Important Update on Divisional Applications in Russia

On 6 October 2023, the Presidium of the Intellectual Property Court of Russia as part of consideration of the case No. SIP-570/2022 between Slovenian pharmaceutical company KRKA and the Russian Patent Office on the validity of AstraZeneca’s Russian patent RU 2643764 on dapagliflozin issued a ruling that has a potential to impact the filing strategy of consecutive divisional applications at the Russian Patent Office.

As per usual Russian patent legislation, a divisional application can claim the priority date of the parent application if the divisional application was filed before a patent has been granted for the parent application (i.e. while the parent application was still pending). If, on the filing date of the divisional application, a patent for the parent application has been granted, the priority date of the divisional application is set based on its filing date, which.

For example, before the Court’s decision, it was sufficient for a first divisional application to be pending to establish an earlier priority date for a second divisional application. The fact of pendency of the parent application did not matter. The same hold true for the 3rd and 4th divisional applications and so forth. However, the recent decision stipulates that it is now necessary for the parent application to be pending to establish the same priority for any later filed divisional application. From now on once the parent application transforms into a patent there is no possibility to file a new divisional application claiming the earliest priority of the parent application even though other divisionals might still pending.

Therefore this decision imposes additional restrictions on the practice of filing divisional applications.

To mitigate the challenges presented by this new practice, consider optimizing your divisional applications filing strategy.

More particularly in the light of this decision we recommend filing all potential divisional applications before the date of issuing a patent for the first (parent) application. In particular the substantive examination of a divisional application can be postponed for up to three years from its filing date. Additionally filing a divisional application with a minimal set of claims reduce the official filing fees. Upon requesting substantive examination, the set of clams can be amended to achieve the desired scope of protection, minimizing the initial costs of filing several divisional applications simultaneously.

It’s important to note that the Court’s decision has been made final and entered into force on October 6, 2023. It is however still subject to appeal for reconsideration by the Supreme Court until December 6, 2023. Although the finality of this decision remains to be seen, for the time being it should be taken into account when filing any new divisional application to avoid any future complications in the event the decision is upheld by the Supreme Court.
For further inquiries or assistance in navigating these changes and obtaining legal advice please do not hesitate to contact us.

The RUPTO Divisional Filing Strategy Before and After SIP-570/2022 decision: