This country-specific Q&A provides an overview of Patent Litigation laws and regulations applicable in Russia.
What is the forum for the conduct of patent litigation?
A patent infringement claim should be filed with the first instance court at the location of defendant. If single patent infringement case involves several defendants (e.g. manufacturer and seller of the infringing goods), then the case can be filed with the court of any of co-defendants’ location upon the choice of the plaintiff.
The respective court can be either a district court of general jurisdiction (if defendant or/and plaintiff are physical persons) or regional economic court (if defendant and plaintiff are legal entities or individual entrepreneurs).
Some regional economic courts in Russia have specialized panel of judges focusing on intellectual property. Usually plaintiffs in patent infringement cases choose Moscow or St.Petersburg courts via forum shopping available by buying suspected product in these major Russian cities.
What is the typical timeline and form of first instance patent litigation proceedings?
The typical timeline of first instance patent litigation proceedings in Russia in regional economic court is 5-9 months.
Patent litigation system in Russia has a clear bifurcation, i.e. patent infringement case and patent validity case (used as a defence by defendant) are being considered in different fora and cannot be joint in the same procedure. Article 1399 of the Russian Civil Code (hereinafter RUCC) provides, that invalidation action against an issued Russian patent (based on the dispute on patentability issues, new matter requirement violation or double patenting prohibition violation) is to be filed with the Russian Patent Office (hereinafter RUPTO) (Chamber for Patent Disputes division). If there is a dispute on the inventorship or ownership, such claim is to be filed with the IP Court.
The average timeline for consideration of invalidation actions filed is 4-7 months. This term is about the same for the invalidation action case consideration in the RUPTO (patentability dispute) and in the IP Court (inventorship/ownership dispute).
Can interim and final decisions in patent cases be appealed?
The first instance court decision (in economic courts) is not enforceable within 30 days as a rule (unless immediate enforcement is ordered by the judge as an extraordinary measure). An appeal can be filed within these 30 days with respective appeal economic court.
Appeal court proceedings involve re-check the matter of fact and the matter of law. New evidence from an appellant usually is not admissible in the appeal court, unless a party proves, it was beyond its control to present it in the court of the first instance. A party, defending the decision of the first instance, can provide new evidence to support their argumentation against the appeal. After appeal court ruling (which in patent infringement cases takes about 2-5 months after appeal filing) the decision of the first instance court is fully enforceable.
Further cassation appeal in a patent infringement case is to be filed with the IP Court. The cassation appeal proceedings involve check of the matter of law only. There is no evidence evaluation in the cassation proceedings. The cassation appeal proceedings in the IP Court usually take 2-5 months.
The indicated three stages in patent infringement case are ordinary proceedings, i.e. the consideration by the courts takes place without any permission. A court case can further have two extraordinary proceedings, which are the second cassation appeal and supervisory appeal. Both extraordinary stages are with the Supreme Court, and they are possible upon initial permission of the respective judge of the Supreme Court.
Which acts constitute direct patent infringement?
Pursuant to Article 1358 of the RUCC, the following unauthorised acts are prohibited:
– importing, manufacturing, use, offer for sale, selling, other introduction into civil turnover, or storing for these purposes of an infringing product;
– providing actions mentioned above with respect to a product obtained directly by means of a patented process;
– doing the same with respect to a device during the functioning (running) of which in accordance with its intended use the patented process is automatically effectuated;
– effectuation of a patented product.
Do the concepts of indirect patent infringement or contributory infringement exist? If, so what are the elements of such forms of infringement?
There is no general concept of contributory patent infringement in Russia. Some forms of indirect patent infringement are: protection of product obtained by patented process, protection on device which automatically performs patent process or protection of product intended to be used by patented indication.
How is the scope of protection of patent claims construed?
