Category: News and publications

Important Update on Divisional Applications Filing Strategy at the RUPTO after Recent IP Court decision.

On 6 October 2023, the Presidium of the Intellectual Property Court of Russia as part of consideration of the case No. SIP-570/2022 between Slovenian pharmaceutical company KRKA and the Russian Patent Office on the validity of AstraZeneca’s Russian patent RU 2643764 on dapagliflozin issued a ruling that has a potential to impact the filing strategy of consecutive divisional applications at the Russian Patent Office.

According to the decision in question upon filing a second, third, etc. divisional application it is now necessary for the original parent application to be pending to establish the same priority date. Once a patent on the parent application is granted the doors for any divisional applications are closed.

In the light of this decision it is advisable filing potential divisional applications all at once before the date of issuing a patent on the original parent application. As usual the substantive examination of a divisional application can be deferred for up to three years from its filing date. Upon requesting substantive examination, the clams can be amended to achieve the desired scope of protection, minimizing the initial costs of filing several divisional applications simultaneously.

The Court’s decision has been made final and entered into force on October 6, 2023. It is however still subject to potential appeal for reconsideration by the Supreme Court until December 6, 2023. Although the finality of this decision remains to be seen, for the time being it should be taken into account when filing any new divisional application to avoid any future complications in the event the decision is upheld by the Supreme Court.

On December 6, 2023, the Second Eurasian Conference on Intellectual Property and Technology “IP Eurasia/ IP India’23” will be held in Moscow.

The conference will be dedicated to the prospects for the development of cooperation between Eurasian countries and India.

The issues of integration of intellectual property into market relations, digitalization of intellectual property, as well as issues arising in the field of intellectual property rights in connection with the development of artificial intelligence will also be discussed.

Today, it is important to recognize the value of using innovative results of intellectual work, which can lead to increased income and fame through the introduction of new intellectual property in various sectors of the economy. Eurasian patent attorney Eduard Shablin from Patentica, who is the President of the Eurasian Patent Attorneys Assembly, will be one of the speakers at the conference.

The team of patent attorneys from Patentica recently took part in the annual AIPPI World Congress, held in Istanbul, Turkey, from October 22 to 25, 2023. This congress was a platform for in-depth discussions on various pertinent issues in patenting and the protection of intellectual property rights, with a special focus on emerging types of intellectual property. Engaging conversations revolved around topics such as patent and trademark infringements in online marketplaces, strategies for documenting such violations, and holding the violators accountable. In addition, the discussions delved into the legal status of intellectual property created through the use of artificial intelligence.

Notably, the European colleagues at the congress dedicated substantial attention to the Unitary European Patent (https://www.patentica.com/news-publications/europe-launches-game-changing-patent-system) effective as of June 1, 2023. While mixed opinions were expressed on the new system due to limited time of its practical application, overall, it was seen as a positive development, expanding the possibilities for patent rights protection in Europe.

In the backdrop of the event, geopolitical changes were also under scrutiny. These changes have presented new challenges for businesses, mainly involving the closing of established markets, the redirection of focus towards new markets, and the initiation of new production and product development efforts. This evolving landscape necessitates a higher degree of flexibility from intellectual property specialists to effectively safeguard businesses’ intellectual property rights in the shifting landscape. The meetings held by Patentica representatives with colleagues from various countries during the congress testify to the adaptability of the IP industry, which is offering clients relevant and contemporary solutions.

On October 27, the National Institute of Intellectual Property of the Republic of Kazakhstan (Qazpatent) conducted a training on the legal protection of geographical indications and promotion of regional products for the finalists of the “One Village – One Product” project.

Deputy Director of Qazpatent Aidyn Artykova told regional manufacturers about the activities of the Qazpatent Institute and about such objects of intellectual rights as geographical indication, appellation of origin and trademark and about the benefits obtained by registering such objects for enterprises.

At the Qazpatent site, entrepreneurs asked more specific questions regarding legal protection and conditions for the formation of regional brands. The training was attended by such companies as Asyl Arman Kazakhstan LLP, whose products include herbal products, oils, teas, and Individual Entrepreneur AQTORE, whose products include camel milk products, kymyran, kurt, etc.

The “One Village – One Product” (OVOP) project is aimed at improving the quality of local products, creating local brands, and increasing the value of products on the market.

In a legal development with potential implications for the alcohol industry, Italian wine and spirits manufacturer, Campari Group, has taken legal action against the Russian company Master-trade. The lawsuit, filed with the Rostov Region Arbitration Court on July 25, centers on the protection of Campari Group’s Aperol and Aperol spritz brands in the Russian market (trademarks Nos. 516537, 1090485, and 1028398), with the aim of prohibiting the unauthorized import and sale of items under these brand names, as well as returning the goods released into civil circulation. The trial that was scheduled for October 30, 2023, is now postponed until December 4, 2023.

