The new rules of administrative review of IP disputes by the Rospatent (the Rules) adopted by Orders of the Russian Ministry of Education and Science (no. 644 dated 30 April 2020) and the Russian Ministry of Economic Development (no. 261 dated 30 April 2020) replacing the previous rules of 23 April 2003 became effective from 06 September 2020.
The Rules provide for the administrative procedure for review of disputes by the Chamber for patent disputes of the Rospatent on
- objections to decisions of the Rospatent on applications for patents, utility models, industrial designs, trademarks, geographical indications and appellations of origin;
- objections to registered IP rights;
- applications for cancellation of registered IP rights.
The Rules introduced the filing of applications online, the use of electronic communication and the online participation in hearings, as well as reduced procedural deadlines.
In accordance with the Rules, all objections and applications can now be filed at the Rospatent office, by mail or at site of the Rospatent (by filling the form downloadable at https://new.fips.ru/about/otdelenie-palata-po-patentnym-sporam/forma-podachi-vozrazheniy-i-zayavleniy-v-palatu-po-patentnym-sporam.php).
In case of filing in paper form, all documents should be also provided in electronic form in parallel. The Rospatent considers that this will contribute to reducing the workload of the office in the digitalization process and serve as an incentive for applicants to use the online filing.
An objection or application shall be registered by the Rospatent within 5 working days. During next 5 working days the office will perform the full formal examination of filed documents and send to the applicant a notice of acceptance, which will also state the date of the scheduled hearing of the case by the hearing panel.
All documents of the application or objection and all information on the proceedings shall be published on the site of the Rospatent within 5 working days from receipt thereof.
The hearing should take place not later than 2 months from date of formal acceptance of the objection or application on registered IP rights, and only 1 month for objections to decisions of the Rospatent on applications.
Where an application or objection presents a defect preventing its formal acceptance, the Rospatent notifies the applicant accordingly. If the defect is remedied within 2 months, the application or objection is accepted.
The rightholder may file his/her arguments or objections on the application/objection in a statement of defence. This shall be filed not later than 10 working days before the hearing or at the hearing. If the statement is provided at the hearing the panel may suspend its review. The Rules also provide that the parties to the dispute may file new additional documents and put forward new arguments, evidence and even new grounds before the panel takes its resolution, which is not a decision in proper sense and rather lays down the panel’s views and recommendations.
The resolution of the panel will include information on the circumstances of the case, evidence and arguments of the parties, the conclusions of the panel and underlying rationale. The panel resolution will be the basis for the decision of the Rospatent on the application or objection that shall be issued by the Rospatent Head within 2 months from the date of the last hearing. The Head of the Rospatent may disagree with the assessment of the panel and remand the application or objection for a fresh review by another panel.
The Rospatent considers that the new Rules will be helpful in reducing the timeframes of review of applications and objections and improve the quality of decisions.