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Patentica’s Delegates at AIPPI 125th Anniversary Celebration Conference in Brussels, May 13, 2022

The delegates from Patentica, Ms. Olga Gribanova (Partner, Head of the Trademark Department, Trademark Attorney) and Mr. Eduard Shablin (Partner, Head of the Moscow Division, Patent Attorney) are very pleased to have attended AIPPI 125th Anniversary Celebration Conference in Brussels, which took place on May 13, 2022.
We thank our colleagues, partners and friends for fruitful and long-awaited meetings. Please feel free to contact us for any questions related to intellectual property by sending an email to info@patentica.com or by writing directly to Olga (olga.gribanova@patentica.com) or Eduard (Eduard.shablin@patentica.com).
We look forward to new offline events and cooperation!

patentica-brussel

GENERAL LICENSE NO. 31: The U.S. Government authorizes Certain Transactions Related to Patents, Trademarks, and Copyrights in Russia

On 5 May 2022 the Department of Treasury of the U.S.A. published General License No. 31 “Authorizing Certain Transactions Related to Patents, Trademarks, and Copyrights”, which refers to the previously adopted sanctions under Directive 4 under Executive Order 14024 “Prohibitions Related to Transactions Involving the Central Bank of the Russian Federation, the National Wealth Fund of the Russian Federation, and the Ministry of Finance of the Russian Federation,” 28 Feb. 2022

In particular, License No. 31 makes an exception for transactions made in connection with patents, trademarks, copyright and other form of intellectual property. As for now, the following transactions are authorized:

  1. 1. The filing and prosecution of any application to obtain a patent, trademark, copyright, or other form of intellectual property protection;
  2. 2. The receipt of a patent, trademark, copyright, or other form of intellectual property protection;
  3. 3. The renewal or maintenance of a patent, trademark, copyright, or other form of intellectual property protection; and
  4. 4. The filing and prosecution of any opposition or infringement proceeding with respect to a patent, trademark, copyright, or other form of intellectual property protection, or the entrance of a defense to any such proceeding.

The reconsideration of the previously imposed sanctions by the U.S. Government is beneficial to all of the U.S. owners of Russian intellectual property assets facilitating payments to enable the U.S. applicants and owners to file, prosecute, register and maintain their patent, trademark and design rights in Russia.
The full version of the License is available at: https://home.treasury.gov/system/files/126/russia_gl31.pdf

In general, the Russian and Eurasian patent offices operate as usual providing patent and trademark registration services to all of the foreign applicants – irrespective of their origin and presence in the Russian market.

As always, we are keeping a close eye on all of the ongoing law updates and amendments and would be happy to provide any legal assistance and advice on the intellectual property matters to our clients from all over the world.

Patentica Delegates at INTA 2022 Annual Meeting in Washington DС, April 30 – May 4, 2022

Dear Colleagues, we are pleased to inform you that delegates from Patentica, Ms. Maria Nilova (Managing Partner), Mr. Vasiliy Bykov (Patent Attorney, Chemistry & Biology) and Ms. Julia Malinina (Patent Expert, Chemistry & Biology) will be attending the upcoming INTA 2022 Annual Meeting in Washington ВС, April 30 – May 4, 2022.
If you wish to arrange a meeting with Patentica representatives, please feel free to send us a letter at rsvp@patentica.com
See you in Washington DС!

Julia Malinina

“The impossible is possible”

Julia’s technical background generally covers a wide range of disciplines in chemistry, including organic and inorganic chemistry, analytical chemistry, pharmaceutics, and materials science. She constantly visits various seminars and courses on patent related topics organized by Rospatent, EPO, and other intellectual property state organizations in order to develop her knowledge and stay updated with the latest IP novelties.

A keen explorer and sharp researcher, Julia has recently done a successful PhD in Chemistry, enjoys travelling, sports, creative hobbies and brings bright, energetic and vivid atmosphere to our team.


Expertise

Russian and Eurasian patent prosecution
Drafting applications
PCT national entry
Patent opposition

Technical areas

Сhemistry
Biochemistry
Chemical technology
Pharmaceutics
Materials science

IPBC Europe 2022 in London, on March 29-30, 2022

Dear Colleagues, we are pleased to inform you that PATENTICA will be represented at the IPBS Europe 2022 in London, on March 29-30, 2022 by Maria Nilova, Russian and Eurasian Patent Attorney, Managing Partner.
If you wish to arrange a meeting with Patentica, please feel free to send us a letter at rsvp@patentica.com
See you in London!

