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Diagnosing COVID-19: A perspective from U.S. patenting activity

The United States Patent and Trademark Office’s (USPTO) Office of the Chief Economist released a report revealing that small companies and universities led the way in developing inventions to diagnose COVID-19, as evidenced by patent applications filed at the USPTO through April 2023.
The U.S. federal government helped spur this invention, with 10.7% of COVID-19 diagnostic public filings receiving support. The National Institutes of Health provided the most assistance (about 64%), while the National Science Foundation provided the second most, at 21.59%. Although COVID-19 diagnostic invention was highly concentrated in a few technologies, 8.6% of these inventions were also applicable to the treatment of COVID-19. Among 5,585 global COVID-19 diagnostic patent families found in this study, 47% have at least one filing at the China National Intellectual Property Administration (CNIPA), the most of any jurisdiction.

Harman’s JBL speakers designs protection: to be continued

If one asks for a list of companies that protect its rights abroad to the fullest, we would definitely recall Harman International Industries (hereinafter – Harman) producing electronic audio devices. This American company owned by Samsung Corporation is widely known for such brands as JBL and AKG. Over the last two years, Harman has been especially active in struggling against infringement of its intellectual property. For instance, Harman has filed more than a 1000 lawsuits with the Russian commercial courts. This overview contains key information about the latest legal proceedings initiated by Harman.

Remarkably, Harman keeps fighting not only for its trademark rights. In addition, this company is constantly monitoring the cases of illegal imitation or copying its industrial designs. Therefore, Harman approaches courts with various claims: to destroy the revealed counterfeit goods, to terminate the illegal use of patents, to pay compensation for trademark rights infringement, etc. The vast majority of these lawsuits were satisfied. Moreover, a substantial part of the cases was considered via simplified procedure without parties’ participation and series of hearings.

One more legal proceeding is about to be held. In October 2023 the Commercial Court of Moscow will start litigation between Harman and one of the leading consumer electronics retailers in Russia M.Video-Eldorado Group (hereinafter – M.Video) on the case no. А40-147100/2023. Harman accuses M.Video of violating its exclusive rights for design of portable wireless speakers and requests compensation. With no doubt, opposing such solid market participant as M.Video will be complicated and durable.

The current court cases demonstrate that many foreign companies don’t tend to weaken their grip over brands, patents and other incorporeal property in the Russian jurisdiction.

IP Court ruled to issue supplemental patent for RYALTRIS® nasal spray despite Rospatent refusal

In a recent decision of June 6, 2023, the IP Court overturned the Rospatent Refusal to extend the term of patent RU2687551 for RYALTRIS® nasal spray in the territory of the Russian Federation

The decision of Rospatent of July 21, 2022 to refuse extension of the patent term has been based on the conclusion that the set of claims proposed for the supplemental patent does not characterize a product relating to RYALTRIS® nasal spray (Marketing Approval LP – 006768), since the amount of one of the excipients (Na CMC) in the claims is recited as a range, but not as a specific value, as in the approved product. This was considered to be an obstacle for the patent term extension, since according to the Russian legislation, after issuance of a marketing approval for a pharmaceutical, a patent term can be extended with a supplemental patent issued with the claims adapted to cover exactly the composition of the drug approved for use.

The patent owner, Glenmark Specialty S.A., a subsidiary of the global research-based pharmaceutical company Glenmark Pharma, disagreed with the Rospatent decision and appealed to the IP Court.

