Author: pat

On October 9, a meeting of the Advisory Committee on Intellectual Property under the Board of the Eurasian Economic Commission (EEC) was held. The main purpose of the Eurasian Economic Commission is to ensure the conditions for the functioning and development of the Eurasian Economic Union (EAEU), to develop proposals for the further development of integration.

Ernar Bakenov, Director of the Department for the Development of Entrepreneurship of the EEC, reported that in 2023, 5.8 million counterfeit goods were identified in the Eurasian Economic Union countries. He also noted that the leading positions in counterfeiting in the EAEU member states are occupied by clothing and footwear, games and toys, car parts, food products, alcoholic beverages, household appliances and electronics, accessories.

A number of analytical documents were submitted for consideration by the Committee participants, including statistical indicators from 2019 to 2023. The documents include an analytical review for the last five years with proposals for the development of the intellectual property sphere within the Union and recommendations for improving the legal framework in the states, as well as a report on monitoring law enforcement practices in the field of protecting intellectual property rights in the EAEU countries for 2023.

These documents will be published on the official website of the EAEU.

The meeting considered the practice of providing legal protection for information constituting production secrets (“know-how”) in the EAEU countries, the specifics of implementing the Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the Union.

The Committee participants also discussed the launch of a unified customs register of intellectual property objects, the formation of coordinated approaches to combating violations of intellectual property rights on the Internet, and the creation of a search service for industrial property objects protected in the EAEU states.

The Russian Patent and Trademark Office has issued clarifications regarding some typical questions on the new Statute on Fees, effective in the Russian Federation from October 5, 2024.

1. Payment of fees for patent maintenance

Under the new Statute, patent maintenance fees are paid in five-year increments. The fee for the first five-year period shall be paid alongside the registration, publication, and issuance fees. Fees for each subsequent period are due during the last year of the previous five-year period or within an additional six-month grace period at a 50% surcharge.

This new payment procedure also applies to patents issued before October 5, 2024.

If part of the maintenance fee has been paid for an incomplete five-year period, the remaining amount shall be settled during the year of the patent’s validity for which the patent maintenance fee has already been paid, or within the additional six-month grace period.

2. Payment of fees during the transition period

Many applicants may face confusion as to whether to pay the new fees, or follow the previous rules.

Generally, the due fee amount is to be determined by the date of receipt of the relevant document (application, request, objection).

For example, a patent application filed on October 1, 2024 requires payment based on the Statute on Fees effective that day (i.e. the previous version). An electronic filing qualifies for a 30% discount. The same will be true for any patent, utility model, industrial design or trademark application filed on or before October 4, 2024.

If a request for substantive examination on a patent application is submitted on December 6, 2024, i.e. after the new Statute on Fees takes effect, the fee will follow the Statute on Fees as amended, and no discount will apply.

For the registration, publication, patent and certificate issuance with respect to inventions, utility models, industrial designs, and trademarks, the due fee amount is determined by the payment date.

However, if a payment notice specifying the required amount had been sent to the applicant before the amendments came into force, the fee shall be paid as indicated in the payment notice. Such payment notice, for example, is usually included into trademark registration decisions.

If the fee is paid incorrectly before October 5, 2024, the applicant shall make an additional payment up to the amount valid on the date of the first payment.

3. Fee Privileges for Applicants

The list of applicants eligible for fee privileges has been expanded.

For example, fee privileges are available for groups of applicants that are small businesses, accredited educational institutions, or scientific organizations.

Mixed teams of applicants (e.g., a pensioner and an individual entrepreneur) can also receive privileges, allowing the group to benefit from the maximum fee reduction applicable to any member. Previously, mixed teams were not eligible for such privileges.

Patentica’s patent attorneys, Victor Lisovenko and Ksenia Emelianova have successfully represented Sun Pharmaceuticals in opposing Novo Nordisk’s patent RU 2421238.

