Category: Patents

The United States Patent and Trademark Office’s (USPTO) Office of the Chief Economist released a report revealing that small companies and universities led the way in developing inventions to diagnose COVID-19, as evidenced by patent applications filed at the USPTO through April 2023.
The U.S. federal government helped spur this invention, with 10.7% of COVID-19 diagnostic public filings receiving support. The National Institutes of Health provided the most assistance (about 64%), while the National Science Foundation provided the second most, at 21.59%. Although COVID-19 diagnostic invention was highly concentrated in a few technologies, 8.6% of these inventions were also applicable to the treatment of COVID-19. Among 5,585 global COVID-19 diagnostic patent families found in this study, 47% have at least one filing at the China National Intellectual Property Administration (CNIPA), the most of any jurisdiction.

If one asks for a list of companies that protect its rights abroad to the fullest, we would definitely recall Harman International Industries (hereinafter – Harman) producing electronic audio devices. This American company owned by Samsung Corporation is widely known for such brands as JBL and AKG. Over the last two years, Harman has been especially active in struggling against infringement of its intellectual property. For instance, Harman has filed more than a 1000 lawsuits with the Russian commercial courts. This overview contains key information about the latest legal proceedings initiated by Harman.

Remarkably, Harman keeps fighting not only for its trademark rights. In addition, this company is constantly monitoring the cases of illegal imitation or copying its industrial designs. Therefore, Harman approaches courts with various claims: to destroy the revealed counterfeit goods, to terminate the illegal use of patents, to pay compensation for trademark rights infringement, etc. The vast majority of these lawsuits were satisfied. Moreover, a substantial part of the cases was considered via simplified procedure without parties’ participation and series of hearings.

One more legal proceeding is about to be held. In October 2023 the Commercial Court of Moscow will start litigation between Harman and one of the leading consumer electronics retailers in Russia M.Video-Eldorado Group (hereinafter – M.Video) on the case no. А40-147100/2023. Harman accuses M.Video of violating its exclusive rights for design of portable wireless speakers and requests compensation. With no doubt, opposing such solid market participant as M.Video will be complicated and durable.

The current court cases demonstrate that many foreign companies don’t tend to weaken their grip over brands, patents and other incorporeal property in the Russian jurisdiction.

In a recent decision of June 6, 2023, the IP Court overturned the Rospatent Refusal to extend the term of patent RU2687551 for RYALTRIS® nasal spray in the territory of the Russian Federation

The decision of Rospatent of July 21, 2022 to refuse extension of the patent term has been based on the conclusion that the set of claims proposed for the supplemental patent does not characterize a product relating to RYALTRIS® nasal spray (Marketing Approval LP – 006768), since the amount of one of the excipients (Na CMC) in the claims is recited as a range, but not as a specific value, as in the approved product. This was considered to be an obstacle for the patent term extension, since according to the Russian legislation, after issuance of a marketing approval for a pharmaceutical, a patent term can be extended with a supplemental patent issued with the claims adapted to cover exactly the composition of the drug approved for use.

The patent owner, Glenmark Specialty S.A., a subsidiary of the global research-based pharmaceutical company Glenmark Pharma, disagreed with the Rospatent decision and appealed to the IP Court.

A team of experienced PATENTICA representatives, Ms. Ekaterina Petrova, MSc. Biotech., patent attorney, and Mr. Alexander Tymofeev, lawyer, prepared and submitted before the IP Court an appeal supporting that the proposed set of claims totally covers RYALTRIS® nasal spray. The IP Court has appointed a court expert, specialist in the art,  who conducted detailed comparison analysis of the features recited in the independent claim with the composition of the nasal spray RYALTRIS®  disclosed in the instruction for medical use, and came to the same conclusion that all of the features of the independent claim proposed by the applicant fully coincide with the characteristics of the drug RYALTRIS®. Thanks to the professional expertise and convincing arguments prepared by PATENTICA representatives, whose opinion has been supported by the court expert evidence, and in view of Art. 1363(2) of the Civil Code, the IP Court has come to a justifiable conclusion that the term of patent RU2687551 relating to RYALTRIS® nasal spray shall be extended in the territory of the Russian Federation (IP Court decision СИП-954/2022 of June 6, 2023, https://kad.arbitr.ru/Card?number=%D0%A1%D0%98%D0%9F-954/2022).

Europe made a giant step forward in patent protection on June 1, 2023, as it introduced the Unitary Patent system, a ground-breaking approach that promises a new era of efficiency and collaboration in patent safeguarding.

The Unitary Patent system represents a major shift in how patents are handled in Europe. Designed to modernize the patent landscape, this innovation brings a range of benefits that will make patent processes smoother and more transparent for everyone involved. From cost savings and simplified procedures to improved clarity and stronger legal protection, the Unitary Patent system aims to provide a better experience for its users.

It will now be possible to file a single patent application, pay single renewal fee in one currency once the patent is granted and even take the legal proceedings through the Unified Patent Court (UPC), a singular system introduced simultaneously. With the UPC’s debut, patent enforcement becomes centralized, offering a platform for resolving cases at a broader European level.