The scope of patent protection is defined by the patent claims (Art. 1354 of the Civil Code). To interpret the claims of an invention a specification and drawings may be used. The application doctrine of equivalence is directly specified by part 3 of Article 1358 of the RUCC, while the definition of equivalent feature is not defined in the law. The equivalency as a matter of fact is established based on explanations of an expert, if such features are 1) known in the art 2) known to be interchangeable 2) provide the same technical effect. There is no indication of the prosecution history estoppel for patent infringement cases in the written law or in case law. Meanwhile the Supreme Court of Russia has indicated in its several recent decisions on other subjects, that a party in court litigation proceedings should not go against facts established by this party. The other option to refer in court proceedings to the prosecution history estoppel is a defense of abuse of right which is a valid defense.
What are the key defences to patent infringement?
The key defenses in patent infringement case are:
statement that suspected product/process is out of the scope of patent protection;
proving the abuse of patent right (including references to the prosecution history estoppel);
the prior use of patented object i.e. the use or substantial preparation for the use of invention before patent priority (applicable if it took place in Russia only);
scientific and non-commercial use (Bolar exemption in particular). The arguments on patent invalidity can not be considered as a defense and should be filed separately.
What are the key grounds of patent invalidity?
Article 1398 of the RUCC stipulates the following grounds for patent invalidation (in full or in part):
lack of industrial applicability, novelty and/or inventive level;
insufficiency of disclosure of invention in the application;
double patenting (identical inventions with the same priority);
wrong inventorship or ownership.
There are some requirements for the valid grant of a patent in Russia, which are not reflected in the available grounds of invalidity upon which a patent may be revoked in Russia: lack of unity of invention, wrong attribution of priority.
How is prior art considered in the context of an invalidity action?
Russian patent law requires absolute world wide novelty. Prior art includes any information became public anywhere in the world before the priority of patent application (part 2 article 1350 of the RUCC), including but not limited to open use.
Russian patents and patent applications with earlier priority are included into prior art from the priority date, provided that they are published in the Russian language.
Meanwhile there is 6 months inventor’s grace period: the information distributed by inventor or applicant or from their consent shall not be cited against his invention, if respective application has been filed with RU PTO within 6 months (or with the first patent office – for Eurasian patent applications).
Can a patentee seek to amend a patent that is in the midst of patent litigation?
Article 1399 of the RUCC permits amending the claim by withdrawing independent claim (and dependent claims thereof). The RUPTO registers such amendment and makes appropriate publication based on petition of the patent owner irrespective of any pending litigation.
Third parties can oppose such amendment with the IP Court within three months after the respective party became aware of such an amendment due to the general rule of law.
The patent owner has the right to amend the claims with an inclusion of dependent claim(s) into respective independent claim during the invalidation proceedings to overcome objections on novelty and/or inventive level. The case law specifies that while amending the claims there is no possibility to include features from the specification, but only from the dependent claims. Since such amendments are done during the invalidation procedure, only a party involved into such procedure can object against such amendment and oppose it with the IP Court afterwards.
Is some form of patent term extension available?
In accordance with clause 4 of Article 1363 of the RUCC patents for pharmaceuticals products or pesticide/agrochemicals can be extended for the period calculated as the time from the filing date till obtaining of the first marketing authorization, deducted by 5 years, but not more than for 5 years. The extension request should be filed within 6 months from the patent grant date, or the first marketing authorization date (which is later). RUPTO issues an additional patent for the established time of extension. The decision of extension can be challenged within 3 months with the IP Court, arguing violations of the procedure. This term can be reinstated if opponent shows that he appealed within 3 months after receiving knowledge on the extension.
How are technical matters considered in patent litigation proceedings?
The technical matter can be studied either by expert witness appointed by the court, or by expert (specialist) brought by a party (and the party provides specialists’s opinion as evidence to the court). The patent infringement proceedings in the court almost always (unless the defendant agrees with a fact of the use of invention) involve expert witnesses, which are being appointed by the judge upon considerations of candidates provided by the parties. The judge has an option to appoint his own candidate. The judge can appoint a panel of experts (e.g. one expert from each party). The parties can propose their own questions to an expert, while the judge can approve or withdraw such questions. The expert is to study the questions set by the judge and to provide written opinion on those questions. The expert opinion is a evidence studied by the parties and discussed during the court hearings. If any party can show any discrepancies in the expert opinion provided, it can request cross-examination of the expert witness. The expenses on the expert witness are put on the parties, but it is being done via court deposit – so judge approves such payments. The losing party is to compensate spendings on witnesses in full.
