Introduction
Criteria of use
Evidence
Extending patent protection
Comment


Introduction

Russian patent legislation provides for two patent systems: national, granting Russian patents; and regional, granting Eurasian patents valid in Russia and several other countries in the Commonwealth of Independent States. As such, two independent authorities exist: Rospatent, which considers and grants Russian patents; and the Eurasian Patent Organisation, which considers and grants Eurasian patents. Both authorities are based in Moscow.

There are no substantial differences between Russian and Eurasian patents, due to the harmonisation of the two systems, which has removed most of the discrepancies that previously existed. For example, in Russia, different provisions governing equivalent features were previously used for Russian and Eurasian patents in order to cover possible alternatives not disclosed in the patent, and to extend the scope of patent protection. However, even with the recent harmonisation, the issue of how to use properly the benefits provided by the doctrine of equivalents remains unclear.

The doctrine of equivalents is not directly defined in Russian patent legislation, but the principle of equivalent features is applicable to both Russian and Eurasian patents, and may be invoked where it is necessary to establish the use of an invention in a particular product or process – in particular, where this is required to prove patent infringement.

Criteria of use

Under the Civil Code (Part IV), an invention or utility model is deemed to be used in a product or method if the product or method uses every feature of the invention or utility model that has been specified in an independent claim, or equivalent features that were recognised as such in the relevant field before it (ie, the invention or utility model) was first used. According to Item 2 of Article 1358 of the Civil Code, the following activities are deemed, without exception, to be 'use' of an invention or utility model:

  • the import, manufacture, application, offer for sale, sale, other introduction into civil law transactions or storage for such purposes of a product for which the invention or utility model is used;
  • actions (described in Item 2(1)) in respect of a product produced directly by a patented method – if such a product is novel, an identical product will be deemed to have been produced by the patented method, unless proven otherwise;
  • actions (described in Item 2(2)) in respect of an apparatus into whose operation (ie, exploitation) the patented method has been automatically implemented; and
  • the implementation of a method in which the invention is used.

In view of existing practice, the following requirements are generally considered when applying the doctrine of equivalents for Russian patents:

  • The term 'equivalent' is defined as an adequate and relevant replacement serving the same purposes and providing the same effect; therefore, 'equivalent feature' refers to an adequate and relevant replacement for a particular invention with which it is clear and obvious to a skilled person that the same purpose and effect can be achieved. This means that any skilled person would use the equivalent if faced with the need to replace the feature initially included in the independent claim, and that such equivalent provides no improvements or disadvantages for the particular invention in comparison with the original feature. Furthermore, according to court practice, the proposed equivalent feature should not extend the scope of patent protection to cover publicly known prior art technical solutions, especially if they are also protected by patents (foreign or domestic), or if the equivalent causes the particular invention to fail to meet the novelty or inventive step patentability requirements.
  • Any equivalent feature that serves the same purpose and provides the same result as the original feature should be recognised as such in the relevant technological field before the particular invention (or utility model) comes into use. This requirement refers to the date on which the equivalent became known and could be applied to a particular invention for use as an equivalent feature. In this respect, under Russian patent legislation, the equivalent can become known not only from prior art, but also before first use of the invention.

However, the question arises as to whether the start-of-use date is the date on which the invention is patented or the date on which any use of the invention becomes protected by the patent. Unfortunately, this question remains unanswered and neither Russian patent legislation nor court practice has provided a suitable explanation.

Evidence

The scope of patent protection can potentially be significantly extended by the proper application of the doctrine of equivalents and by providing sound arguments and evidence supporting a proposed equivalent. In general, any instance of use of an invention as stipulated in Item 2 of Article 1358 may be considered the starting date of use, but it is necessary to prove both the use and the date on which use started, bearing in mind that the judge may reject any questionable evidence. Furthermore, it is practically impossible to obtain evidence from an opposing party, even in court. In this respect, most patent disputes depend on forensic examination results, in which one or several independent experts provide conclusions regarding the use of features and their equivalents. Each party may propose a candidate expert for the forensic examination, who can be appointed by the court if the judge decides that such an independent opinion is advisable as additional evidence. The results of many court cases have depended on the conclusions of forensic examination, as judges usually rely on evidence provided by independent experts.

Extending patent protection

The requirement that the equivalent feature be recognised in the relevant field before the invention comes into use provides the possibility to extend the scope of patent protection – for example, if a patent is obtained for a composition and a new alternative substance/ingredient becomes known after the initial patent application has been filed, or even after the patent has been granted but before the particular invention has been used. Furthermore, unauthorised use of a patented invention may also be considered as the starting date of use. Therefore, the scope of patent protection can be officially extended by use of equivalent features that become known not only from the prior art of the particular patent. This provision is particularly valuable for pharmaceutical inventions with respect to conflicts between originators and generics.

Comment

The examples of 'use' listed in Item 2 of Article 1358 directly constitute patent infringement if the particular patented invention (or utility model) has been illegally used without the patentee's consent. Therefore, companies should take careful note of any IP rights that may be infringed by their activities and be aware of the role of the doctrine of equivalents in extending the scope of patent protection.

Moreover, it is advisable to characterise an invention by features that may be replaced by equivalents.

In order to prove the adequacy and relevance of an equivalent feature for a particular invention, it is necessary to provide proper sources and references (eg, documents and product samples), and to prove the date of first use. Such evidence may be from prior art for the particular invention and need not be publicly known (ie, published or demonstrated).

Regarding the Eurasian patent system for Eurasian patents, 'equivalence' is defined by Rule 12 of the Patent Regulations of the Eurasian Patent Convention: when defining the scope of patent protection, due account will be taken of each feature of the invention included in an independent claim, as well as features equivalent thereto in cases provided by the national legislation of contracting states. Thus, in Russia, the doctrine of equivalents is applied equally to Russian and Eurasian patents.

For further information on this topic please contact Yuri Pylnev at Baker & McKenzie - CIS Limited by telephone (+7 495 787 2700), fax (+7 495 787 2701) or email (yuri.pylnev@bakermckenzie.com).