New Russian law allows reimbursement of expenses in the Chamber of Patent Disputes

New Federal Law No. 390361-8 passed in Russia amends provisions of the Civil Code that concern the administrative consideration of disputes in the field of rights to inventions, utility models, trademarks and other objects of intellectual property, introducing a possibility of reimbursement of expenses of the winning party.

Previously, legislation allowed reimbursement only for the expenses incurred during consideration of the matter at court, including pre-trial costs. The costs of preliminary administrative disputes were not included into this scope, while in a number of cases the interested party was required to begin the dispute with an administrative hearing in the Chamber of Patent Disputes (a branch of the Russian Patent and Trademark Office), and only then go to court. The litigants were left with no ability to ensure their rights at some of the stages of the proceedings.

The Constitutional Court pointed out this omission in the legislation in its Resolution No. 1-P/2023, issued on January 10, 2023, following consideration of the complaint of OOO “NIKA-PETROTEK”. The company’s patent for a group of inventions was partially cancelled by the Board of Chamber of Patent Disputes following an objection filed by OOO “FORES”. Unwilling to accept only partial satisfaction of its demands, OOO “FORES” attempted to appeal the decision of the Chamber in court, but the court refused to satisfy the appeal. OOO “NIKA-PETROTEK”, forced to defend its patent, managed to reimburse some part of the legal costs – however, it was not possible to reimburse the costs of the initial consideration in the Chamber of Patent Disputes. Obviously, this is not the first patent owner to face such a situation.

Following the instructions of the Constitutional Court, a new Federal Law was drafted, intended to amend Article 1248 of the Civil Code of the Russian Federation regarding the consideration of disputes related to intellectual rights. The legislator clarifies that expenses incurred during administrative proceedings can be reimbursed (including official fees, as well as the fees of experts, translators and patent attorneys involved in the proceedings).

The law will come into force on 10 February 2024, after which any party involved in patent or trademark disputes will be able to more effectively protect their intellectual rights.