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Applying for a patent

Patentability

What are the criteria for patentability in your jurisdiction?

To be patentable, an invention must be:

  • new;
  • inventive; and
  • capable of industrial application.

Russian law also provides for a utility model patent, which need only be new and industrially applicable.

For a patent to be new, the claimed subject matter must not already be part of the prior art. A prior art reference is considered detrimental if it discloses every feature of the claimed invention. For a utility model, the reference should disclose “every essential feature” of the claim. Prior art includes any information published anywhere in the world before the priority date of the claimed invention or utility model.

‘Inventive’ means that the invention is not obvious to a person skilled in the art.

An invention or utility model is capable of industrial application if it can be used in:

  • industry;
  • agriculture;
  • healthcare;
  • other branches of the economy; or
  • human life in general.

What are the limits on patentability?

An invention patent is granted for any new technical solution for a problem that can be defined. This can be in the form of a product, process (method) or the use of a product or process. A utility model patent has a considerably narrower scope and is granted for a novel technical solution which is limited to an apparatus or device.

The following cannot be patented in Russia:

  • human cloning technologies;
  • techniques for modifying the genetic integrity of human embryo cells;
  • use of human embryos for industrial and commercial purposes;
  • other solutions contrary to public interest and humanity and morality principles;
  • discoveries;
  • rules and methods for games and intellectual or economic activities;
  • scientific theories and mathematical methods;
  • solutions relating solely to the external appearance of a product and intended to satisfy aesthetic requirements only;
  • computer programs; and
  • information presentation (ie, without a technical character or effect).

To what extent can inventions covering software be patented?

The legal protection of software (computer programs) is provided under copyright law. Software is classified as a literary work expressed in any programming language and in any form, including the source text and code. Subject matter claimed under copyright is excluded from patentability. However, in practice software-related inventions are patentable. In general, claiming subject matter where one or more features are implemented by means of a computer program is possible in the form of a storage media comprising a program or a corresponding method presented as an algorithm of a program. Therefore, as software is a functional part of such subject matter, expressed as a set of actions executed by a computer or a comparable technical device while implementing a program, it can be protected when a technical result is achieved.

To what extent can inventions covering business methods be patented?

Business methods are not patentable per se. However, it is possible to patent a business method if it is described as a set of operations implemented by technical means and intended to achieve a technical result.

To what extent can inventions relating to stem cells be patented?

Russian legislation does not allow for the patenting of inventions relating to the human embryo and its use. Thus, stem cells obtained from human embryos and any products produced from such stem cells are not patentable. However, it may be possible to patent stem cells obtained from other tissues.

Are there restrictions on any other kinds of invention?

An invention and utility model patent cannot be granted for:

  • plants and animal varieties, as well as biological methods for producing them, with the exception of microbiological methods and products made by using such methods; and
  • topographies of integrated circuits.

Grace period

Does your jurisdiction have a grace period? If so, how does it work?

For inventions and utility models, there is a disclosure grace period of six months before the filing date. Within this period, any public disclosure of information about the invention made by the inventor or a third party that obtained this information directly or indirectly from the inventor will not affect the patentability of the invention or utility model.

Oppositions

What types of patent opposition procedure are available in your jurisdiction?

No opposition procedure is available for pending applications. However, there is an option for third parties to submit observations about the patentability of the claimed invention, once the application is published. Third-party observations will be taken into account when making a final decision (on grant, rejection or withdrawal of the application), but third parties do not become a party to the application examination process by submitting observation notices.

A granted patent may be challenged and invalidated, either in full or in part, at any time during its period of validity if:

  • the invention does not meet patentability requirements;
  • the patent description does not disclose the invention in a sufficiently concise and complete way as to enable a person skilled in the art to implement it in practice (only for applications filed on or after 1 October 2014);
  • the patent claims contain features that were not covered by the application documents when they were filed;
  • the patent was granted despite several applications for identical inventions, utility models or industrial designs having the same priority date; or
  • the patent was granted with the wrong information about the inventor or patent owner.

Invalidation actions based on the first four grounds above are handled before the Russian Patent and Trademark Office (Rospatent) and can be appealed to the IP Court.

Invalidation actions based on the last defficiency are handled directly by the IP Court.

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

A patent cannot be challenged outside the courts.

How can patent office decisions be appealed in your jurisdiction?

The applicant has a right to appeal the Rospatent decision for rejecting an application, granting a patent or withdrawing a pending application, but must do so within seven months from the date of the decision. Further appeals can be filed before the IP Court.

Timescale and costs

How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

It usually takes one-and-a-half to two years for a patent to be granted. To expedite the process, the application can be filed through the Patent Prosecution Highway programme, which provides an accelerated examination process and a decision within eight months from filing at Rospatent. Average costs vary between €1,000 and €3,000 and may be higher in cases where long specification and claims require translation and when there are more than two or three required office actions.

Enforcement through the courts

Strategy

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

When the rights of a patent owner are infringed, there are three courses of action that can be taken:

  • administrative action, including anti-monopoly proceedings;
  • civil action; and
  • criminal action.

Civil action can be combined with administrative or criminal action.

What scope is there for forum selection?

There are general jurisdiction and commercial courts in Russia. The IP Court is a specialised commercial court.

The courts of general jurisdiction consider IP cases where at least one party to the dispute is a natural person. Infringement actions between legal entities (usually companies) fall under the jurisdiction of the commercial courts. In a patent infringement case, the courts have three levels:

  • district courts;
  • courts of the constituent entities of the Russian Federation (eg, the Moscow City Court); and
  • the Supreme Court.

