mip international patent forum 2013 russia focus · patent enforcement: russian ip court • a...

16 April 2013

MIP International Patent Forum 2013Russia Focus

Natalia Gulyaeva, PartnerHead of IP, Media & Technology, Hogan Lovells CIS

Patents as a key to business expansion:

produced in Russia

• Russian Government's call for localization of production in

Russia (e.g. high tech and pharma)

• Preferential treatment of local manufacturers

• Definition of "localized product"

still remains unclear

www.hoganlovells.com

still remains unclear

• Secondary packaging does not

constitute localization

• Call for high tech production

and transfer of patented technology

to Russia

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Key trends in patent protection and enforcement

in Russia

• Patent protection

– Russian Patent Office (Rospatent)

– Eurasian Patent Office (EAPO)

• Patent enforcement

– Russian courts


– Russian courts

• State commercial courts ("arbitrazh" courts)

• IP court

• Courts of general jurisdiction

– Chamber for Patent Disputes under Rospatent (CPD)

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Russian Patent v Eurasian Patent

Russian Patent Eurasian Patent

Russian Civil Code Eurasian Patent Convention (EAPC)

Rospatent Eurasian Patent Office (EAPO)

RU RU AM AZ BY KZ KG


MD TJ TM

More lengthy prosecution (2-4 Office

Actions; 2-4 years)

More expedite prosecution (1-3 Office

Actions; 1.5-3 years)

More formalized approach More liberal approach

Less vulnerable to patent invalidity action More vulnerable to patent invalidity action

Russian law is applied by Russian courts

for patent enforcement

Choice of law – potential difficulties for

patent enforcement

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Patent enforcement: jurisdiction

• Patent infringement action

– State commercial courts – patent disputes between legal

entities and individual entrepreneurs

– Courts of general jurisdiction – patent disputes involving

individuals

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individuals

– IP court

• Patent invalidity action

– CPD

Patent enforcement: Russian IP Court

• A specialized court for IP rights within the system of

state commercial courts

• Expected to be introduced in 2013

• Jurisdiction:


– Court of first instance

(e.g. claims against the CPD' rulings)

– Court of 2nd appeal (e.g. for patent infringement actions)

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Patent infringement

• Direct Infringement

– import

– manufacturing

– application

– offer for sale

– sale


– sale

– other introduction into commerce

– storage

• Threat of Infringement

– preparations for infringement actions (obtaining regulatory

approvals does not constitute preparation)

• Important: no scientific research, experiment or personal use

with no commercial intent

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NPEs in Russia: threats

• The number of Russian NPEs is growing

• The approaches of Russian NPEs are becoming more sophisticated

• The quality of patent examination remains not ideal

• No developed practice of Russian


• No developed practice of Russian

courts recognizing the NPEs'

actions as "abuse of rights"

• The state fees involved into civil

litigation are fairly low

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NPEs in Russia: defensive tactics

NPE's action Your potential counter-action

Patent infringement action before the court of

general jurisdiction

• Patent invalidity action before the CPD

• Stay of proceedings before the court of

general jurisdiction

• Counter-claim for recovery of legal fees

Patent infringement action before the state

commercial court

• Patent invalidity action before the CPD

• Motion on termination of proceedings


commercial court • Motion on termination of proceedings

before the state commercial courts due to

lack of jurisdiction

• Counter-claim for recovery of legal fees

Administrative action (fine in amount of

approx. GBP 630-840 with confiscation of

respective infringing products)

• Providing police with evidence of non-

infringement

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NPEs in Russia: defensive tactics

NPE's action Your potential counter-action

Criminal action (fine in amount up to GBP

approx. 4,200 or salary (or other income) of

respective top manager for a period that not

exceeds 18 months; or obligatory works up to

480 hours or as compulsory works up to 2

years or imprisonment up to 5 years)

• Providing the prosecutor's office/ police

with evidence of non-infringement


Letters to the Russian state authorities • Promptly responding to the inquiries of

state authorities

Defamation claim • Audio-recording of any out-of-court

discussion and court proceedings

Thank you!


Used resources

• http://www.digitaltrends.com/cool-tech/can-crowdsourcing-save-the-

patent-system/

• http://www.ipc.arbitr.ru

• http://www.vmichurinske.ru/content/view/id/942

• http://ukairportinformation.com/

• http://www.reklama.com.ua/show-362512.html?lang=3


• http://www.reklama.com.ua/show-362512.html?lang=3

• http://blog.intuit.com/money/how-to-avoid-patent-infringement-lawsuits/

• http://blog.eun.org

• http://www.legaljuice.com/judge%20funny%20cartoon%20scales%20justi

ce.gif

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Your contact

Natalia Gulyaeva

Partner, Head of IP, Media & Technology

Hogan Lovells CIS

Tel.: +7 495 933 3000

Email: [email protected]




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