Is some form of discovery/disclosure and/or court-mandated evidence seizure/protection (e.g. saisie-contrefaçon) available, either before the commencement of or during patent litigation proceedings?
The Russian procedural law does not have any procedure of discovery in civil litigation court proceedings. The party of court proceedings is to obtain evidence on its own. Meanwhile if a party of court proceedings can show to judge, that it made all proper efforts to obtain certain evidence from other party, and received a rejection – the judge can assist by issuing an order to provide such evidence to such party.
Are there procedures available which would assist a patentee to determine infringement of a process patent?
Paragraph 2 part 2 Article 1358 of the RUCC shifts the burden of proof on the defendant in patent infringement cases, based on patent related to process, if the suspected product is novel. In this case after the suspected product is confirmed to be identical to the product obtained by the patent process – then it is presumed to be infringing patent for process, unless the defendant proves the opposite.
Are there established mechanisms to protect confidential information required to be disclosed/exchanged in the course of patent litigation (e.g. confidentiality clubs)?
Part 2 Article 11 of the Arbitration Procedural Code states that the Court may satisfy a request for consideration of the court case in a closed hearings, if a requesting party shows, that some evidence may comprise trade secret or other confidential information. If the court declares hearings procedure as a closed procedure, the parties bear the obligation not to disclose and not to use without proper authorization the confidential information discussed in the closed hearings. The decision or other court ruling on such cases is not published, if it contains confidential information. Such mechanism operates effectively in Russia in patent disputes.
Is there a system of post-grant opposition proceedings? If so, how does this system interact with the patent litigation system?
An invention can be protected in Russia either by a Russian national patent (issued by the Russian Patent Office) or Eurasian patent (issued by the Eurasian Patent Office). The post-grant opposition proceedings exist for Eurasian patents only. Such opposition can be filed directly to the Eurasian Patent Office within 6 months after the grant and publication of an Eurasian patent. While post-grant opposition is being considered, no national challenge of the validity of the opposed Eurasian patent is allowed to be considered. So if patent owner files a patent infringement suit based on an Eurasian patent being under post-grant proceedings – there is a possibility to ask the Court to suspend court proceedings until the resolution of these proceedings, since defendant does not have defense to file an invalidation action in Russia. The court may provide such stay and is likely to provide it. Meanwhile for a Russian patent there is no post grant opposition proceedings, but only possibility to file an invalidation action (although it is an administrative proceedings before the Russian Patent Office first). Previously the Russian courts did not have legal possibility to provide a stay in an infringement action, if defendant files an invalidation action, but the Plenum of the Supreme Court as of April 23, 2019 No 10 clearly stated, that consideration of an patent invalidation action before RU PTO is a ground for a stay in a patent infringement procedure.
To what extent are decisions from other fora/jurisdictions relevant or influential, and if so, are there any particularly influential fora/jurisdictions?
The Russian case law provides that the validity and enforcement of Russian or Eurasian patents in Russia is absolutely independent from any analog patent proceedings. Parties may refer to positive decisions in foreign jurisdictions, judges even may look to the arguments of the foreign fora, but never refer to this in their decisions.
How does a court determine whether it has jurisdiction to hear a patent action?
Russian courts have only jurisdictions over Russian and Eurasian Patents (in respect to their force or validity in Russia). There is no provision in the law extending their jurisdiction for foreign IP titles.
What are the options for alternative dispute resolution (ADR) in patent cases? Are they commonly used? Are there any mandatory ADR provisions in patent cases?