A team of experienced PATENTICA representatives, Ms. Ekaterina Petrova, MSc. Biotech., patent attorney, and Mr. Alexander Tymofeev, lawyer, prepared and submitted before the IP Court an appeal supporting that the proposed set of claims totally covers RYALTRIS® nasal spray. The IP Court has appointed a court expert, specialist in the art,  who conducted detailed comparison analysis of the features recited in the independent claim with the composition of the nasal spray RYALTRIS®  disclosed in the instruction for medical use, and came to the same conclusion that all of the features of the independent claim proposed by the applicant fully coincide with the characteristics of the drug RYALTRIS®. Thanks to the professional expertise and convincing arguments prepared by PATENTICA representatives, whose opinion has been supported by the court expert evidence, and in view of Art. 1363(2) of the Civil Code, the IP Court has come to a justifiable conclusion that the term of patent RU2687551 relating to RYALTRIS® nasal spray shall be extended in the territory of the Russian Federation (IP Court decision СИП-954/2022 of June 6, 2023, https://kad.arbitr.ru/Card?number=%D0%A1%D0%98%D0%9F-954/2022).

Europe Launches Game-Changing Patent System

Europe made a giant step forward in patent protection on June 1, 2023, as it introduced the Unitary Patent system, a ground-breaking approach that promises a new era of efficiency and collaboration in patent safeguarding.

The Unitary Patent system represents a major shift in how patents are handled in Europe. Designed to modernize the patent landscape, this innovation brings a range of benefits that will make patent processes smoother and more transparent for everyone involved. From cost savings and simplified procedures to improved clarity and stronger legal protection, the Unitary Patent system aims to provide a better experience for its users.

It will now be possible to file a single patent application, pay single renewal fee in one currency once the patent is granted and even take the legal proceedings through the Unified Patent Court (UPC), a singular system introduced simultaneously. With the UPC’s debut, patent enforcement becomes centralized, offering a platform for resolving cases at a broader European level.

Seventeen countries with combined GDP over EUR 12 trillion (nearly 80% of the entire EU’s GDP) and 300 million of inhabitants have already joined the new system. These include Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. It is anticipated that eight more EU member states will enroll in the future.

With the Unitary Patent system now operational, Europe is better positioned to support inventors and entrepreneurs in protecting their intellectual property, driving progress across the region.

Applications for copycats go abandoned or refused

In the spring of 2022, there were batches of applications for trademarks copying famous brands filed with the Russian PTO by different Russian applicants. The fears of legitimate right holders turned to be premature since such application either go abandoned or face citations of prior rights.

For example, a Sochi based company Trade technologies LLC filed 83 applications for such trademarks as Apple, Boeing, Chanel, Lamborghini and many others. Among these filings 51 applications have already faced Office Actions issued by examiners, while two are under formal examination due to non-payment of the official fees with the rest being under substantial examination with no results published so far, however, the outcome is very likely to be the same.

Another company that filed 30 applications for well-known trademarks such as Dior, Givenchy and others was Smart Beauty LLC located in Moscow. It was the publicity that the company seemed to aim the most, because filing and examination fees have not been paid on 26 out of them, which has already resulted in 18 decisions on recognition of applications abandoned, and similar decisions are expected shortly on the rest of them. As for the 4 applications where the fees have been paid, two have received Office Actions and two are still under examination.

Thus, among 113 of known applications filed by these two companies as of today there has been not a single registration decision issued by the PTO. Some applications go abandoned due to non-payment of the fees, whereas those that do proceed to examination receive Office Actions with grounds against registration of the claimed marks. These statistics are another disproof of the rumors about IP in Russia being in precarious position.

In April 2022 the head of the Russian PTO announced trademark examination to be carried out in accordance with the law regardless of the applicants’ country of origin. Prosecution practice shows that the Office has been staying this course.

Can foreign IP holders enforce their rights in Russia?

Announcements about some well-known brands leaving the Russian market coupled with the partial legalization of parallel import have created a false impression about absence of IP protection for right holders from “unfriendly” states. However, court practice proves that foreign companies continue to successfully enforce their trademark rights.

Despite the suspension of direct import of goods to Russia, foreign right holders pay close attention to the situation in the market and monitor illegal use of their trademarks. Having discovered counterfeit, companies address courts to stop the infringements and claim damages. About 30 lawsuits involving well-known fashion house Dior Couture have been considered since February 2022 and decided in favor of the right holder awarding the Plaintiff damages of about 1,8 million rubles for illegal trademark use.