Campari Group is a prominent player in the global spirits industry, boasting a portfolio of more than 50 brands, including the popular Aperol. The Aperol brand has gained international acclaim, particularly for its signature Aperol Spritz cocktail, a blend of Prosecco, Aperol, and soda water. On the other side of the legal battle, Master-trade, the Russian company in question, holds exclusive contracts with leading global alcohol manufacturers. It is a key supplier of a diverse range of alcoholic beverages, including wines, sparkling wines, as well as cognac, whiskey, and vodka.

Since the departure of many foreign companies from the Russian market due to sanctions, Russian authorities have allowed parallel imports (importing goods without the right holder’s consent) of certain brands, including alcoholic beverages. In this situation, foreign alcohol manufacturers that remained in the Russian market are trying to prevent uncontrolled imports of their beverages, which could be supplied at lower prices in such a case.

This lawsuit highlights the potential disputes between international alcohol producers and local importers and distributors in the market. It serves as a reminder of the increasing importance of brand protection, especially under the conditions of legalized parallel import for certain goods provoking a desire to take advantage of the situation and expand the bounds of the law.

European startups applying for patents and/or trademarks during their initial seed or early growth stages are up to 10.2 times more likely to secure funding from investors. What’s more, the ownership of European patents and EU trademarks is associated with an even higher advantage, with a rate of securing early-stage funding exceeding five times that of those with only national intellectual property rights. These are the key findings of a new study published jointly by the EPO and EUIPO.
The key findings of the study include:

• On average, 29% of European startups have filed for patents or registered trademarks, though there are significant differences between industry sectors.
• Startups increasingly make use of IP rights as they grow, with a strong focus on European IP rights at all growth stages.
• The filing of patent and trademark applications in the seed or early growth stage is associated with a higher likelihood of subsequent venture capital (VC) funding.
• The filing of applications for European patent and EU trademark is associated with an even higher likelihood of subsequent VC funding for startups (compared to just national IP rights).
• The filing of patent and/or trademark applications is associated with a more than twice as high likelihood of successful exit for investors.

In a significant legal development within the pharmaceutical landscape, Pfizer, the American pharmaceutical giant, has initiated a legal battle in Russia to claim over 12.5 billion rubles from Nativa, a company currently undergoing bankruptcy proceedings. This substantial claim is believed to encompass the financial losses that Pfizer asserts it incurred due to the sale of a generic version of its anti-tumor medication, sunitinib, by Nativa.
The indicated legal dispute between Pfizer and Nativa is rooted in the alleged patent infringement related to Sunitinib-Native, a generic version of Pfizer’s oncological drug, Sutent. Notably, Nativa began marketing this generic in 2017, while Pfizer’s patent for sunitinib, the active component within Sutent, was still in effect until August 31, 2022. Pfizer had previously engaged in legal disputes with Nativa over patent infringements, aiming to terminate the production and distribution of Sunitinib-Native. The court initially ruled in favor of Nativa, granting them a compulsory license for sunitinib in exchange for annual payments to Pfizer, amounting to 10% of the product’s sales revenue. It was only in October 2022 that Pfizer successfully challenged this decision on appeal.
In the most recent development, the court granted Pfizer Innovations’ request for information from Nativa about the quantity and pricing of Sunitinib-Native, which has been available in the market since March 2017. Sunitinib-Native has remarkably overtaken the original Sutent in sales since 2019 – 8.12 billion rubles vs 4.88 billion rubles through state procurement between 2018 and 2022.
Current complex patent dispute extends to Nativa’s prior legal conflicts with prominent pharmaceutical entities, including BMS, Celgene, and AstraZeneca. By the time bankruptcy proceedings were initiated, Nativa no longer held valid certificates for its pharmaceutical products. As a result, some of these certificates, including sunitinib, were transferred to Pharmmental Group in 2021.
In the legal battle with Pfizer, Nativa’s insolvency adds complexity to the case, raising questions about the practicality of recovering substantial damages.

According to international experts, the annual damage to global commercial aviation from bird strikes amounts to up to $1.2 billion. Engineers from the Vector Research Institute have received a Eurasian patent for a system that, using television, can prevent strikes even at poorly equipped airports.

The solution uses the digital broadcasting television center signals protecting equipment already installed on the territory of the airport from the effects of radar radiation.

The broadcasting center emits the digital broadcasting television signal. The signal is then reflected from the birds and received by surveillance channel antennas, and the direct signal from the broadcasting center is received by a reference channel antenna. The received signals are processed in the receiver. In case of a threat of collision, a threat processor launching the device of deterrence is activated.

The system provides autonomous operation, increases airport safety during the takeoff/landing of aircraft and reduces the number of false alarms.