The commercial courts include:

  • the commercial courts of the constituent entities of the Russian Federation;
  • the commercial courts of appeal;
  • the IP Court (cassation instance in IP matters); and
  • the Supreme Court at final instance.

There is little scope for forum selection. As the competence of courts is strictly defined, there may be room to choose courts in different regions, provided that there is a legal basis for this.

Pre-trial

What are the stages in the litigation process leading up to a full trial?

If a patent owner is intending to claim damages, it is obliged to send a claim letter to the alleged infringer. Should the infringer refuse to satisfy the claim fully or in part or does not respond to the claim letter within 30 days, the patent owner is free to initiate the litigation process.

If no damages are claimed, the litigation process may be initiated immediately.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

A defendant can delay proceedings by filing a number of requests, but only for a relatively short period until the court recognises that the delay is caused by deliberate actions, aimed at delaying the process.

The plaintiff cannot prevent the defendant from delaying the proceedings, but the patience of the court does have its limits in regard to unnecessary delays to proceedings.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

The invalidation process requires that an opposition is filed with the Russian Patent and Trademark Office. Therefore, it is not possible to challenge the validity of a patent in patent infringement proceedings. However, both processes can take place simultaneously.

At trial

What level of expertise can a patent owner expect from the courts?

Usually judges are lawyers who do not have specialised knowledge in the field of technology or industry to which the patent belongs. Therefore, should specialised knowledge be required, the court will order an expert opinion. In this case, the parties are invited to propose particular experts and questions, but the final approval rests with the court. Therefore, the level of expertise depends on the circumstances of the case, the choice of both experts and questions, and other variable factors.

Are cases decided by one judge, a panel of judges or a jury?

At the first-instance court, there is typically one judge. Appeals are considered by a panel of three judges. There are no juries for patent trials in Russia.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

There are no jury patent trials in Russia.

What role can and do expert witnesses play in proceedings?

Because judges usually have no technical background, the courts generally rely on expert witnesses. The plaintiff should insist that the court appoints an expert and propose a specific independent expert and questions that the expert witness should address. The opposing party has the right to propose another expert witness. The court will decide which expert to appoint depending on their qualifications and other aspects (eg, the fees charged by the expert witness).

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

The doctrine of equivalents is applied to determine whether a patent is used in a specific product or process leading to patent infringement. Under Russian law, an invention is considered to be used in a product or method if the product or method uses every feature of the invention that has been specified in an independent claim thereof or a feature equivalent thereto. A feature will be considered equivalent if it has the same purpose and gives the same result as the patented feature in the independent claim.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Preliminary injunctions are stipulated by the law, but in practice, courts infrequently grant preliminary injunctions.

The plaintiff is entitled to request a preliminary injunction, but it must be able to prove that in the absence of a preliminary injunction the court’s decision would be impossible to enforce. Because patent infringement is not typically evident nor easily understandable for a judge at the beginning of the process, and because the outcome of the proceedings is unpredictable, the judges tend to decline preliminary injunction requests, unless the evidence is overwhelming and self-explanatory.

How are issues around infringement and validity treated in your jurisdiction?

Infringement proceedings and the challenging of a patent’s validity are two different procedures. Both can exist in parallel – typically when one party initiates the infringement proceedings, the other party often tries to invalidate the patent in question.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Officially, the courts do not consider decisions from other jurisdictions. That said, the relative influence of the decision of a foreign court may be helpful, depending on:

  • the jurisdiction;
  • the similarity of the situation; and
  • the circumstances of the case in general.

More regularly, the lower courts are likely to consider prior decisions of higher courts in analogue cases (eg, in the appeal courts, the Cassation Court and the Supreme Court).

Damages and remedies

Can the successful party obtain costs from the losing party?

A successful party can recover costs from the losing party. The court determines recoverable costs on a case-by-case basis.

What are the typical remedies granted to a successful plaintiff?

A successful plaintiff will typically be awarded:

  • injunctions;
  • the recognition of a right;
  • damages (real or statutory);
  • the confiscation of infringing products; and
  • the publication of the court decision, if requested.

How are damages awards calculated? Are punitive damages available?

 A patent owner can and should claim damages. However, damages should be substantiated with accurate and authentic documentation, which is difficult in most cases. A patent owner can alternatively claim statutory damages for between Rb10,000 and Rb5 million, or twice the amount that the patent owner could have received if the infringer had signed a licence agreement. Patent owners are advised to carefully collect and safeguard all documentation that could prove the actual value of their patent (eg, all correspondence during negotiations, offers, draft contracts and proposals for licence agreements). Unsubstantiated claims are of no value in court.

The losing party must reimburse:

  • court expert fees;
  • official fees paid by the plaintiff; and
  • the other party’s reasonable attorney fees, which are determined by the court and are often based on local hourly rates and legal service agreements that the preveiling party is able to submit as evidence.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Permanent injunctions are common in successful patent enforcement lawsuits.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

First-instance decisions are typically issued within six to 10 months.

How much should a litigant plan to pay to take a case through to a first-instance decision?

In general, the total cost of an average case is between €10,000 and €50,000, depending on:

  • the complexity of the case;
  • the experts used;
  • the number of hearings; and
  • other similar factors.

Appeal

Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

The losing party in a first-instance case always has the right to appeal. The appeal may be filed within one month from the decision. Appellate proceedings last between three and six months, depending on whether a completely new examination is ordered by the appellate court.

Options outside court

Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Russian law stipulates that mediation should be used as an alternative dispute resolution method. Mediation proceedings may be initiated either out of court or during court proceedings.