The legislation includes a number of requirements that inventions, utility models and industrial designs must comply with in order to be patented. However, it is not uncommon for Rospatent examiners to refuse to grant patents for seemingly patentable applications. In this case, the decisions of the examiner can be challenged with the Chamber for Patent Disputes of Rospatent. A previously issued patent can also be challenged.
Chamber for Patent Disputes of Rospatent
The Chamber for Patent Disputes of Rospatent considers objections filed with the Patent Office in the administrative dispute resolution procedure. The administrative procedure for resolving disputes is mandatory, and the procedure is handled by the Chamber for Patent Disputes of Rospatent. Thus, you need to go through the Chamber whether you defend your patent in a dispute or are attacking patent.
The list of objections that you may file in a dispute procedure is legally regulated by the Rules for Filing Objections and Applications and as mentioned run by the Chamber. The procedure for considering objections, terms, conditions for filing are enshrined in the Civil Code of the Russian Federation.
Types of objections and grounds for challenging a patent
A patent application may run into the following types of objections:
- Examiner’s refusal to grant a patent or to grant a patent.
- Rospatent’s withdrawal of acceptance of an application.
- Third party objection against the grant of a patent.
According to the provisions of the Civil Code of the Russian Federation, a patent for an invention, industrial design or utility model can be challenged and invalidated in its entirety or in part during the period of its validity. A third party may file objections with the Chamber for Patent Disputes of Rospatent, and the following conditions may become grounds for challenging and cancelling a patent:
- Inconsistency of an invention, utility model or industrial design with the conditions of patentability.
- The presence in the claims of an invention or utility model or in the list of essential features of an industrial design of features that were absent at the filing date of the application in the description and claims of the invention, utility model, or in the product images.
- Issuance of a patent if several applications for identical inventions are present. Utility models or industrial designs having the same priority date.
Experience show that it is quite common that an individual file patent applications for an invention, industrial design and utility model for the purpose of obtaining compensation for the use of an invention allegedly belonging to him. Utility models are the most vulnerable to this type of activity since at the moment, substantive examination of utility models is not carried out.
The most common reason for challenging a patented invention, utility model or industrial design is its non-compliance with the criterion of novelty. The novelty requirement means that the invention must be entirely new and nothing similar can be known and available anywhere in the world before the filing date of the patent application.
If the patent does not meet the criteria for patentability, and also contains the violations described above, it can be canceled with the Chamber for Patent Disputes of Rospatent.
Our patent attorneys are ready to provide a full range of services related to the preparation and filing of the above objections with the Chamber for Patent Disputes of Rospatent and will assist in protecting your interests in any situation: if you intend to defend your patent or believe that a third parties violate your rights.
In some cases, it is not possible to achieve justice in the Chamber for Patent Disputes of Rospatent, then the applicant has the opportunity to challenge the decision made by Rospatent in court, We are ready to represent your interests in court, and our lawyers have extensive experience in handling such cases in court.
When a person owns a registered trademark or a patented technical solution and uses a protected object, then, if a violation is detected, such a right holder has the opportunity to use the methods of protecting exclusive rights specified in the legislation. Depending on the nature of the offence, a person applies for the suppression of illegal actions and the restoration of violated rights to the patent office, court, or the Federal Antimonopoly Service. In addition, the right holder can demand compensation for damages and expenses incurred through the court. To protect the interests of the holder of intellectual property, the person will need to prove the legitimacy of the claim and confirm the lawfulness of the declared powers and rights.