Another well-known French fashion house Chanel has also participated in more than 25 solved cases over the last year and has been awarded about 1 million rubles in compensation for infringement of its trademarks. Not only right holders themselves, but also administrative bodies initiate court actions against illegal use of foreign IP. For example, different courts have considered over 20 court claims filed by police and customs against infringement of ADIDAS AG bringing the defendants to administrative responsibility, imposing fines and seizing counterfeit goods.

These examples encourage other foreign companies to come to action. For example, since October 2022, the American clothing manufacturer Calvin Klein has filed more than 60 lawsuits demanding to recover more than 7 million rubles for the counterfeit goods, and some of them have already been satisfied.

In the first half of 2022 there have been a few erroneous decisions taken by courts in several Russian regions ruled against the right holders from “unfriendly” states. These rulings, widely discussed by the media, were merely wrong decisions on the ground and later on got cancelled in the following instances.

The Constitutional Court: expenses in administrative proceedings should be reimbursable!

The Constitutional Court of the Russian Federation has ruled to develop legal norms and mechanisms regulating compensation of expenses incurred in the Chamber for Patent Disputes of the Russian PTO. Until corresponding changes are introduced into the legislation, the winning party may claim from the losing party the costs borne in the administrative proceedings in addition to court expenses, only if the decision is appealed in court.

The Constitutional Court of the Russian Federation has addressed the issue of compensating legal costs borne in the administrative proceedings over a patent dispute in its Resolution of January 10, 2023 N 1-P in connection with the complaint filed by “NIKA-PETROTEK”. In its ruling, the Court has pointed out first of all, that expenses incurred by a person in the course of administrative proceedings in a dispute on granting legal protection to the intellectual property are not subject to compensation as losses, rather, they should be attributed to court expenses. Further, the Court has mentioned that there are several problematic questions in this regard: formally both the subject of administrative proceedings in Rospatent and the subsequent litigation, as well as the procedural status of the participants in such proceedings do not coincide, furthermore, the outcome of the proceedings can have its variations.

At the same time, the Court has stressed that absence of possibility for recovering expenses incurred in the Chamber for Patent Disputes may prevent the parties from resorting to administrative proceedings, therefore, the gap in the legislation should be eliminated by corresponding norms on compensational mechanism. The Resolution does not prescribe the term within which the legislation changes are to be introduced, however, it contains the reimbursement principal for the transitional period. Namely, until the corresponding legal norms are taken, the winning party can add the costs incurred in the administrative proceedings to the court expenses and claim them from the losing party, however, this is possible only of the decision of the Chamber has been appealed in court. If the case does not go to court and stops at the administrative stage, compensation of costs is yet impossible.

Previously appealing examination decisions in the Chamber for Patent Disputes, oppositions and invalidation actions considered by the Russian PTO were at the parties own expense.  The Resolution of the Constitutional Court made a large step forward towards reimbursements of such costs.

Wildberries is refused TM registration for its Violet Pantone 254C by Rospatent

On September 15, 2022 the IP Court dismissed a lawsuit by the Russian giant online marketplace Wildberries OOO, and upheld Rospatent refusal to register Pantone 254C as a color trademark.

In May 2020, Wildberries filed an application for registration of violet “Pantone 254C” color as a trademark with regards to services in class 35. However, the application was refused, and Appeal filed with RosPatent Chamber for Patent Disputes yielded no positive results. Rospatent has found the appealed designation to be not sufficiently distinctive to satisfy the trademark criteria and concluded that a color as such cannot be an object of registration.

To overcome this decision, Wildberries lawyers filed a lawsuit against Rospatent in the IP Court, stressing its long use of Pantone 254C violet, which, as has been confirmed by the poll results, has become associated for most of customers with the Wildberries marketplace. Further, none of the other marketplaces currently acting in Russia is using the same color as their trade dress, such as office furnishing and other commercial merchandise.