Nationals and residents of the People’s Republic of China will continue to have the option to select the EPO as their International Searching Authority (ISA) for international patent applications filed in English under the Patent Cooperation Treaty (PCT) until 30 November 2026. This follows the success of the pilot scheme first started in December 2020, which is being extended for a further three years as mutually agreed between the European Patent Office (EPO) and the China National Intellectual Property Administration (CNIPA).
This extension enables nationals and residents of the People’s Republic of China to continue to obtain international searches and written opinions from the EPO, supporting their strategic objectives when considering patent protection in Europe. By using the EPO as their ISA, applicants can speed up the European patent grant process and save even more prosecution time if they request early entry into the European phase. Furthermore, they can save costs as neither a supplementary European search nor a translation of the PCT application would be required and the examination fee payable on entry into the European phase would be reduced by 75% when requesting international preliminary examination under PCT Chapter II with the EPO.
The decision to extend the scheme follows the pilot’s favourable evaluation by applicants, including enterprises, universities, research institutes, and private individuals. The capacity of the pilot remains set at 3 000 applications per year.

At the beginning of September, a major British-Swedish pharmaceutical group, AstraZeneca, made headlines by taking legal action in the Moscow Arbitration Court. They aim to dispute the Russian Ministry of Health’s decision regarding the approval of the oncology drug, Osimertinib, as submitted by Russian pharmaceutical firm Axelfarm.

Osimertinib is a substance invented by AstraZeneca and protected in Russia and Eurasian region by an Eurasian patent valid until 2032.

AstraZeneca considers the drug Osimertinib to be a reproduced pharmaceutical product (generic), meaning a drug with the same qualitative and quantitative composition of active ingredients as its pharmaceutical product Tagrisso, which is supplied to Russia.

The drug is indicated as a therapy for non-small cell lung cancer with EGFR gene mutations. According to data from the phase III ADAURA clinical trial, Osimertinib reduces the risk of recurrence or death by 80% when used as adjuvant therapy for the early stages of this type of cancer.

Axelfarm first submitted documents for the registration of Osimertinib in December 2020. In 2021, AstraZeneca claimed a violation of patent rights for Tagrisso. However, the company’s lawsuit remained unresolved. According to the court’s decision, the intention to register a generic cannot be considered a threat of patent rights infringement.

The preliminary hearing for this new case is scheduled for October 30th.

There were other legal precedents concerning Osimertinib, for example, in the USA AstraZeneca achieved favorable resolutions in its patent infringement litigations with Zydus Pharmaceuticals, Cadila Healthcare, MSN Laboratories, and MSN Pharmaceuticals in 2021 and with Alembic Pharmaceuticals in 2022.

In the meantime, AstraZeneca itself faced a different challenge concerning Tagrisso patents. This is because Puma Biotechnology and Pfizer’s Wyeth initiated their own lawsuit against AstraZeneca in 2022 for infringement of two US patents, the results of which are yet to be seen.

In 2023 Sony Interactive Entertainment Inc, the owner of PLAYSTATION trademarks, initiated multiple court cases against counterfeiters in the Russian Federation. The court recognized several cases of infringement of IP rights and awarded monetary compensation for sales of fake PLAYSTATION game consoles on popular marketplaces. Despite the currently limited presence in the market, many companies such as SONY continue to carefully monitor and combat illegal trademark use.

The Commercial Court Registry shows 27 cases initiated by Sony Interactive Entertainment Inc. in 2023 against various individuals in different regions of the country including 12 last August. That is a remarkable increase comparing to one case filed by Sony during the entire year of 2022. Some of the cases have already been decided in favor of Sony Interactive Entertainment satisfying the claims in full or partially. Some cases are based on trademark infringement while the decisions refer to illegal sale of PLAYSTATION gamepads on the widely used online platform Wildberries. Rapidly raising popularity of online retail platforms brings more counterfeit opportunities, so the marketplaces take actions to prevent and fight infringement. Wildberries, for example, introduced their own tool called digital arbitration.

Regarding Sony’s increase in court activity in comparison to the years preceding 2022, the reason could be legalization of parallel import which allowed third parties to import the goods labelled by brands that had left the Russian market. Although parallel import allows only genuine goods, once the borders have been opened for third party importers, the higher percentage of fake products calls for increased attention from the right holders.

Among other companies actively combatting IP rights infringement is Robert Bosch GmbH that has already filed 163 cases in 2023 and Harman International Industries Incorporated – the Samsung-owned company, holder of JBL trademarks – which is a Plaintiff in more than 430 court cases in Russia this year.

These numbers show that despite the unstable environment and suspension of activity many manufacturers and trademark holders find it important to keep the counterfeit level as low as possible and continue to carefully sustain their reputation for consumers.