Seventeen countries with combined GDP over EUR 12 trillion (nearly 80% of the entire EU’s GDP) and 300 million of inhabitants have already joined the new system. These include Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. It is anticipated that eight more EU member states will enroll in the future.

With the Unitary Patent system now operational, Europe is better positioned to support inventors and entrepreneurs in protecting their intellectual property, driving progress across the region.

In the spring of 2022, there were batches of applications for trademarks copying famous brands filed with the Russian PTO by different Russian applicants. The fears of legitimate right holders turned to be premature since such application either go abandoned or face citations of prior rights.

For example, a Sochi based company Trade technologies LLC filed 83 applications for such trademarks as Apple, Boeing, Chanel, Lamborghini and many others. Among these filings 51 applications have already faced Office Actions issued by examiners, while two are under formal examination due to non-payment of the official fees with the rest being under substantial examination with no results published so far, however, the outcome is very likely to be the same.

Another company that filed 30 applications for well-known trademarks such as Dior, Givenchy and others was Smart Beauty LLC located in Moscow. It was the publicity that the company seemed to aim the most, because filing and examination fees have not been paid on 26 out of them, which has already resulted in 18 decisions on recognition of applications abandoned, and similar decisions are expected shortly on the rest of them. As for the 4 applications where the fees have been paid, two have received Office Actions and two are still under examination.

Thus, among 113 of known applications filed by these two companies as of today there has been not a single registration decision issued by the PTO. Some applications go abandoned due to non-payment of the fees, whereas those that do proceed to examination receive Office Actions with grounds against registration of the claimed marks. These statistics are another disproof of the rumors about IP in Russia being in precarious position.

In April 2022 the head of the Russian PTO announced trademark examination to be carried out in accordance with the law regardless of the applicants’ country of origin. Prosecution practice shows that the Office has been staying this course.

Announcements about some well-known brands leaving the Russian market coupled with the partial legalization of parallel import have created a false impression about absence of IP protection for right holders from “unfriendly” states. However, court practice proves that foreign companies continue to successfully enforce their trademark rights.

Despite the suspension of direct import of goods to Russia, foreign right holders pay close attention to the situation in the market and monitor illegal use of their trademarks. Having discovered counterfeit, companies address courts to stop the infringements and claim damages. About 30 lawsuits involving well-known fashion house Dior Couture have been considered since February 2022 and decided in favor of the right holder awarding the Plaintiff damages of about 1,8 million rubles for illegal trademark use.

Another well-known French fashion house Chanel has also participated in more than 25 solved cases over the last year and has been awarded about 1 million rubles in compensation for infringement of its trademarks. Not only right holders themselves, but also administrative bodies initiate court actions against illegal use of foreign IP. For example, different courts have considered over 20 court claims filed by police and customs against infringement of ADIDAS AG bringing the defendants to administrative responsibility, imposing fines and seizing counterfeit goods.

These examples encourage other foreign companies to come to action. For example, since October 2022, the American clothing manufacturer Calvin Klein has filed more than 60 lawsuits demanding to recover more than 7 million rubles for the counterfeit goods, and some of them have already been satisfied.

In the first half of 2022 there have been a few erroneous decisions taken by courts in several Russian regions ruled against the right holders from “unfriendly” states. These rulings, widely discussed by the media, were merely wrong decisions on the ground and later on got cancelled in the following instances.

The Constitutional Court of the Russian Federation has ruled to develop legal norms and mechanisms regulating compensation of expenses incurred in the Chamber for Patent Disputes of the Russian PTO. Until corresponding changes are introduced into the legislation, the winning party may claim from the losing party the costs borne in the administrative proceedings in addition to court expenses, only if the decision is appealed in court.

The Constitutional Court of the Russian Federation has addressed the issue of compensating legal costs borne in the administrative proceedings over a patent dispute in its Resolution of January 10, 2023 N 1-P in connection with the complaint filed by “NIKA-PETROTEK”. In its ruling, the Court has pointed out first of all, that expenses incurred by a person in the course of administrative proceedings in a dispute on granting legal protection to the intellectual property are not subject to compensation as losses, rather, they should be attributed to court expenses. Further, the Court has mentioned that there are several problematic questions in this regard: formally both the subject of administrative proceedings in Rospatent and the subsequent litigation, as well as the procedural status of the participants in such proceedings do not coincide, furthermore, the outcome of the proceedings can have its variations.

At the same time, the Court has stressed that absence of possibility for recovering expenses incurred in the Chamber for Patent Disputes may prevent the parties from resorting to administrative proceedings, therefore, the gap in the legislation should be eliminated by corresponding norms on compensational mechanism. The Resolution does not prescribe the term within which the legislation changes are to be introduced, however, it contains the reimbursement principal for the transitional period. Namely, until the corresponding legal norms are taken, the winning party can add the costs incurred in the administrative proceedings to the court expenses and claim them from the losing party, however, this is possible only of the decision of the Chamber has been appealed in court. If the case does not go to court and stops at the administrative stage, compensation of costs is yet impossible.

Previously appealing examination decisions in the Chamber for Patent Disputes, oppositions and invalidation actions considered by the Russian PTO were at the parties own expense.  The Resolution of the Constitutional Court made a large step forward towards reimbursements of such costs.