On September 30, 2024 the Board of a Chamber for Patent Disputes at the Russian Federal Service for Intellectual Property (RUPTO) partially revoked the patent. Specifically, as a result of the inter partes opposition proceedings Claims 1-11, relating to a formulation comprising a GLP-1 agonist—such as liraglutide (marketed as Victoza and Saxenda) or semaglutide (Ozempic and Wegovy) — were cancelled. Additionally, Claims 12-15, which covered methods for preparing the formulation, were also revoked.

Patent RU 2421238 covered pharmaceutical formulations comprising a GLP-1 agonist, an incretin mimetic that stimulates insulin production. Initially developed to treat type 2 diabetes, these formulations have also been approved for managing obesity and weight loss.

This case is notable as it reaffirms the RUPTO’s established approach to assessing the “novelty” requirement under Art. 1350 of the Russian Civil Code. A lack of novelty can be determined not only when a prior art document explicitly teaches a claimed object, but also when features disclosed in the prior art can be combined to arrive at the claimed object. In this instance, despite 15 prior art documents submitted RU 2421238 was mainly revoked for failing to meet the novelty criterion due to an earlier patent application filed by the same patentee. This repeatedly highlights the critical importance of a well-planned intellectual property strategy and filings throughout the R&D process and drug development cycle.

Patentica attorneys have extensive experience representing clients before the Chamber for Patent Disputes and the Intellectual Property Court. If you need assistance with your patent-related matters, please reach out to us at info@patentica.com.

Starting October 5, 2024, significant changes will take effect in Russia’s patent fee structure, following Resolution No. 1278 of September 27, 2024 by the Government of the Russian Federation.

The key updates include:

– general official fee increase across various services associated with IP matters by an average of 20%;

– rise in official patent term extension fees for pharmaceuticals, pesticides, and agrochemicals to 100,000 RUB ($1,110);

– removal of the 30% discount for electronic filings;

– introduction of a one time 5-year payment system for patent maintenance, replacing previously used annual payments.

Please feel free to contact us for further clarification at info@patentica.com.

During the industry conference “Book Market of Russia – 2024” at the Moscow International Book Fair, Evgeny Zaitsev, the head of the Department for Control and Supervision in the field of electronic communications at Roskomnadzor (The Russian Federal Service for Supervision of Communications, Information Technology and Mass Media), reported that since 2018, more than 301 million links to pirated content have been taken down from search results as part of the anti-piracy memorandum.

In 2018, a memorandum was signed between copyright holders and search engine operators to collaborate on protecting exclusive rights in the digital era. This agreement allows for direct cooperation in removing links to illegal content from search results, ensuring that pages infringing copyright and related rights are excluded promptly. With the memorandum in place, pirated links are eliminated within 15-20 minutes of detection.

In 2023, an expansion of the memorandum included representatives from the book and music industries in its efforts to combat piracy.

Furthermore, Roskomnadzor has engaged with the World Intellectual Property Organization (WIPO) through the implementation of a memorandum signed in September 2020. This collaboration involves the use of Wipo Alert, an online platform where national authorities can upload and update lists of copyright-infringing websites. This enables advertisers, advertising agencies, and intermediaries to access these lists either manually or through an API, providing a comprehensive view of infringing sites globally.

Zaitsev revealed that Roskomnadzor has contributed approximately 2.8 thousand domain names to the Wipo Alert database since the beginning of this partnership, with ongoing efforts to expand and update the WIPO database.

On August 8, 2024, the Patent Disputes Chamber of Rospatent upheld AstraZeneca’s objection to the validity of the Eurasian Patent No. 40996 for the medication Osimertinib by “AxelPharm” in the Russian Federation. The Chamber’s decision was announced in the Rospatent database of decisions on August 15, 2024.

In the objection, “AstraZeneca” presented arguments supporting the fact that the δ-form of osimertinib mesylate specified in Eurasian Patent No. 40996 does not exhibit any unexpected advantages over known forms of osimertinib mesylate and does not comply with the inventive step criterion of patentability.

Moreover, “AstraZeneca” is contesting 10 tenders for the supply of osimertinib.

