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The Eurasian Patent Office (EAPO) as an International Searching Authority (ISA) under the PCT

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.

Calculation of compensation when producing patented drugs for export without patent owner’s consent

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.

An overview of the Eurasian design patent system

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

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

Olga Zlobina

“Control and efficiency”.

Olga’s key to success are sociability, responsibility and an organised nature. Fluent in English, Olga is always glad to communicate with clients and assist her colleagues with arranging meetings, conferences and other events.

A fan of serenity of libraries, Olga loves to read and explore the worlds of different authors. She also loves nature, long strolls around Moscow, deep conversations and 5 o’clock English tea.

Expertise

Administrative and economic activities
Paperwork
Event planning

Ludmila Uvarova

“Never ever give up!”

Ludmila’s politeness, accuracy, friendliness, reliability, experience, openness to new knowledge make her a perfect assistant, in whose hands all submissions are safe.

A journalist in the past, Ludmila keeps her interest in literature and poetry. She loves nature, brain teasers, merry gatherings with her family and friends and cooking.

Expertise

Preparing and submitting correspondence to Rospatent
Working with correspondence received from Rospatent and the EAPO

Oleg Gusev

“A journey of a thousand miles begins with a single step”.

Oleg has a unique first-hand experience at aircraft engineering, which has laid solid grounds for sharp analytical approach to inventions in mechanics and instrument engineering. Apart from technical skills, Oleg also speaks Chinese and has a profound knowledge of Asian cultures. A mixture of humanitarian and technical insights enable Oleg to see unexpected and original solutions, which others cannot master.

Expertise

Prosecution of patent applications
Preparing documents for PPH
Checking of patent application translations

Technical areas

Mechanics
Optics
Optoelectronics
Instrument engineering

Ekaterina Kovaleva

“I stand up for the rights and uniqueness of people and companies, whose creativity and ideas make our lives better, easier and healthier”.

Having worked in Intellectual Property sphere for over 7 years, Ekaterina is experienced in trademark protection and enforcement, and is certified as a Russian Trademark Attorney.

She is responsible for consulting foreign and domestic clients and handling trademark cases before the Russian Patent and Trademark Office (Rospatent) and WIPO as well as patent agencies in Europe, Americas, Asia and CIS through colleagues and associates. She also participates in cases considered by the Russian Intellectual Property Court, the Chamber for Patent Disputes (Rospatent) and Federal Antimonopoly Service.

Ekaterina loves challenges, dealing with tangled cases, learning new languages and sharing her IP experience in articles, webinars and posts.

Expertise

Trademark portfolio management strategies
Trademark prosecution consultancy
AO (Appellations of Origin) and GI (Geographical Indications) prosecution and enforcement
Trademark enforcement consultancy
Handling of Office Actions and Provisional Refusals
Oppositions against pending and registered trademarks
Negotiations on co-existence within trademark registration or litigation cases
Forwarding CDLs and limitation requests

Ekaterina Petrova

“It always seems impossible until it’s done”.

Ekaterina has solid experience in prosecuting applications and providing various types of patent searches and opinions relating to a wide range of life sciences, with a major being in the field of microbiology, immunology and genetic engineering.

Ekaterina has also obtained the diploma of a specialist in professional translation from the Department Translation and Translation Science.

Expertise

Patent drafting and prosecution at Rospatent, Eurasian Patent Office and other jurisdictions
Patent searches (prior art searches, freedom-to-operate, patentability, invalidity, etc)
Freedom-to-operate, non-infringement and other types of opinions
Patent litigation

Technical areas 

Biotechnology
Medicine
Pharmaceutics
Genetic engineering
Chemical engineering

 

Irina Lisovenko

“Knowledge is like water – it borrows the shape of the container it occupies”.

Irina is a registered Russian and Eurasian patent attorney with technical expertise across different fields of optic, information and mechanic technologies and particular focus on information technology, software and telecommunications. With more than ten years of intellectual property experience, Irina has gained extensive experience in patent search, application drafting and prosecution of computer-implemented inventions. Her experience includes consulting a wide range of clients, from startups to large corporations, and she uses her knowledge in IP assets valuation to meet each client’s needs. She easily deals with complex objects involving artificial intelligence and data processing and concentrates her best efforts on bypassing the obstacles that the computer-implemented inventions may face. The combination of Irina’s legal and technical background makes her a considerate adviser for IT clients in developing and managing intellectual property portfolios.

Before developing her legal career, she took positions of a research engineer and a QС engineer in an analytical equipment manufacturer, where she solved various problems relating to sensor signal processing and data analysis.

Irina quickly gets right down to the specifics and can dig deep to represent the client’s position in the best possible way keeping up to the deadlines.

Expertise

 

Patent drafting and prosecution at Rospatent and Eurasian Patent Office
PCT Entry in Russia and Eurasia
Patent searches (prior art searches, freedom-to-operate, etc)

Technical areas

Optics
Electronics
IT& computer systems
AI applications
Navigation
Satellite Systems
Medtech