Category: News and publications

On March 09, 2022, the Moscow Arbitration Court satisfied the claim of Zentiva Pharma against Farmatun-1, Dinamika and MC Dinamika for the protection of patent rights in relation to Dolphin nasal washing device (utility model No.151,829). The Defendants were forbidden to sell, offer for sale and store for these purposes their medical product “Duolor”.
Until 2018, Defendants were engaged in the production of devices and nasal washing products under the brand name “Dolphin” for Zentiva Pharma. After the transfer of production, they released under their brand a product “Duolor” similar to “Dolphin”.
Defendants insisted that their device is manufactured according the utility model No 196,933 and does not contain “a dispenser having an axial channel” described in Zentiva’s patent. But this argument was refuted by the patent examination. Further, the Сourt noted that the Defendants’ reference to the later utility model No. 196933 does not influence on the consideration of this dispute regarding infringement of the Zentiva’s patent.
Thus, the Court found that the Defendants’ product “Duolor” contains every feature of the plaintiff’s utility model, and a permission of the patent owner for production and sale has not been obtained. The Court satisfied the claim and recovered from the defendants the costs of the examination.

The Decree of the Government of the Russian Federation  No. 299 “On Amending item 2 of the Methodology of calculating amount of compensation payable to patent owner as a result of decision to use invention, utility model or industrial design without patent owner’s consent, and procedure of its payment” was issued on 6 March 2022.

It introduces a special protocol for calculating compensation for a use of a patent authorized by the Government under Article 1360 of the Civil Code. Article 1360 of the Civil Code implies that for the purposes of national security, human life and wellbeing, the Russian Government may authorize a certain entity to use an invention under patent along with paying appropriate compensation to a patent owner. Now the decree specifies that if the patent owner is an entity/national from a list of “unfriendly countries”* there will be no compensation for such use.

Although it is not directly stipulated in Article 1360 of the Civil Code, such authorization by the Government is actually meant to be issued in a form of a special permission, which resembles a “compulsory license” in a commonly recognized international IP law practice.

Since the codification of the Russian civil law in 2008 before the adoption of  the decree in question, the compensation for such a “compulsory license” had been 0.5% of a profit obtained from such use, while only two “compulsory licenses” having been granted so far in pharma sector. Both were issued on the same patents relating to Remdisivir, which is an anti-COVID medicament.

It would be worth mentioning that according to the current legal practice, each request for such a “compulsory license” under Article 1360 of the Civil Code is supposed to be and will be considered carefully and individually on a case to case basis by the Government.

Therefore, this decree should not be understood to allow free unauthorized use of any patents by Russian companies. It does not imply patent infringement, theft of IP, etc., as many newspaper articles suggest either.

Should you require more detailed info and guidance  feel free to contact us at info@patentica.com.

* Australia, Albania, Andorra, Great Britain (including the Island of Jersey and controlled Overseas territories – Anguilla, British Virgin Islands, Gibraltar), all Member States of the European Union, Iceland, Canada, Liechtenstein, Micronesia, Monaco, New Zealand, Norway, Republic of Korea, San Marino, Northern Macedonia, Singapore, United States of America, Taiwan (ROC), Ukraine, Montenegro, Switzerland and Japan

On December 16, 2021, the State Duma adopted the Law on the accession of the Russian Federation to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

While the Agreement was originally introduced in 1958 and entered into force in 1966, only 30 member countries have joined it so far. Through these years the Agreement have undergone several revisions, the last one being Geneva Act of 2015, allowing for registration of geographic designations’ and participation of intergovernmental organizations.

It is hoped and expected that the Russian membership in the Lisbon Agreement shall advance the protection of regional brands supporting further development of local and foreign manufacturers, as well as strengthen the Russian integration within the global IP system.

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

Epoch Company is widely known as toy manufacturer from Japan. The famous “Sylvanian Families” toy characters are beloved, recognized and sold all over the world. No surprise that more and more rivals produce and sell similar toys.

In many parts of the world the huge popularity of “Sylvanian Families” invoked the production and sale of counterfeit goods by mala fide competitors. Similarly, several years ago, counterfeit toys produced in China and the USA appeared in the Russian market.

Recently, Epoch Company won one of the most long lasting and complex cases. After almost five years of legal proceedings, thanks to the excellent litigation work and professional perseverance of Patentica’s lawyers, the Supreme Court of Russia was convinced to secure Epoch’s victory in this litigation. Patentica protected Epoch’s interests via claiming compensations for the infringements of its exclusive rights on toys’ designs.

Many complicated questions became subjects of robust discussions in the court. For example, the plaintiff was forced to prove the originality of toys’ designs in comparison with “Maple Town” anime series characters. Besides, the defendants tried to protect themselves with the help of patents of the People’s Republic of China for industrial designs.

Patentica confirmed both originality and the very fact of creative work to be the background for the copyright protection causation for Epoch and its “Sylvanian Families”. Finally, Epoch won the case and all three defendants were obliged to pay compensation.

On November 22, 2021, the Eurasian Patent Office (EAPO) and World Intellectual Property Organization (WIPO) signed the agreement according to which the EAPO can act as the International Searching Authority (ISA) and the International Preliminary Examining Authority (IPEA) under the PCT. The agreement will enter into force at a later date after completing necessary formality preparations by the patent office.

On October 18, 2021, the Government of the Russian Federation approved the methodology developed by the Federal Antimonopoly Service for calculating the amount of compensation payable to a Russian patent owner for producing generic medicines intended for export to other countries in accordance with the Article 1360.1 of the Civil Code without the patent owner’s consent. The corresponding government decree No 1767 entered into force on October 28, 2021.

According to Article 1360.1 of the Civil Code the Russian Government may allow to use a patented invention for the production of a medicinal product by any party for export purposes under certain specific circumstances without the consent of the patent owner with the requirement of immediate notification of the patent owner and payment of the proportionate compensation for such a use, as we informed earlier here.

The amount of compensation is 0.5% of the manufacturer’s actual revenue, which has exercised the right to use an invention, utility model or industrial design without the consent of the patent owner. The compensation is supposed to be annually paid during the period of validity of the corresponding government decision.

To date, no such authorization has been issued. We will follow up on the development of practice on this matter.

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.

In the brand new issue of The Patent Lawyer Magazine: An overview of the Eurasian design patent system. Vasily Andreev and Victor Lisovenko, Attorneys at PATENTICA, summarise the filing, examination, and opposition stages of the Eurasian design patent system.

Read the full article here for free: https://lnkd.in/dpYYCYca

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

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.

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.