Several contracts were signed with various government clients for the supply of the medication “Osimertinib” in June 2024. However, in August 2024, the Federal Antimonopoly Service (FAS) deemed the outcome of the regional auction for the purchase of osimertinib, where the application for the supply of “Osimertinib” was declared as the winner, unlawful.

Osimertinib is utilized in the production of the drug “Tagrisso”, which is utilized in the treatment of lung cancer and is manufactured by “AstraZeneca” at its own facility in the Kaluga Region (Russia) in quantities that adequately meet the demands of the Russian market. The medication has been provided to government clients under the contract system for the acquisition of goods to fulfill state and municipal needs from 2017 to the present time. “AstraZeneca” asserts that there has been, and continues to be, no scarcity of this medication.

“AstraZeneca” has stressed that patent disputes frequently occur because the responsibility for adhering to the requirements for safeguarding exclusive rights when introducing pharmaceuticals into circulation lies solely with the applicant, with regulators having no duty to verify the existence of a patent and the trustworthiness of any guarantees provided, if any.

“AstraZeneca” highlights potential measures to enhance the situation, including: firstly, compulsory oversight by regulators over the adherence to exclusive rights when registering a medication, and when determining the maximum retail price for a medication – imposing a postponed effective date until the expiration of patent protection. Secondly, it is crucial to establish an approach for the widest possible utilization of interim measures when addressing disputes related to the infringement of patent rights for medications, while establishing minimal deadlines for their enforcement by regulatory bodies.

According to “AstraZeneca”, these measures will help prevent the breach of intellectual property rights and swiftly halt any infringement that may occur. Bolstering patent protection is crucial not only for the advancement of the Russian pharmaceutical industry, but most importantly for patients, who must have confidence in the quality of the medications supplied and the consistency of their availability.

A special ceremony was held on September 9, 2024 to commemorate the signing of the Eurasian Patent Convention on the same day in 1994. This convention established the successful Eurasian Patent System, which is currently utilized in 8 Eurasian countries: Azerbaijan, Armenia, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and Turkmenistan. Representatives from the national patent offices and government bodies of the participating countries, as well as Eurasian patent attorneys, were all invited to attend.

During the event, Eduard Shablin, a Eurasian patent attorney from Patentica who serves as the President of the Eurasian Patent Attorneys Assembly, delivered a warm opening speech. Maria Nilova from Patentica also extended congratulations to the Eurasian Patent Office and expressed gratitude for its educational initiatives. She also highlighted the quality of patents and the patent application process.

Romania has officially joined the Unitary Patent system as of 1 September 2024. This means that all European patents with unitary effect will now automatically include coverage for Romania. With a population of around 19 million people, Romania’s inclusion expands the market covered by the UP system to a total of 330 million people.

European patents with unitary effect that are registered by the EPO on or after 1 September 2024 will be applicable in the 18 EU Member States that are part of enhanced cooperation and have ratified the Agreement on a Unified Patent Court (UPC Agreement) by that date. These states include Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia, and Sweden.

Since the Unitary Patent system came into effect on 1 June 2023, the EPO has already received over 34,000 requests for unitary effect and registered 33,000 Unitary Patents. Notably, 32% of all requests for unitary effect in the first half of this year were submitted by small businesses and individual inventors, reflecting a growing interest in this streamlined and cost-effective patent protection option.

The Unitary Patent system, which comprises the Unitary Patent and the Unified Patent Court (UPC), offers advantages such as reduced costs, a simplified process, consistent protection, and increased legal certainty across participating EU Member States. This makes it an appealing choice, particularly for SMEs. The UPC’s jurisdiction covers both Unitary Patents and classic European patents, allowing for a centralized procedure that eliminates the need for expensive parallel court proceedings in multiple national courts.

It is anticipated that more EU Member States will ratify the UPC Agreement in the future, ultimately enabling patent protection in up to 25 EU Member States through a single request to the EPO.

The Eurasian Patent Office has recently received its first one thousand industrial design applications.

Established in 2021, the Eurasian system for patenting industrial designs has quickly gained popularity over the past three years. A wide range of designs can be patented, including packaging, household items, drawings, graphic images, and user interface pages.

