An extract from The Patent Litigation Law Review, 3rd Edition

Procedure in patent enforcement and invalidity actions

i Overview of the Bifurcated System

In patent-related matters, there are two independent forums that merge at the appellate level in Russia.

Patent infringement actions are first commenced in the commercial courts, and at the second level of appeal, make their way to the IP Court. From there, cases move on further appeal to the Supreme Court as explained in more detail in Section III.ii.

Proceedings to revoke issued patents are first filed in the Patent Chamber within the (ROSPATENT). The first appeal from a decision of the Chamber is heard by the IP Court. A further cassation appeal may be heard by the Presidium of the IP Court, and from there on further appeal to the Supreme Court.

Each proceeding, for infringement and for validity, is independent from the other. The overall process is commonly referred to as a bifurcated patent system.

Until 2014, the highest court of appeal, in IP and commercial matters, was the Supreme Arbitration Court. In 2014, the Supreme Arbitration Court was liquidated and all of its powers were vested into the newly reconstituted Supreme Court, which is located in Moscow. Decisions of the IP Court, which is part of the Arbitration Court, are now supervised by a 30-judge Economic Collegium that is part of the redefined Supreme Court.

ii Practice and Procedure in Patent LitigationProcedural LawOverview

There are about 81 commercial courts that hear patent litigation infringement actions in the first instance. The commercial courts of first instance are courts of general jurisdiction for all commercial matters. They are not IP-specialised courts. A single judge hears a patent infringement case in the first instance. There is no jury system. Statistically, the majority (as much as 80 per cent) of patent-related disputes are tried in the Moscow City Commercial Court because qualified IP professionals and the parties themselves are most often located in the region.

There are 20 commercial courts of appeal. Appeals in infringement cases from the first instance commercial court decision of the single judge are heard by three judges of the commercial courts of appeal. The panel of judges is empowered to review the record and render what it deems to be the correct decision in fact and in law. Then there is the second appeal to the IP Court. The appeal to the IP Court is a cassation appeal. On a cassation appeal, the presiding cassation court does not review the case de novo, as the lower courts did. Its jurisdiction is confined to reviewing the lower court decision for legal correctness.

An additional appeal against the ruling of the IP Court, acting as a cassation court, may be heard by the Supreme Court, provided that leave to appeal is granted by three judges of the Supreme Court. The Supreme Court hears a case only if the case severely violates an applicant's rights due to the wrongful application or violation of a material or procedural law by a lower court. In practice, the Supreme Commercial Court (SCC) hears a case only if a lower court ruling is inconsistent with or negatively affects the established court practice.

There can be both civil and criminal liability for patent infringement. The latter arises pursuant to the Article 147 of the Criminal Code in instances in which the infringement has resulted in significant harm to the patentee or has been committed by a group in conspiracy or by an organised group. There are no customs or border measures available for patent infringement as there are in relation to counterfeiting of trademarks or copyright infringement. Criminal charges are brought by the Investigative Committee of the Russian Federation. Possible criminal sanctions for patent infringement include up to five years of imprisonment. Although there have been no recent criminal cases involving patents, there are many each year in the copyright field, usually involving piracy, and some have resulted in imprisonment. Therefore, it is statistically unlikely but not inconceivable that imprisonment might occur in a patent case.

Patent revocation proceedings are first initiated and tried in the Chamber for Patent Disputes, a quasi-administrative body associated with ROSPATENT, and is headquartered in Moscow. Appeals from decisions of the Patent Chamber are heard in the IP Court.

On an appeal of a patent revocation decision from the Patent Chamber, the IP Court is entitled to appoint an expert to review the case and provide an opinion regarding validity based on his or her own expertise, without regard to the Patent Chamber decision. The IP Court may then review the lower Patent Chamber decision in the context of the expert opinion it commissioned and decide on the proper outcome. That decision may be further reviewed for legal correctness by the Presidium of the IP Court, acting as a cassation court.

In addition to the above circumstances, the IP Court may also act as a court of first instance with competence over the following subject matter:

  1. cases contesting legislative acts of federal executive authorities that affect a claimant's rights and legitimate interests in relation to the protection of patents;
  2. cases to determine issues regarding the proper inventor and owner of a patent; and
  3. cases contesting nonnormative legal acts, reviewing decisions, and reviewing refusals to take action by ROSPATENT.

A defendant may not allege invalidity of a patent as a defence to an allegation of infringement in a court action and may not counterclaim in a court action or file a parallel court action to declare a patent invalid or not infringed. A challenge of invalidity by way of revocation proceeding must always be first raised in the Patent Chamber.

