Patent oppositions

Considering the intricacies of the local legal systems, it is always advantageous to have an experienced and dedicated specialist on your side. For example, Russia has a bifurcated system of patent opposition and litigation. A Russian patent for an invention can be challenged by any person anytime during patent validity period in full or in part by submitting a notice of opposition to the Russian Patent and Trademark Office (Rospatent), if:

1. the claimed subject matter does not comply with the patentability criteria (novelty, inventive step, industrial applicability);
2. the essence of the invention is not sufficiently disclosed in the specification;
3. the claims recite features, which were not disclosed in the original specification at the filing date (added matter);
4. there is a patent having the same priority date on an identical invention;
5. the patent does not correctly identify an inventor(s) and/or patent owner;

The latter ground requires an action before the IP Court, while the rest of the grounds can be used for the opposition before the Chamber for Patent Disputes (CPD), which is a special division of Rospatent responsible for carrying out opposition and appeal proceedings.
A Eurasian patent can be challenged before the Eurasian Patent Office within 3 years following a publication date of the granted patent in the EAPO Official Bulletin, or any time before the national authorities of the EAPC Contracting States (patent offices). After expiry of the 3 year period the patent can be challenged only before the national authorities of the corresponding Contracting states. As for Russia, the opposition is considered by he Chamber for Patent Disputes of the RUPTO. If Eurasian patent is challenged before both of the patent offices in parallel the RUPTO postpones the hearing on the merits until the decision is taken by the Eurasian PTO.

A final decision on a given opposition is taken by the IP Court, which is responsible for considering appeals on the Rospatent’s decisions.
While there is no opposition system in relation to pending patent applications, third parties have an option of submitting observations (TPOs) about the patentability of the claimed invention once the application is published. Although there will be no inter parties proceedings, the third party observations will be taken by the patent office into account when making a final decision on grant or rejection of the patent.

Being skilled and experienced in patent opposition work, our patent attorneys conduct thorough prior art analysis regarding the patentability criteria and other grounds to accurately assess the prospects of possible opposition proceedings and are able to provide effective solution and legal assistance to both patent owners and their opponents.