This dispute over the validity of a patent for invention lasted almost two years and a half. It started with the receiving by Rospatent (the Russian Federal Service for Intellectual Property) in December 2017 of an appeal against patent No. 2588634 and finished (at least for now) with the rendering by Rospatent of a decision on 20 May 2019 to invalidate the patent in part and issue a new patent with the amended claims. During consideration of the dispute, both Rospatent and the courts twice changed their opinions on the possibility and scope of patent amendments. The Supreme Court agreed, which is rare in such disputes, to take it into consideration and drew a line in the dispute between Rospatent and the Intellectual Property Rights Court.

Disputes over the patentability of an invention which arise when considering applications by the patent office, or when challenging the patents already issued, are perhaps of the greatest interest in the patent practice. It is such disputes where the patent office’s positions on any disputable issues are expressed and gaps in patent law are identified. The first instance for consideration of these disputes is Rospatent itself, namely, panels of the Chamber for Patent Disputes, which are specifically formed for such consideration; if parties disagree with the decision of Rospatent, the dispute is referred to a specialized court – the Intellectual Property Rights Court (hereinafter referred to as “IP Court”) – the decisions of which, in turn, may be challenged in the Supreme Court.

Before proceeding to the description of the twists and turns of a particular dispute, we would like to explain the reasons for the difficulties that the parties to the dispute faced.

The question of the possibility and scope of amendments to the claims and description of the invention while challenging the patent’s validity was in dispute in the case under consideration. The legislation gives no express or clear answer to this question.

The question of the possibility and scope of amendments to the claims and description of the invention while challenging the patent’s validity was in dispute in the case under consideration. The legislation gives no express or clear answer to this question.

The law allows an applicant to amend the application’s documents at the stage of its expert examination in Rospatent (before a decision on the application to issue or to refuse to issue a patent is rendered), but such amendments, first, should not result in a change in the essence of the invention, that is, in the appearance of features in the claims, which were absent in the application’s materials as initially submitted, and, second, it may be amended only in response to a relevant expert’s request or in response to the prior art search report received.

As opposed to more or less clear provisions of the law on amending the description and claims during expert examination of the application, as to the patent already issued, the law says only that obvious mistakes and clerical errors may be corrected in a patent. In addition, the law stipulates that, when challenging a patent, it may be invalidated in full or in part. At the same time, the law does not explain how the patent may be amended when it is invalidated in part.

The rules governing the procedure for consideration of appeals against a patent in Rospatent oblige the panel considering the dispute to propose that the patent holder amend the claims if, in the panel’s opinion, these amendments would allow keeping the patent, at least in part.

As a rule, such amendments expect exclusion of the claims disclosing a non-patentable item and (or) inclusion of the features from the dependent claim in the independent claim.

The patent office and court practice of considering disputes over a patent’s validity developed certain positions on patent amendments. In particular, Rospatent and the IP Court share a common approach that a patent may only be amended towards narrowing the scope of protection granted by it, and the claims cannot be amended by including the features (absent in the claims) from the description.

In the dispute presented here, the courts developed a legal position, in accordance with which it is acknowledged that, in certain cases, a patent holder, when his patent is challenged, may amend not only the claims, but the description as well.

In the dispute presented here, the courts developed a legal position, in accordance with which it is acknowledged that, in certain cases, a patent holder, when his patent is challenged, may amend not only the claims, but the description as well.

The events developed as follows. Patent No. 2588634 was issued with the claims for two embodiments of a process of producing a “ceramic proppant” involving the use of a mixture of a certain content. In order not to make the description more difficult by using special technical terminology, we will figuratively describe the mixture content under the invention as follows.

[Embodiment 1]

  • Component A in the amount of 30–50% of the mass of the mixture;
  • Component B in the amount of 50–70% of the mass of the mixture; and
  • Component C in the amount of 1–10% of the mass of the mixture.

[Embodiment 2]

  • Component A in the amount of 30–50% of the mass of the mixture;
  • Component B in the amount of 50–70% of the mass of the mixture; and
  • A mix of components C and D in the amount of 1–10% of the mass of the mixture with component D contained in the mix in the amount from 0 to 100%.

An appeal was filed against the patent, which was reasoned by the fact that the invention did not meet the “industrial applicability” criterion, namely, it was not implementable, and the “inventive step” criterion; and on the basis of inconsistency of the description of the patent to the requirement for complete disclosure of the invention being sufficient for its implementation.

The notice of appeal, first, stated that – just mathematically – Embodiments 1 and 2 allowed a situation where the components of the mixture made up more than 100% of its mass in the aggregate, which was impossible in principle, and in addition, Embodiment 2 allowed a situation, where there was no component D (0% of component D) or C (100% of component D) in the mix of components C and D, which was a logical mistake. Second, the notice of appeal drew attention to the fact that there was no example given in the description that would correspond to the quantitative content of component B. Indeed, the content of component B is 47–48%, but not 50–70% as indicated in the claims, in all examples given in the description.

HAVING DISAGREED WITH THE DECISION OF ROSPATENT, THE PATENT HOLDER FILED AN APPEAL WITH THE IP COURT. 

Although Rospatent rejected the argument that the invention did not meet the “inventive step” criterion, it nonetheless agreed with other arguments of the appeal and rendered a decision to invalidate the patent in full, despite the fact that the patent holder considered the shortcomings of the description and the claims as “insignificant” and blamed the panel for not proposing to adjust the claims. As to the latter, Rospatent noted that the panel did not spot the opportunity to adjust the claims, since inclusion of the features from the dependent claims in the independent claim would not eliminate the causes that served as a basis for the panel’s conclusion. Having disagreed with the decision of Rospatent, the patent holder filed an appeal with the IP Court.

