News and publications - Page 9 of 9

IP court upheld the right of the plaintiff to choose the method of protection for toy designs

PATENTICA ‘s lawyers successfully defended the interests of the toys manufacturer EPOCH COMPANY, LTD (Japan) in a dispute with a group of companies (importer Ababika LLC, toys wholesaler TNG LLC and administrator of online stores SP Zolnikov), on violation of copyright exclusive rights to “Sylvanian Families” (www.sylvanianfamilies.com) toy design.

The Intellectual Property Court, in cassation, ended a lengthy dispute and upheld the Ninth Arbitration Court of Appeal ruling to recover compensation for the defendants’ illegal distribution of Chinese counterfeit “Happy Friends” toys which the court found to be created using the images of characters designed by the Japanese company Epoch in view of the arguments presented by PATENTICA (www.patentica.com).

The proceedings took more than 4 years, going through several rounds in the first, appeal and cassation instances. In the first round, the courts of first and appeal instance sided with the defendant and refused to satisfy the claim due to the lack of registration of toys as industrial designs, the lack of proof of the sale of the disputed toys due to the formal discrepancy between the addresses of the defendants, and the impossibility of determining the proper defendant. However, the joint efforts of the designers of Epoch and Patentica lawyers Elena Dmitrenko and Alexander Tymofeev resulted in the victorious decision establishing the authorship rights of the original desiners of Sylvanian Families, so much loved by kids all over the world.

The Intellectual Property Court of the Russian Federation has completely revised the judicial acts of the first and the appellate instance and confirmed the erroneousness of the conclusions, recognizing the plaintiff’s right to choose the method of protecting the design of toys by copyright (and not just industrial designs), that the EPOCH COMPANY, LTD unambiguously has copyright for design of the toys, the right to recover compensation and the inadmissibility of excluding lawfully obtained evidence during the acquisition of counterfeit toys, such as till slip and invoices of online stores, when determining the fact of violation.

For more details, see https://kad.arbitr.ru/Card/da823344-1b49-4fea-93a9-aac3778c2fbb

Agreement on electronic exchange of documents between EAPO and Rospatent

On 25 June 2021 a mutual agreement on electronic exchange of documents concerning Eurasian applications and patents was signed in Rospatent Moscow Headquarters by the President of EAPO and the Director General of Rospatent. This agreement shall allow both Offices to interact solely by electronic means of communication within Eurasian patent procedures, relevant to inventions and recently introduced industrial designs. Already existing and successfully running “EAPV-Online” system will be used and subsequently updated in order to directly integrate with RU PTO information systems.

https://rospatent.gov.ru/ru/news/soglashenie-eapv-rospatent-ob-elektronnom-obmene-dokumentami-25062021

We at PATENTICA. will be happy to answer any further questions you may have. Please feel free to contact us for more details at info@patentica.com.

Amendments to Patent fees Schedule introduced by the new Governmental Decree

On 17 June 2021 several amendments to the Official patent fees have been introduced, which came in force starting from 1 August 2021. The most important amendment concerns examination fees and establishes a uniform Official patent Substantive Examination fee of 12500 rubles for the first and 9200 rubles for every next independent claim instead of previous three substantive patent examination fees, which depended on the time when examination was requested. Official comments are expected to be announced soon.

The second amendment relates to the recent move to paperless Patent Office communication and on top of the regulation providing electronic forms of patents and trademark certificates as the default ones, the recent amendment now establishes an uniform fee of 2,000 RUR for any paper publication issued by request in addition to electronic ones. This regulation covers as well duplicates and paper publications of amendments that are handed out by Rospatent as confirmation of assignments or changes in owner’s (inventor’s) legal status, including a change of name or business name.

We at PATENTICA will be happy to answer any further questions you may have. Please feel free to contact us for more details at info@patentica.com.

Manufacture of patented drugs in Russia in special circumstances without the consent of the patent owner

On the 22nd of June, 2021, the Federal Law No. 212 as of June 11, 2021 entered into force, introducing an additional Article 1360.1 into part IV of the Civil Code.

According to Article 1360.1 of the Civil Code the Government of the Russian Federation may now allow to use a patented invention for the production of a medicinal product by any party for export purposes without the consent of the patent owner with the immediate notification of the patent owner and payment of the proportionate compensation for such a use.

