THREE ISSUES THE NEW RULES FOR THE CHAMBER FOR PATENT DISPUTES RAISE

The new Rules for the Chamber for Patent Disputes (“Patent Chamber”) that came into force in Russia on 06 September 2020 (“Rules”) mainly regulate the very procedure of considering patent disputes. Thus, the electronic interaction between the applicant and the Patent Chamber has become possible; also, some important time limits have been set. This all can certainly be regarded as a step forward compared to the old Rules.

Meanwhile, the Rules seem to have raised some new issues and others remained unsolved. Below are the three of such issues, which we believe are important to highlight.

1. An official fee can be paid after the hearings have already been appointed.

According to the old Rules, if the fee had not been paid, the appeal would have had to be rejected. It is different in the new Rules. Now the procedure of considering disputes is divided into four stages: registration, formal check, considering the appeal and making a decision.

The appeal is registered within 5 days from its receipt, and then formal check starts. If something about the appeal is wrong, a request for additional materials is issued, a response to which should be filed in 2 months. If the response addresses the issues raised in the request, within 10 days a notification on acceptance of the appeal is sent to all parties. In that notification the date, place and time of the hearings are appointed. That said, if the fee is not paid by that time, it is requested in the notification that it be paid within 2 months, whereas the hearings should occur no later than in 3 months. Thus, the patent owner will not know for at least 2 months whether the applicant has paid the fee and, accordingly, whether the hearings will occur. It turns out, the patent owner should either wait for a confirmation that the fee is paid or start preparing for the hearings immediately. In the first case, if the fee is finally paid, the patent owner will have less time to prepare for the hearings. In the second case, if the fee is not paid, they will simply waste time preparing for the hearings that, in the end, will not occur. This appears to be inconvenient for the patent owner.

2. During the process of considering a dispute the applicant can present new arguments without any restriction.

According to the old Rules, during the process of opposing a patent the applicant could present new arguments too; however, those arguments could not change the essence of the appeal. More specifically, the patentability conditions, which the appeal was based on, should have remained the same. Further, new sources of information, except for purely informative ones, could not be added. Otherwise, a new appeal should have been filed. In the new Rules there are no restrictions. Of course, this is advantageous for the applicant, who can continue searching for new prior art documents depending on the patent owner's arguments, and certainly not very good the patent owner. This is even more so as the current fee for filing an opposition is charged for an independent claim regardless of how many patentability conditions are not met and how many prior art documents there are. Accordingly, it appears that at least the schedule of official fees of Rospatent needs to be reconsidered in this regard.

3. The new Rules are silent about how claims can be amended during the opposition process.

This issue has a long story. According to the old Rules the patent owner had the right to amend claims during the opposition process. Such amendments had to meet all the requirements for amendments made at the stage of examination of a patent application. Thus, since the applicant could amend claims by adding features from the description to obtain a patent, it was thought that features from the description could also be included in claims of a granted patent to avoid its cancellation at the Patent Chamber. If necessary, according to the old Rules, additional Search on the basis of the amended claims could be conducted.

However, there was a case where Mr. Lisovenko filed an opposition against an Astrazeneca’s patent for a pharmaceutical composition. The Patent Chamber found that the patent did not meet the patentability requirements and notified Astrazeneca, in general terms, that the claims could be amended to avoid a full cancellation of the patent. However, when Astrazeneca changed the purpose of the claimed composition by including a feature from the description in the independent claim, the Patent Chamber refused saying, with reference to the Civil Code of the Russian Federation, that claims can be amended at the stage of examination and cannot – after the grant decision has already been issued.

The First Instance Court refused too, the reasoning being different though: claims can still be amended but only by excluding features therefrom. The Presidium Court invited opinions of a few patent practitioners and, ultimately, upheld the First Instance Court’s decision. They mentioned that, even though the reasoning of the First Instance Court was not quite accurate, the decision itself was fair. The reasoning of the Presidium Court was the following: when features from the description are included in claims, a new subject matter appears, for which examination has not been conducted, and, accordingly, the third parties’ rights may be violated.

Thus, the Court’s position was finally formed: including features from the description in claims during the opposition process is unallowable; and it only remained to consolidate this position in the coming new Rules.

Unfortunately, this never happened. It is only mentioned in the new Rules that a patent owner can amend claims without broadening the scope of protection. In fact, when additional features, except for alternative ones, are included in claims, the scope of protection is, on the contrary, reduced. However, nothing is mentioned as to whether features from the description can be included. Nothing is said about the possibility of additional Search either. This said, the Presidium Court’s decision is still there; and this seems to suggest that including features from the description in claims during the opposition process is still unallowable. However, how this situation will be interpreted from the legal point of view is yet to be seen.

By way of conclusion, despite the new Rules should generally improve the procedure of considering patent disputes at the Patent Chamber, some new issues appeared, and others remained unaddressed.