Article 139 of the Arbitration Procedural Code provides that the parties of a court case may settle the case making a peaceful agreement to be approved by the court (in-court settlement), or to use the services of professional mediator. The Court must assist parties to find amicable solution. The parties of an infringement dispute can transfer the case for consideration of an arbitrage, or can also settle the procedure by an out-of-court agreement (resulting in recalling the suit). All these options are fully available to the patent infringement case pending before the court.
A patent validity case is much more limited in options to settle, since one of the parties in such proceedings is a governmental agency – the Russian Patent Office, which executes the administrative powers. Meanwhile, out-of-court settlements between the patent owner and opposing party may result in recalling of a pending action by one of the parties, or even be a ground for cancellation of RU PTO decision by the IP Court, if the patent validity is a circumstance of settlement.
What are the key procedural steps that must be satisfied before a patent action can be commenced? Are there any limitation periods for commencing an action?
Patent infringement court action with a claim for an injunction can be filed with the Court without obligatory pre-trial procedure. Meanwhile, a plaintiff must send a warning letter to defendant before claiming damages or material compensation for a patent infringement. Filing such patent infringement suit with damages compensation claim is permitted not earlier than 30 days after sending of the warning letter.
Which parties have standing to bring a patent infringement action? Under which circumstances will a patent licensee have standing to bring an action?
Patent infringement court action can be filed either by patentee or by an owner of exclusive license (such license is to be registered with the Russian Patent Office), unless the right to file the suit is withdrawn in said exclusive license.
Who has standing to bring an invalidity action against a patent? Is any particular connection to the patentee or patent required?
Any person can file an invalidity action against Russian or Eurasian patent, based on the lack of patentability or presence of new matter in the claim. Such «patentability» action is to be filed with the RUPTO. An invalidity action based on wrong inventorship can be filed with the IP Court only by an interested party (normally one who claims his own inventorship or otherwise economically suffers from wrong attribution of the inventorship).
Are interim injunctions available in patent litigation proceedings?
Interim or Preliminary injunction (PI) is provided as a possible measure to assure the rights of a plaintiff due to part 2 article 1252 of the RUCC, but current case law is rather negative on PI in patent infringement cases.
Due to article 90 of the Arbitration Procedural Code and clarifications of the Plenum of the former Supreme Arbitration Court as of October 12, 2006 No 55, difficulties in enforcement of future final decision may be caused by the lack of assets by a defendant or if defendant takes actions to lessen the amount of assets. These actions and threat should be proven by the plaintiff is he seeks for PI.
To prevent causing irreparable harm to the plaintiff, the Plenum says, PI should be targeted to keep status quo between the parties.
Therefore the Plenum rules that the courts when taking PIs should consider:
reasonability of the plaintiff’s requirement for PI;
probability of causing irreparable harm to the plaintiff in case PI are not taken;
ensuring balance of interests of the parties;
preventing infringement of public interests and interests of the third parties by taking PI.Besides, the court should estimate whether this very PI is proportional to the claims and how this very PI is going to ensure the claims.
Refuse in preliminary injunctions is appealable to the appeal court.
The court cannot refuse in the request for preliminary injunction in case the plaintiff provides counter secure. Though, this counter secure would be placed in addition to one of the two requirements above, not instead of them.
What final remedies, both monetary and non-monetary, are available for patent infringement? Of these, which are most commonly sought and which are typically ordered?
The final remedies available in the RUCC article 1252 for patent infringement suits are: permanent injunction,
order to destroy infringing goods or facilities used or mostly aimed for manufacturing infringing goods,
publication of the Court ruling on expenses of defendant,
reinstatement of damages or monetary compensation for patent infringement.
The most commonly sought and typically ordered are permanent injunction and reinstatement of damages or monetary compensation for patent infringement.
On what basis are damages for patent infringement calculated? Is it possible to obtain additional or exemplary damages?
The Russian law specifies, that the damages can be claimed in full. Damages can be calculated as real damage (which is unlikely to be suffered in patent disputes) and lost profits.
