Intellectual Property FAQ
Litigation - Patent Enforcement
1. Lawsuits and courts
A Patent owner has a choice of three different procedures: civil court, criminal court and an administrative (police) procedure. No specific courts for are available exclusively for Patent lawsuits. Furthermore, in accordance to a Russian Federation law, the lawsuit must occur in the district court where the infringer has a place of residence.
Criminal court procedures are rarely employed. While administrative procedures are highly effective and immediate, civil court procedures are time-consuming and greatly vary based on the complexity of the case and the number of criminal procedures.
2. Trial format and timing
Patent infringement trials are held similarly to civil court trials, with a verdict, which is determined by one judge. Documents are most welcomed as evidence, whereas affidavits and live testimony are rarely accepted by a judge, though not forbidden. The cross-examination of witnesses is theoretically available, but rarely used in practice. When demining an instance of infringement, judges predominately rely on the conclusion of an independent technical expert. In some instances, upon the agreement of both parties, two additional assessors may be requested. Such a trial bears resemblance to a classical jury trial; however, the assessors make a joint decision together with the assigned judge to the case. It is highly recommended that the assessors have a business, law or financial education and experience. Therefore, additional assessors are not very useful for considering infringement cases, which are comprised of complicated technical facets.
The duration of a trial is critically dependant on the number of examinations, which sometimes can carry on for years, but on an average trials last about 1,5 years.
3. Proof requirements
In most of infringement cases and in all invalidity cases, the claimant has the burden of proof. The only exception is in cases relating to patents for a method of manufacturing a new product. If the defendant manufactures the same product, it will be assumed that this product is produced by the protected method (Art. 1358. 2(2) Russian Civil Code) and therefore, the burden of proof is on the defendant. Unenforceability procedures are not available in Russia.
4. Infringement by equivalent inventions
Equivalent IP objects are frequently taken into consideration in patent infringement lawsuits since Art. 1358 of the Russian Civil Code, stipulates the use of equivalent IP objects as an instance of infringement. It should be noted that the current Russian legislation does not comprise a legal definition for 'equivalent' IP objects. The last time a legal definition was mentioned was in a subordinate legislation issued in 1974, i.e. in the USSR. Therefore, a reference to such a subordinate legislation can be considered as unlawful. Therefore, Russian judges' decisions on equivalent IP objects are wide-ranging.
5. Discovery of evidence
Evidences for a lawsuit should be collected by the individually by the claimant or through commissions. If the claimant is aware of any documented evidence, which is in the infringer's possession, the judge may legally allow the claimant to obtain such evidences from the infringer. The judge may also legally consent for the claimant to obtain from third parties such incriminating evidence, which proves an occurrence of infringement or damage. In Russian Federation's judicial proceedings for infringement cases, the claimant is not permitted to obtain evidence from outside of the country.
6. Litigation timetable
It is difficult to indicate a precise timetable for litigation proceedings because there are not enough infringement lawsuits per year to provide statistically established data. The approximate timetable for the trial court procedure is as follows:
- From filing a suit till the first preliminary hearing - 1 month;
- The hearing - a month after the preliminary hearings;
- Examination - up to 2 months and may be repeated;
- Cross-examination of the examiner - approximately a month after the examination.
The court decision may be appealed within 1 month of the official ruling by the judge. If the claimant or the defendant decides to file an appeal, the appeals hearing usually takes place a month or two after the request for an appeal.
7. Litigation costs
The litigation costs for a patent infringement lawsuit can be estimated as follows:
- Pre-trial stage: from 5 000 to 10 000, -EUR
- Trial stage - from 3 000 to 10 000, -EUR
- Appeal stage (if applicable) - from 3 000 to 8 000, -EUR
8. Patent invalidity
According to Article 1398 of the Russian Civil Code, during the course of its effectiveness, a patent may be recognized as invalid (either in whole or in part), in the following instances:
a) a failure to correspond to the patentability conditions (novelty, inventive level or industrial applicability);
b) the presence of features that were absent on the filing date of the application in the description and/or claims of the granted patent;
c) a grant of a patent in the presence of several applications for identical inventions, which have the same priority date;
d) wrong indication of the inventor(s) or patent owner(s).
In the occurrence of instances a, b, or c, a demand to nullify the patent should be filed with the Patent Dispute Chamber of the Russian PTO. If instance d occurs, the patent grant for the IP object may be disputed in the civil court, predominately in Moscow's civil court, where the Russian PTO is located.
9. Patent unenforceability
Art. 1362 of the Russian Civil Code establishes as follows: "If a patent owner cannot use the invention to which he has the exclusive rights without infringing thereby the primary owner's rights of an invention or a utility model patent (the original patent), and the primary owner has refused to conclude a license agreement on conditions corresponding to the established practice, the patent owner (of the second patent) shall have the right to apply to court with a lawsuit against the owner of the first patent to obtain a compulsory non-exclusive license for the use of the invention or utility model covered by the first patent on the territory of the Russian Federation".
10. Monetary remedies for infringement
According to the Russian legislation, damages resulting from infringement are only compensatory and not punitive. Moreover, there is no additional punishment for willful infringement. To acquire monetary remedies from an infringer, the patent owner must prove in court, the accurate amount of damages. Only corroborated damages can be recovered. Furthermore, lost profit resulting from infringement is impossible to acquire.
11. Injunctions against infringement
While temporary or preliminary injunctions are possible, they are fairly difficult to acquire. It is necessary to prove reason and adequacy of the injunctive measures as well as how and why the evidence may disappear. Injunction is not available against third parties who have not been sued, such as the infringer's suppliers or customers.
12. Attorneys' fees
In Russian court proceedings (incl. infringement proceedings), the losing party has to pay the full compensation for the court taxes. Conversely, attorneys' fees of the winning party are in discretion of the court.
13. Time limit for lawsuits
Particular time limit for seeking compensation for patent infringement is not established by the Russian law. Therefore, it is recommended that a patent owner seek remedy within 3 years after they have determined an instance of infringement.
14. Patent marking
No special recommendation on the marking of patented products is established in Russian Federation's legislation. Nevertheless, it is strongly advised by the authorities to indicate information regarding patent protection of the patented product, e.g. to indicate patent number or patent application number, preferably followed by a warning.
Litigation
