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Patent oppositions

Patent wars are not only about enforcing intellectual property rights and fighting against unfair competitors: registered patents can also be challenged if grant of protection violated the relevant legal provisions. PATENTICA’s Russian and Eurasian patent attorneys act on both sides of the fence successfully attacking or protecting patents under revocation procedure.

Attorneys

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 6 months following a publication date of the granted patent in the EAPO Official Bulletin. After expiry of this period the patent can be challenged before the national authorities (patent offices) of the corresponding Contracting states of the Eurasian Patent Convention. For Russia, that would be the CPD.

 

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.

Documents / Information we need

PCT application entering into National Phase:

  • PCT application number;
  • Names and addresses of applicant(s) and inventor(s) (unless the application is published);
  • Description, claims, abstract, and drawings (unless the application is published);
  • Power of Attorney executed by the applicant;
  • Amendments made after the international publication (if any);
  • Amendments to be made during the National Entry;

National applications:

  • Names and addresses of applicant(s) and inventor(s);
  • Certified copy of priority application(s) (when priority is claimed)
  • Power of Attorney executed by the applicant;
  • Description, claims, abstract, and drawings;

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