Representation

A lawyer or patent attorney duly empowered to represent a party under a properly executed power of attorney may represent a party in patent infringement proceedings and revocation proceedings.

The evidentiary processPre-complaint discovery/fact-gathering

The plaintiff in an infringement action bears the burden of proving the allegations put forward in the statement of claim by way of admissible evidence. Such evidence is almost entirely documentary in nature and should accompany the filing of a statement of claim or defence, as the case may be. In practice, the concept of discovery of documents and witnesses is essentially not provided for and is not required or permitted. In view of this, the plaintiff's burden of proof is a very onerous one because the plaintiff must make out its case almost entirely from documents that it has assembled from various sources and in respect of which the defendant cannot be directly asked any questions. As indicated below, it is possible to use evidence from other court proceedings in which a final decision has been rendered but it is within the discretion of the judge to accept.

In June 2016, it became necessary for a prospective plaintiff to issue a demand letter at least 30 days before any action for infringement could be instituted. That obligation was slightly modified in 2017 such that a demand letter is only required when monetary compensation is being sought and not when, for example, only a preliminary or permanent injunction is sought. It is thought that, at a minimum, the notice should provide: the name of the patentee and identification of the patent in question; the name of the accused infringer or infringers; a brief summary explaining the acts in question and how they constitute infringement; the relief to which the patentee believes it is entitled; a time limit for response by the recipient; and advice recommending settlement failing which a court action will be instituted.

Post-complaint discovery/fact-gathering

No discovery by deposition exists in Russia. There is no rule forcing parties to disclose all relevant documents or information other than what a party chooses to file to support or refute an allegation. The law does provide a right to file a motion with the court requesting the other party to provide evidence and documents in instances in which it can be shown that the evidence is not available to the moving party; however, such requests are seldom granted. In practice, there is no effective procedure to obtain documents, for example to prove that a process is being carried out in a plant or to prove the extent of revenues a defendant has generated in connection with an infringing act. This affects the extent to which a patentee can reasonably predict the damages it might recover. As a result, damages awards are usually quite nominal and typically less than US$10,000.

Another noteworthy observation is that witnesses are not commonly called or required to testify in patent-related disputes, save for court-appointed experts who file reports and can be questioned thereon.

It is possible to obtain and use evidence from earlier court proceedings, in Russia or elsewhere, in which a final ruling was already issued, but it is within the Russian judge's discretion whether to accept it and, if accepted, what weight to give that evidence.

Evidence at trial

In infringement cases, trials at the first instance are by judge alone, without a jury. The record before a judge will typically include:

  1. a copy of the patent;
  2. a certificate of good standing relating to the patentee;
  3. samples of the product alleged to infringe, along with any publicly available support materials, such as user manuals, published specifications, and so forth;
  4. documentary proof regarding the availability of the product in Russia;
  5. any third-party documents that are officially obtainable and that tend to prove infringement; and
  6. an expert report of the plaintiff showing what the salient features of the impugned product are (and possibly a patent attorney's expert opinion showing that the product falls within the claims).
The use of experts

Experts play an important role in patent-related disputes in Russia because the courts in most cases place substantial weight upon the expert's report. Often, the parties attach preliminary expert opinions to the statement of claim, or defence. Such expert opinions are considered as evidence submitted by a party. In many cases, the court itself also appoints an expert. The parties may suggest the expert candidates to the court, as well as the technical questions to be resolved.

Parties to the trial have a right to suggest experts or expert organisations to act as witnesses. Resort to an expert, sometimes referred to as a specialist, may also be made at the court's initiative. In either case, the experts should have competence in the technical field in question. Typically experts are patent examiners or university professors with backgrounds in science and engineering. They would not be lawyers. The expert may not opine on the issue of law. The expert may be summoned and questioned at trial by both parties at the request of a party or on the court's own initiative.

Preliminary injunction

A court may grant a preliminary injunction before the statement of claim is filed. The proceeding is ex parte. The law does not provide for any specific type of evidence to support a request for a preliminary injunction. If a preliminary injunction is granted, the statement of claim must be filed within 15 days of the injunction order. If no statement of claim is filed, the injunction is withdrawn. Courts will grant such injunctions if it can be shown that it would be difficult or impossible to enforce a court ruling without the injunction or to prevent irreparable harm faced by the defendant. Therefore, the submissions and evidence should meet this burden.

A court may also grant an injunction after the infringement complaint is filed. Preliminary injunctions in patent infringement cases are seldom granted.