Protection of patent rights.

What are patent rights?

Patent rights are intellectual rights that usually belong to the owners of industrial designs or useful models and inventions. A patent is a document that confirms the exclusive right to a protected object. The patent rights of the author of a patent involve exclusive rights (the right to use and transfer a patent, etc.), as well as specifically the right of authorship (the right to be considered as the author of an object).

Patent rights are valid within a certain time limit depending on the object. So, according to Article 1363 of the Civil Code of the Russian Federation, the exclusive right is valid from the date of application for a patent in the Russian Federal Service for Intellectual Property and during the following time:

• for inventions this time is for twenty years;
• for useful models this time is for ten years;
• for industrial designs, this time is for five years.

After that period has expired, the invention and utility models and industrial designs enter the public domain and therefore any person can use them without any restrictions (Article 1364 of the Civil Code of the Russian Federation).

Exclusive rights to a patent give their owners the ability to determine how to use the patent. For example, the owner of a patent for an invention can use it in his activities so the third parties who copy such an invention without permission will be considered as the violators. Another option for disposing of your rights may be their alienation to a third party for a certain fee or the conclusion of license agreements that allow you to use the object of patent rights under certain conditions (Article 1367 of the Civil Code of the Russian Federation).

What disputes can be with patent rights?

Disputes that are associated with the protection of patent rights are disputes about the authorship of an object of patent rights or about establishing a patent owner or about violations of the exclusive right to a patent, disputes on the contracts for the alienation of a patent or about the use of rights to it or about the right of prior and subsequent use, and also disputes on the payment of remuneration for a patent (Article 1406 of the Civil Code of the Russian Federation).

Furthermore, patent disputes include disputes resulting from the acting of the Russian Federal Service for Intellectual Property on registering patents. So there are disputes over recognizing an application as withdrawn or over a patent issue, or refusal to patent issue or patent invalidation and over challenging the results of examinations.

What is the process of protection of patent rights?

There are two procedures for dispute resolution regarding the protection of patent rights, which are determined depending on the type of dispute: judicial and administrative. According to article 1406 of the Civil Code of the Russian Federation, disputes over authorship or the establishment of the copyright holder should be considered in court. Also, the courts consider cases challenging the decision of the Chamber for Patent Disputes of the Russian Federal Service for Intellectual Property. According to article 1248 of the Civil Code of the Russian Federation, the decisions adopted by the Chamber shall become effective from the moment of adoption and may be appealed in court in the manner that is established in the legislation. According to paragraph 2 clause 136 of resolution of the plenum of the Supreme Court of the Russian Federation from April 23, 2019 No. 10 “On the Application of Part Four of the Civil Code of the Russian Federation”, in handling such cases, the courts should consider that the violations of the Russian Federal Service for Intellectual Property of the procedure of the objection consideration to the issue patents are grounds to recognize the accepted non-normative legal act as invalid only if these violations are significant and did not allow for a comprehensive, complete and objective consideration of these objections.

Disputes are resolved in administrative order by the specially created Chamber for Patent Disputes supported by the Russian Federal Service for Intellectual Property. This procedure is regulated according to the Order of the Ministry of Education and Science of Russia No. 644 and of The Ministry of Economic Development of the Russian Federation No. 261 from April 30, 2020 “On approval of the rules for consideration and resolution by the federal executive authority of the disputes over intellectual property in the administrative order." For example, the Chamber may consider objections to the issued patent or to the refusal to issue a patent. According to the results of consideration of objections, they may be fully or partially satisfied or their satisfaction may be denied, and in this case, the complaint is able to apply to the courts.

The advantages of working with us

Working with the specialists of the Tsentralny Okrug Law Firm gives lots of opportunities

• Consultations of specialists and free rapid assessment of the specifics of the business and the situation of the client;
• Full accompaniment of the process of protection of the patent rights from recording the violations and sending claims to the establishing of the patent owner and seeking compensation;
• Money-back guarantee in case of the results will not be achieved;
• Efficient and responsible case management (27 completed projects during the last year).

Due to our vast experience in the area of protection of the patent rights the specialists of the Tsentralny Okrug Law Firm are able to resolve the most complicated dispute. We will help you not only to prove a point and recover compensation from the violator, but also to protect your rights in case of unsubstantiated claims of competitors.

Author is Dmitry Biryukov