Lost profits can be:
reasonable royalty rate,
losses suffered by the patent owner due to decrease of original patented product sales, when the counterpart entered the market with infringing product,
or all the profits of the defendant received from selling of the infringing product (Article 15 of the RUCC).
The standard of proof for the amount of damages is grounded and reasonable explanation.
The court can reduce the damages claimed, if the amount is not properly grounded. Alternatively the plaintiff may ask the court to provide compensation for patent infringement. Such compensation does not require to prove exact amount of damages, but needs just showing to the court the scale of infringement and its character. The upper amount of compensation is statutory limited to 5 million roubles (around 90 thousand USD).
Alternatively, a compensation can be calculated as double reasonable royalty rate. Reasonable royalty rate are to be proven by examples from the market, researches or by expert opinion.
How readily are final injunctions granted in patent litigation proceedings?
The current Russian case law shows, that if patentee is successful in proving infringement, final injunction is usually provided by the court. The legal concept of public interest is limited to the possibility to seek compulsory licensing in some cases. The court cannot order for payment of royalty instead of permanent injunction on its own, neither can a plaintiff substitute permanent injunction claim to monetary claim, since such substitution is considered a change of subject matter and ground of a suit, meanwhile changing of both is prohibited.
Are there provisions for obtaining declaratory relief, and if so, what are the legal and procedural requirements for obtaining such relief?
The Russian patent law does not provide any ground to seek declaratory relief in the court as a protective measure. Meanwhile there is no procedural law prohibition for filing of such a suit. So some cases have been filed, seeking confirmation from the court on non-infringement of certain patent, as a measure to protect legitimate economic interests. Current case law on declaratory relief in Russia is negative, and the courts reject suits filed, stating that no right has been infringed yet, and thus there is no subject for the suit.
What are the costs typically incurred by each party to patent litigation proceedings at first instance? What are the typical costs of an appeal at each appellate level?
The costs vary upon the complexity of litigation (e.g. number of court hearings in the first instance can be in the range of 3-15, there could be 1-7 experts involved, etc.). So the range of costs for the first instance patent infringement case would be from 20 to 150 thousand USD.
Appeal proceedings are far less time and effort consuming, so typical costs would be 15-40 thousand USD for an instance (usually case goes through two instances).
Can the successful party to a patent litigation action recover its costs?
Article 110 of the Arbitration Procedural Code states that the court orders loosing party to compensate costs of the winning party. The costs include compensation in full of court fees and expert fees, while expenses spent on attorney’s services is to be compensated in reasonable amount, i.e. usually court substantially deducts the attorney’s fee stating they are not reasonable. Normally court provides 7-20 thousand USD as partial recovery of attorney fees for the first instance proceedings in patent infringement cases. The Court should rule on its own on putting the costs for official fee and expert fee in the decision, while the matter with distribution of attorney’s fees is decided by the court only on request of a party. If this matter is not resolved by courts, an appropriate request can be filed with the court of the first instance within 6 months after the final court act on the substance came into force.
What are the biggest patent litigation growth areas in your jurisdiction in terms of industry sector?
The patent litigation in Russia most often happens in pharmaceuticals, industrial machinery, food technology and electronics.
What do you predict will be the most contentious patent litigation issues in your jurisdiction over the next twelve months?
Definitely patent litigation in pharmaceuticals is going to be the most intensively litigate sector in patents in 2020. In particular, the outcome of pending court cases on compulsory licensing between a Russian generic company (seeking compulsory license) and several largest international originators is very important.
Which aspects of patent litigation, either substantive or procedural, are most in need of reform in your jurisdiction?
We think that lack of legal provisions over indirect (contributory) patent infringement in the Russian patent law is a serious limitation. Provisions on compulsory patent licensing need to be fairly addressed as well.
What are the biggest challenges and opportunities confronting the international patent system?
We think that finding proper balance between private and public interests in patent system on national and international level is still the main challenge of the system.