions that relate to objects of an unstable form, such as liquids, gases and dry substances.14Hague System
On 28 February 2018, Russia joined the Hague Agreement Concerning the International Registration of Industrial Designs of 2 July 1999.
Substantive lawi InfringementLiteral infringement
A patentee has the exclusive right to use an invention, utility model or industrial design by any means not prohibited by the law. The exclusive right to the use of an invention, utility model or industrial design includes, in particular, the following:
- importation into Russia, manufacture, exploitation, offer for sale, sale, other introduction into civil circulation or the storage for such purposes in Russia, of a product that incorporates the invention or utility model, or articles incorporating the industrial design;
- performance in Russia of the acts provided in point (a) in respect to a product obtained directly by a patented process. If the product obtained by the patented process is new, an identical product is considered as being derived from the patented process in the absence of proof of the contrary;
- performance of the acts provided in point (a) in respect of a device, the functioning use of which in accordance with its purpose automatically involves a patented process;
- performance of the acts provided in point (a) in respect of a product intended for use in accordance with the purposes specified in the claims, when the invention is directed to a use of a product for a specified purpose; and
- performance of a process in which the invention is used, in particular by the application of this process.21
Some acts do not constitute patent infringement,22 such as the use of foreign vehicles temporarily in Russia, experiments and emergency uses. National exhaustion of rights applies in respect of importation into Russia, use, offer for sale, selling, other introduction into civil circulation or storage for these purposes of a product, incorporating the invention or utility model or of a device incorporating the industrial design; therefore, parallel importation is, strictly speaking, a form of infringement, although the remedies can be quite soft.Infringement under the doctrine of equivalents
Russian law recognises infringement based on the doctrine of equivalents. An invention is deemed to be used in a product or process if the product contains or the process involves each feature of the independent claim or a feature equivalent thereto that was previously known before the priority date.
The doctrine of equivalence applies only for inventions and not for utility models. The feature may only be deemed to be an equivalent one if it was known as such before the priority date of the asserted patent.Joint infringement
There is separate liability for each infringer along the supply chain, from the manufacturer, distributor and retailer to the end user; however, if the patent claims enumerate a number of elements in a product or a number of steps in a process, there is only infringement by the person or entity who deals with the end product or the results of the entire process.
There was, until 2014, no concept of joint tortfeasor infringement in situations in which one person carried out only one step in a process or produced only one of the claimed elements in a patented product, even if that person carried out that step or produced that element knowing that it would form part of a patented product or process. There was also no liability for indirect infringement.
Article 1252, the provision that sets out the various types of infringement, was supplemented in 2014 with the provision of joint and several liabilities of multiple parties, if one (common) infringement of right has been committed through their common actions.
How broadly this new provision will be interpreted is still unclear.ii Invalidity and other defencesNon-infringement and invalidity
Non-infringement is a defence to infringement, but invalidity is not. Invalidity may be raised in separate and independent proceedings.
In Russia, the institution of parallel revocation proceedings is the most common response to being served with a patent infringement suit. According to Article 1398 of the Civil Code: '[I]ssued patents may be opposed by any party by filing an action with ROSPATENT in case they [patents] are not in compliance with patentability requirements set by this article.'
Patent revocation proceedings must first be initiated in the Patent Chamber and will proceed independently from any patent infringement action that may have been commenced in the commercial court. The burden of establishing invalidity of a patent or any claim in a patent falls on the party asserting invalidity.Other statutory defences
In the infringement action, the defendant can:
- claim non-infringement by reason of the fact that the product or process does not fall within the scope of any of the asserted claims or that there is a licence;
- claim that its activities fall within the prior and continuing right to use exception;
- claim that the plaintiff does not have title to the patent or that national exhaustion of rights, abandonment, compulsory licence or limitation period apply; or
- procedurally speaking, question, in the early stages of the proceedings, the validity of the power of attorney under which the plaintiff's lawyer professes to have authority to bring the action.
There are no legal defences of laches, equitable estoppel or inequitable conduct; however, the defendant may try to raise an abuse of rights argument if, for example, obtaining a patent was not a bona fide act.23 This approach seldom succeeds.