Recent court decisions on lawsuits filed in the name of companies from the countries labeled as “unfriendly nations”

Numerous claims in media that Russia’s response to sanctions will be encouraging infringement and backfire at companies from “unfriendly nations” in terms of IP protection are not accurate.
Global concerns are raised after an precedence decision was issued by the Arbitration court in Kirov on the lawsuit of One Entertainment UK Limited against a Russian entrepreneur over infringement of copyright to cartoon characters Peppa Pig and Daddy Pig, and trademark infringement with regards to IR № 1212958, № 1224441 (case No. A-28-11920/2021). The lawsuit was dismissed, because the judge considered it to be an abuse of rights, since the plaintiff is a legal entity from an “unfriendly” state. The decision, taken on 3 March 2022, can be appealed within a month in the Second Court of Appeals.
The judge referred to the Decree of the President of the Russian Federation “About application of special economic measures in connection with unfriendly actions of the United States of America and affiliated with them foreign states and international organizations” No. 79 of February 28, 2022.
This decision obviously was caused by misreading and misinterpretation of the mention decree, which does not stipulate or allows dismissing lawsuits initiated by entities from certain countries. Although such a court position is unprecedented, it was an initiative of a single judge, which will most likely be successfully appealed. It certainly does not demonstrate a common approach of the Russian arbitration courts and the Intellectual Property Court in particular or any official governmental position and cannot become a basis for similar decisions.
This ruling is considerably outweighed by recent decisions issued in favour of the very same One Entertainment UK Limited company over trademark and copyright infringement. For example, the following cases have been successful lately:
case А56-580/2022, decision of 15 March 2022: the court has ruled to collect compensation from the defendant (Russian individual entrepreneur) for infringement of copyright to cartoon characters Peppa Pig, Daddy Pig, Mummy Pig , George Pig and destroy counterfeited goods;
case А56-590/2022, decision of 15 March 2022: the court has ruled to collect compensation from the defendant (Russian individual entrepreneur) for infringement of copyright to cartoon characters Peppa Pig, Daddy Pig, Mummy Pig , George Pig and trademarks IR №1 212 958, № 1 224 440 and destroy counterfeited goods;
case А12-24261/2021, decision of 11 March 2022: the court has ruled to collect compensation from the defendant (Russian individual entrepreneur) for infringement of copyright to cartoon characters Peppa Pig, Daddy Pig, Mummy Pig , George Pig, Danny Dog, Rebecca Rabbit, Miss Sheep and trademarks IR 1212958, 1224441.
There is also a number of other favourable decisions in cases on trademark, copyright and industrial design infringements, where plaintiffs are entities from the countries that have been labelled as “unfriendly”, such the USA or South Korea:
case №А60-60028/2021, decision of 2 March 2022: the court has ruled to collect compensation from the defendant (Russian individual entrepreneur) for infringement of an industrial design No. 99993 owned by ENPRANY Co., Ltd. (South Korea) and bind him to stop the infringement by deleting information from marketplaces and civil circulation;
case А56-214/2022, decision of 15 March 2022: the court has ruled to collect compensation from the defendant (Russian individual entrepreneur) for infringement of trademark ROBOCAR POLI IR 1213307 and copyright to characters Robocar, Poli, Roy, Ember, Hally belonging to ROI VISUAL Co., Ltd. (South Korea) and destroy counterfeited goods;
case №А65-29944/2021, decision of 15 March 2022: the court has ruled to collect compensation from the defendant (Russian limited liability company) for infringement of copyright to character G-011 «CENTER STAGE» owned by MGA Entertainment Inc. (the USA) and destroy counterfeited goods;
case А50-31389/2021, decision of 15 March 2022: the court has ruled to collect compensation from the defendant (Russian individual entrepreneur) for infringement of trademark LOL No. 638367 owned by MGA Entertainment Inc. (the USA).
Court decisions that do not comply with the current legislation is a recurrent phenomenon in any jurisdiction, which is exactly why there exists the appeal system. A single erroneous decision does not demonstrate a tendency and cannot serve as a basis to jump to conclusions about the automatic cancellation of IP protection for companies outside of Russia. The Russian IP legislation is compliant with the international conventions and agreements, which is why it is necessary to keep monitoring and defending one’s rights.

ZENTIVA PHARMA vs. FARMATUN-1 LLC, DINAMIKA LLC and DINAMIKA MANAGEMENT COMPANY LLC. Dolphin nasal washing device.

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.

Russia joined the Lisbon Agreement on Appellations of Origin and Geographical Indications

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

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.