Each Eurasian application can encompass up to 100 industrial designs within the same class of the International Classification of Industrial Designs.

Since its inception, the Eurasian Patent Office has examined over 2,300 industrial designs. In 2021, there were 92 applications for 190 designs, followed by 233 applications for 639 designs in 2022, and 369 applications for 860 designs in 2023. This year, more than 300 applications for 700 designs have already been submitted.

This system allows patent holders to protect up to 100 designs with a single patent valid in the territory of the eight states of the Eurasian Patent Organization (Azerbaijan, Armenia, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan), showcasing the efficiency and relevance of the Eurasian system amidst high demand for industrial design protection in the region.

Turkmenistan has officially joined the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention, allowing for the possibility of obtaining a Eurasian patent for industrial designs in the country.

The President of Turkmenistan, Serdar Berdimuhamedov, signed the law on July 13, paving the way for Turkmenistan to become a party to the Protocol. The Protocol, which was adopted in 2019 during a diplomatic conference in Nur-Sultan, Kazakhstan, will now include all member states of the Eurasian Patent Organization (Azerbaijan, Armenia, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan).

This accession also opens up the opportunity for the Eurasian Patent Organization to join the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

Upon depositing the act of accession with the depository, the Protocol will enter into force with respect to Turkmenistan within three months.

President Serdar Berdimuhamedov highlighted Turkmenistan’s commitment to expanding cooperation with international organizations, stating that the country is taking steps to strengthen its ties with authoritative international structures.

For those seeking a Eurasian patent for an industrial design in the future, Turkmenistan is now a viable option to consider.

The Intellectual Property Court reviewed the cassation appeal of the foreign company “Gymworld Inc.” (Republic of Korea) against the decision of the Arbitration Court of the Sverdlovsk Region (Russia) dated 03.05.2023 in case No. A60-30765/2022 and the ruling of the Seventeenth Arbitration Court of Appeal dated 06.09.2023 in the same case concerning the claim of the foreign company “Gymworld Inc.” against 6 organizations and 1 individual entrepreneur for compensation for the infringement of exclusive rights to the trademark “Magformers” under international registration No. 1068369, registered on 24.01.2011 for goods in class 28 “Magnetic toys, toys.” “Gymworld Inc.” is also the exclusive copyright holder for the design of the packaging of the products “Magformers Amazing Police Set,” “Magformers Amazing Construction Set,” “Magformers Amazing Rescue Set,” with the rights confirmed by a certificate of authorship of the design.

A representative of “Gymworld Inc.” stated that during the period from 07.01.2021 to 05.03.2021, products were sold with packaging featuring a verbal&device mark similar to the trademark under international registration No. 1068369, and the design of the packaging of Magformers Police Set (“Amazing Police Set”), “Magformers Amazing Construction Set,” “Magformers Amazing Rescue Set” was also used. The company brought this claim to the Arbitration Court of the Sverdlovsk Region after failed attempts to resolve the issue directly with the infringers.

The claims of “Gymworld Inc.” were upheld for an amount exceeding 200 thousand rubles (approximately 2,200 US dollars).

This case serves as a reminder of the importance of protecting intellectual property and the benefits of taking action to prevent unauthorized use.

A Russian entrepreneur has been fined $250000 for illegally printing copies of the Harry Potter books by British author J.K. Rowling. The rights to publish this series in Russia are held by the Makhaon Publishing House.

The court found that between December 2018 and April 2021, the Kurgan resident organized the production and sale of 43,620 counterfeit copies of the books without permission from the copyright holder.

The businessman was found guilty of illegally using copyrighted materials on a large scale and was sentenced to 2 years of suspended imprisonment with a 2-year probation period. He was also ordered to pay a fine of ₽22,376,000, equivalent to about 258000 US dollars.

The counterfeit books, which were printed in Kurgan and seized in St. Petersburg, were deemed unauthorized copies.

Despite the man’s appeal to overturn the sentence, the court upheld the decision of the suspended imprisonment and the payment of compensation.