The notification must disclose the information about a volume of production of a medicinal product defined by the needs of a foreign state where the medicinal product is to be exported, while the packaging of such a medicinal product should have a special designation “for export purposes” or the like.

On top of that according to earlier amendments to Article 1360 of the Civil Code of the Russian Federation introduced by the Federal Law No. 107 of April 30, 2021, the Government of the Russian Federation may allow to use an invention, utility model or industrial design without the consent of the patent holder, not only in the interests of the defense and security of the state, but also to protect the life and health of citizens in case of emergency.

The Government has once again expanded its powers and capabilities to use patented medicines in cases where the patent owner cannot fulfill the need of Russia’s and the Eurasian Economic Union’s (EAEU)* pharmaceutical markets with the required amount of medicines, especially with vital and essential drugs in difficult epidemiological situations and other undesirable circumstances.

Following this new provision the Russian company Pharmasintez has been recently given a permission to manufacture Remdesivir (used the treatment of COVID-19) without the consent of the originator company, Gilead Science. The decision is currently under court appeal submitted by the patent owner.

The adoption of the above-mentioned amendments clearly indicates the intention of the Russian Government to expand the application of the administrative procedure for authorizing the use of patented drugs over the whole territory of the Eurasian Economic Union and replace what is believed to be a controversial and widely criticized approach of issuing compulsory licenses in accordance with Article 1362 of the Civil Code of the Russian Federation.

While these provisions are clearly beneficial to generic manufacturers they also give an additional clear message to the originator companies about the importance of obtaining Eurasian patents covering not only Russia but the rest of the EAEU contracting states and other neighboring import-oriented countries.

Should you have any questions in this regard or need additional information please do not hesitate to contact PATENTICA’s patent attorneys at info@patentica.com.

*EAEU Contracting States: Russia, Armenia, Belarus, Kazakhstan, Kyrgyzstan

Pharmaceutical registry prototype is presented online by RU PTO

On 30 June Rospatent has shown an online presentation of Registry of pharmacologically active patented substances – in its prototype version. This Registry, created under commission from Russian Head of Government, shall provide all interested persons with information concerning patent protection of medicines, and shall as well help to prevent unfair practices of generics marketing before corresponding patents expire.

Main principles and routines for including the substances into the Registry, list of information subject to inclusion, its synchronization and presentation, rendering official services and submitting appeals with regards to Registry data have been already discussed by RU PTO with federal agencies and pharmaceutical manufacturers and wholesalers. It is supposed that the Registry shall be officially launched till the end of year 2021 and be cover the Russian territoryas well as the Eurasian Economic Union

https://rospatent.gov.ru/ru/news/rospatent-farmreestr-test-30062021

New patent regulations for patenting isomers, polymorphs and derivatives of known chemical compounds established by the Russian Patent Office

On June 8, 2021, an order of the Ministry of Economic Development of the Russian Federation No 155 will come into force introducing significant clarification amendments to the patent regulations governing the assessment of the inventive step and sufficiency of disclosure of the inventions relating to new forms and derivatives of the known chemical compounds.

In particular, Rule 77 of the Rules (inventive step) has been amended to include the paragraph as follows:

Inventions are not acknowledged as meeting the inventive step criterion if they are based, in particular:

“- on the creation of a chemical compound, which is a form of a known chemical compound (in particular, an isomer, stereoisomer, enantiomer, amorphous or crystalline form) or its derivative (in particular, a salt, solvate, hydrate, complex compound or ether/ester), if such a compound does not exhibit new properties from qualitative or quantitative perspectives as compared to the known compound, which do not follow to a specialist explicitly from the prior art.”

Rule 47 of the Requirements was supplemented by a new subclause 6, specifying that:

“6) if the invention relates to a chemical compound, which is a form of a known chemical compound (in particular, an isomer, stereoisomer, enantiomer, amorphous or crystalline form) or its derivative (in particular, a salt, solvate, hydrate, complex compound or ether/ester), the information about its new qualitative or quantitative properties as compared to the known compound, which do not follow to a specialist explicitly from the prior art, as well as information that reliably supports the existence of such new properties shall be provided.”

These legislative amendments are essentially aimed at legalizing the actual patent office and court practice that has developed in recent years, according to which, in order to acknowledge the non-obviousness of new forms and derivatives of a chemical compound, it must exhibit new unexpected properties as compared with the known forms and derivatives of the compound, while such properties must be supported by the reliable experimental data.