When considering the dispute in the first instance, the IP Court pointed out that, during expert examination of the application, Rospatent established no inconsistencies in the application’s documents under the disclosure requirement. In this regard, the court noted that the patent holder could not be restricted in its rights and lose the rights to the invention under the patent only because Rospatent had improperly performed its duties during expert examination, in violation of its duty it had not detected violations of the established requirements in the application’s documents and had not informed the applicant of them, thereby providing him with the opportunity to amend the description and claims before a decision on it was rendered. As a result, at the stage of consideration of the appeal against the patent, the applicant (beyond its will and not through its fault) was actually deprived of the opportunity to adjust the application’s documents.

Such a situation, in the court’s opinion, is unacceptable. Rospatent should have substantiated why the doubts about disclosure arose only when considering the statement of opposition and why it came to the conclusion to the contrary.

At the same time, the court noted that civil legislation was based, among other things, on inviolability of ownership, binding unhindered exercise of civil rights, guaranteed redress of infringed rights, and their judicial protection. The court also stated that Article 10 of the Patent Law Treaty (to which Russia is a party) stipulated that, when permitted by the applicable national legislation, the patent holder should be provided with an opportunity to amend the application’s materials. Having interpreted the norms of national civil legislation and international treaties to which the Russian Federation is a party (the Paris Convention for the Protection of Industrial Property and PLT) in a consistent manner, the court made the following conclusion.

Since the law allows amendments to the application’s documents before a decision on the application is rendered, and this right is conditioned upon the relevant request from Rospatent, if there is no such request, the patent holder retains its right to make amendments in case there is a threat of invalidation of such patent.

The gap existing in the regulation of the relevant legal relations in the Russian legislation does not evidence that a right holder has no such right. A different interpretation of the law would be contrary to the basic principles and international standards in patent law, which are envisaged by the above international treaties.

The court noted that Rospatent did not prove that there were circumstances under which amendments to the claims would not eliminate the causes that served as a sole basis for invalidation of the patent in full.

The court also stated that the rules for consideration of appeals should apply in accordance with the provisions of the law — Part Four of the Civil Code — and, therefore, could not deprive the applicant (patent holder) of the right to amend the claims or description of the invention.

Thus, the IP court (first instance) laid down a new legal position, pursuant to which, when considering appeals against a patent, amendments or adjustments may be made both to the claims and to the description of the invention.

Rospatent filed a cassation appeal with the Presidium of the IP Court, insisting that neither the law nor the rules for consideration of appeals provided for an opportunity to amend the description when considering an appeal against a patent and that permissible amendments to the claims of the challenged patent, in the Rospatent’s opinion, could not change the conclusion on invalidity of the patent due to the incomplete disclosure of the invention in its description.

The Presidium of the IP Court, agreeing with the arguments of Rospatent, reversed the decision of the court of first instance and dismissed the patent holder’s appeal, having upheld the decision of Rospatent to invalidate the patent in full. In doing so, the Presidium of the IP Court proceeded from the fact that no amendments to the description of the patent already issued when considering an appeal against a patent were provided for by the law or by the rules, and the provision of the Patent Law Treaty was not directly applicable.

The patent holder appealed against the decision of the Presidium of the IP Court to the Supreme Court, which took the appeal for consideration by the Judicial Chamber on Economic Disputes.

Having studied the files of the case, the Chamber of the Supreme Court reversed the decision of the Presidium of the IP Court and supported the conclusions of the court of first instance. Among other things, that Rospatent did not examine which features in the challenged patent were significant and whether the deviations in the quantity of component B (existing in the examples) from that given in the claims had an effect on achievement of the claimed technical result.

As to applicability of the PLT provisions, the Supreme Court confirmed that the corresponding provision of Article 10 of the Treaty was directly applicable. As a result, the Chamber of the Supreme Court confirmed the conclusion made by the court of first instance that the rules for consideration of appeals against patents should be applied taking into account the fact that the applicant (right holder) may amend both the claims and description of the invention. However, such amendments should not change the essence of the invention.

Thus, the Supreme Court upheld the decision of the court of first instance on invalidation of the Rospatent’s decision, for which reason Rospatent had to re-consider the appeal against the patent. During reconsideration of the appeal, the patent holder submitted to Rospatent supplements to the description and the amended claims of the invention. Based on the results of reconsideration of the appeal, Rospatent rendered a decision to invalidate this patent in part and to issue a new patent with the amended claims.

Amendment to the claims consisted in a change in the range of the quantity of components A (30–49% instead of 30–50%) and B (50–69% instead of 50–70%) and in a change in the range of the content of component D (1–99% instead of 0–100%). It may be noted that such amendments actually eliminate the first shortcoming of the previous claims, consisting of the fact that the components of the mixture made up more than 100% in the aggregate and that one of components C and D was absent in the mix of these components.

As to inconsistency between the values of the quantity of component B in the claims and in the examples from the description, when reconsidering the statement of opposition, Rospatent admitted that the examples given in the description confirmed achievement of the technical result by the invention despite the fact that the quantitative content of the mixture’s components did not correspond to the ranges of values specified in the claims, including the amended claims.

Summing it all up, the following may be noted.

The decisions rendered by the courts, including the Supreme Court, are essential for the patent practice. Such cases, when shortcomings of the description not detected by Rospatent during expert examination of applications are found later when the patent is challenged, are not rare and, for this reason, they need additional legal regulation, for example, in a law or rules. And, although the Russian legal system is not a case-law system, the legal positions developed by the courts, particularly by the Supreme Court, in a particular case, are certainly taken into account both by Rospatent and by the Intellectual Property Rights Court when resolving similar disputes.