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1. INVALIDATION of PATENT in RUSSIA as an effective Defense: Current Situation and Prospects www.sojuzpatent.com

2. PATENT PROTECTION OVER RUSSIA Russian Patent or Eurasian Patent St. Petersburg Moscow

3. EA EURASION PATENT Eurasian Patent Convention entered into force on August, 1995 • Regional convention providing protection for inventions • protection over territories of up to 9 former USSR republics* • protection by one single patent in the Russian language • no indication of countries during the application prosecution • no validation/translation of patent in national patent offices • cost efficient if patent protection in more than 1 country Eurasian Patent Office is located in Moscow, Russia * - Member states: Azerbaijan, Armenia, Belarus, Kazakhstan, Kyrgyzstan, Moldova (left in April 2012, but earlier filed applications are valid), Russia, Tajikistan, Turkmenistan

4. LT BY AM LV RU KG EE MD TM AZ KZ UA TJ GE UZ POST-SOVIET STATES and Regional PATENT CONVENTIONS EPC EAPC

5. EA RU CO-EXISTENCE OF Russian and Eurasian Patents • Art.1397 of the Russian Civil Code provides that: • Eurasian patent and Russian patent for identical inventions with same priority date can co-exist • shall be used with observing interests of all partiesif belong to different assignees • shall be licensed together if belong to one and the same assignee

6. Patent Invalidation as Defense in Infringement Suit • The Russian law does not permit to have patent invalidation trial (for lack of patentability) directly in the Court but first the invalidation claim must be filed with the Chamber for Patent Disputes of the RU PTO • The invalidation claim can be filed in the RU PTO anytime after patent is issued and published while it is in force (planned amendments to the law permit invalidation of lapsed patents also) • Infringement case is not suspended if invalidation action against patent has been filed in the RU PTO • The terms of consideration within Chamber for Patent Disputes of the RU PTO are rather short 4-7 months so invalidation case is usually faster than of infringement

7. Procedure of invalidation of the Russian invention or utility model patent • Grounds: 1) New matter in the granted claims • 2) Lack of patentability (novelty, inventive level and industrial applicability for inventions) • Peculiarities: the invalidation action filed can not be amended and is considered as filed. New grounds can be filed as separate new invalidation action • If some inventions of the multiple claims are found non-patentable the patent holder is invited to amend the claims and patent is recognized invalid in part • Decision is announced after oral hearings but in writing it is being prepared within two months after the hearings

8. Procedure of invalidation of Eurasian patent • Within 6 moths after issuance and publication Eurasian patent can be opposed within the Eurasian Patent Office before the ad hoc panel of 3 experts. Decision of such panel is to be confirmed by the President of the Eurasian Patent Office. Such decision revokes Eurasian patent for all member states. • After 6 months opposition term has expired Eurasian patent is to be invalidated in every member states according to it National Legislation. I.e. in Russia it can be invalidated in the chamber for patent Disputes of the RU PTO. Decision of each body is for each country only.

9. The legal consequences of successful invalidation procedure • The invalidation decision of the RU PTO (Chamber for Patent Disputes) invalidates patent from the filing date (i.e. retroactively) not from decision date • If infringement suit based on this patent is being considered simultaneously (in parallel)– the court case is to be dismissed (no infringement of invalid patent can be recognized) • If infringement claim based on this patent previously has been satisfied – the Court decision is to be re-considered and over-ruled based on newly opened matter (invalidation fact). • The invalidation decision of RU PTO is immediately in force even if it has been lately appealed in the court

10. CURRENT SYSTEM OF ARBITRATION COURTS IN RUSSIA – system of consideration of patent infringement cases Supreme Arbitration Court (supervising) Regional Arbitration Court (first instance- 81) 4-12 months Appeal Arbitration Court (second or appeal instance-20) 2-6 months Federal District Arbitration Court (third or cassation instance -10) 2-4 months

11. CURRENT SYSTEM OF ARBITRATION COURTS IN RUSSIA – system of consideration of appeal on the Chamber for Patent Disputes Decision Supreme Arbitration Court (supervising) Moscow City Arbitration Court first instance Appeal Arbitration Court for 9 Circuit 2-nd instance Moscow Federal District Arbitration Court 3-d instance

12. The newly adopted system of patent disputes consideration in Russia (to be established in 2013)

13. Invalidation of patents in Russia -statistics • The annual amount of invalidation cases considered by the Chamber for Patent Disputes is within: • Inventions -227 in 2010, 347 in 2009 (max) • Utility models- 106 in 2008, 140 in 2009 (max)

14. Peculiarities of invalidation procedure – statistics and results • In average in the years of 2009-2011 about 25-30 percent of invalidation actions have been satisfied by the Chamber for Patent Disputes (patents have been invalidated). So the patents issued are rather stable • The statistics shows that Eurasian patent in the RU PTO can be invalidated easier than Russian invention patent • The statistics shows that appeal against RU PTO decision in the Court is successful only in about 15-20 percent

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