In view of the above-mentioned amendments, whenever a patent application pertains to a new derivative or form of a known chemical compound applicants are recommended to disclose the experimental support of any advantageous properties of such a new derivatives and/or forms in the specification, or at least be ready to submit the additional experimental data during substantive examination.

We at PATENTICA will be happy to answer any further questions you may have on this or other news and insights published on our website. Please feel free to contact us for more details at info@patentica.com

Eurasian system for the protection of industrial designs: update

Since early 1995 the Eurasian Patent Convention (the EAPC) has been effectively used to obtain Eurasian patents for inventions in up to eight former USSR countries via single prosecution procedure conducted by the Eurasian Patent Office. The popularity of this unified patenting system has been recongnized by many professionals from the EAPC contracting sates suggesting to generilize the system with respect to other objects of the intellectual property.

As a result of this process the Protocol on the Protection of Industrial Designs under the EAPC was adopted during international diplomatic conference on September 9, 2020 in Nur-Sultan, the capital of Kazakhstan. The Protocol was singned by six out of eight of the EAPC Contracting States including Azerbaijan, Armenia, Kazakhstan, Kyrgyzstan, Russia and Tajikistan.

According to the established procedure the Protocol will come into force with respect to the first free countries, which are going to ratify the Protocol (Kyrgyzstan, Azerbaijan and Armenia) on March 17, 2021. In Russia the Protocol was ratified on November 10, 2020 and will come into force on April 11, 2021.

The Eurasian Patent Office is going to announce a starting date of the Eurasian system for the industial designs during the fist half of 2021.

Similarly to inventions the Protocol establishes the Eurasian system for the protection of industrial designs, which will allow to obtain a legal protection for an industrial design simultaneously in all of the Contracting States based on a single application submitted to the Eurasian Patent Office. Once a Eurasian patent on industrial desing is granted it can be made valid in any of the EAPC Contracting States upon payment of annuties fees.

New Rules for Opposition procedure in Russia

By the joint Order of the Ministry of Science and High Education and Ministry of the Economic Development No.644/261, new Rules for Dispute Resolution of the Chamber for Patent Disputes of the Russian Patent and Trademark Office were introduced and came into force on the 6th of September 2020. The new rules has substantially changed the procedure to resolve appeals and oppositions submitted to the Chamber for Patent Disputes harmonizing the overall procedure with that applied by the Russian courts.

Legalizing the widely adopted unofficial practice of arranging for online meetings and hearings, partially due to continued COVID-19 pandemic outbreak, the Rules now formally allow parties to attend the proceedings via video conference calls. This shall only require a request from a respective participant two weeks before the hearing. Audio and video recordings of all hearings shall be available to all parties if requested within 4 months form the hearing.

All kinds of official correspondence, including notices of appeals and oppositions, requests, and responses may now be filed via the official RUTPO website by using a personal account. The official website information will include receipts of opposition filed and official notifications to participants shall contain necessary coded identifiers, allowing to access all case materials from their personal accounts.

Formality check of submitted documents shall be shortened from 1 month to just 5 business days. Upon payment of the official fee for opposition or appeal, the first hearing must be set within 1 month for appeals against the RUPTO’s decisions, and 2 months for other oppositions.

Possible postponements of hearings are now more specific and shortened. The board of examiners now may only postpone hearings for 1 month at most in case of additional questions or arguments presented by parties, or whether an opposition is accompanied by a significant number of documents. The same applies for a sudden sick leave of a member of the board. Hearing may be also postponed for no longer than 2 months due to participant’s motivated request and for no longer than 3 months if the board seeks for an independent expert’s opinion.

In contrast to the previous version of the Rules patent owners can now independently request the board to consider the amended claims during the procedure. Claims can be amended on the basis of application materials without broadening the patent scope before the opposition, which is supposed to provide patent owners more flexibility and freedom to keep patents in amended form. On the other hand, petitioners submitting oppositions may raise new grounds as a course of opposition procedure in response to patent proprietor’s line of arguments or suggested amendments.

To recap the new Rules substantially clarify the procedure at the Chamber for Patent Disputes making it more suitable and transparent for all participants and general public.

We at PATENTICA will be happy to answer any further questions you may have. Please feel free to contact us for more details at info@patentica.com.