TM 758874 https://new.fips.ru/registers-doc-view/fips_servlet?DB=RUTM&DocNumber=758874&TypeFile=html* all trademarks are property of their respective owners

The Court, however, has arrived at a conclusion that no distinctiveness for the color as such has been acquired through its use by Wildberries company. Most designations, actually used by the Claimant and referred to as the evidence, do have other elements, such as words, abbreviations and figures. Moreover, these designations mostly do not exactly have Pantone 254C color background. And there were quite a few other market players which use shades of violet for their Internet trade activities. The poll survey was conducted only after the application was filed and its results were, in fact, not so convincing to confirm that for majority of the customers the color was definitely associated with the Claimant. Therefore, the Court supported the Office and dismissed the lawsuit.


* all trademarks are property of their respective owners

In a recent decision of the Russian IP Court, a lawsuit to cancel TM registrations for “Love Is…” owned by Minikim Holland B.V. has been dismissed

In the decision in November 2022, The IP Court supported the position of Minikim Holland B.V. whose TM registrations Nos 639976 and 722689 for “Love Is…” were objected by sole entrepreneur Vasily Levchenko as acts of unfair competition. The Claimant argued that the designations became known in Russia long before their priority dates and that he himself used these designations before their filing dates in Russia. In the Claimant’s opinion, the TM registrations in 2017 and 2019 were done in bad faith and not for Defendant’s commercial purposes, but solely for creating basis for infringement actions.

TM 722689 https://new.fips.ru/registers-doc-view/fips_servlet?DB=RUTM&DocNumber=722689&TypeFile=html*
all trademarks are property of their respective owners

TM 639976 https://new.fips.ru/registers-doc-view/fips_servlet?DB=RUTM&DocNumber=639976&TypeFile=html*
These registrations, in his opinion, are an obstacle for his commercial activity as a seller of clothes and souvenirs marked by disputed designation and shall be canceled.

In the decision in November 2022, The IP Court supported the position of Minikim Holland B.V. who presented evidence confirming that TMs have been actively used to this day, increasing its popularity and distinctiveness among consumers throughout the world, including Russia. Further, the Court ruled that there was no evidence of unfair competition between the Claimant and the Defendant.

As for designation in question, it became known in 1970s from a series of comics strips, whose author was a spouse of the Defendant’s founder, while the Claimant started his activity as a sole entrepreneur in 2015, later than priority of RU 639976 trademark, which rules out a possible competition as such, much less an unfair one. Therefore, the lawsuit was dismissed while the Individual Entrepreneur Mr. Levchenko and his company “Vsemarket” was obliged to pay Minikim Holland a compensation the fine in amount of 1375400 roubles.


* all trademarks are property of their respective owners

Hypertherm wins patent infringement case and receives 1.5 million in compensation

On November 1, 2022 the Commercial Court of St. Petersburg satisfied patent infringement lawsuit in favor of Hypertherm Inc. and awarded a compensation of 1.5 million rubles. The Court’s decision was based on the analysis of counterfeit products and expert opinion. The evidence presented to the Court confirmed infringement of three patents owned by the Claimant.

In October 2020, Hypertherm Inc., a well-known US manufacturer of cutting equipment, sent a cease-and-desist letter to Steelcut OOO domiciled in St. Petersburg, Russia, demanding to stop manufacturing and selling of shields and nozzles protected by Russian invention patent 2649860 and design patents 90899 and 91529.

No reply followed in due time, so the Hypertherm corporation filed a lawsuit against Steelcut, requesting to cease the infringement, remove counterfeit goods from civil circulation and pay compensation in a fixed amount of 1 million rubles for each infringement. During the litigation procedure, the Claimant submitted the samples of supposedly counterfeit products and evidence of purchase thereof from the Defendant, including notarized protocols of receipt of purchased goods.

On the Claimant’s initiative, expert opinion concerning possible use of all three patents was requested. Two Russian patent attorneys, appointed as experts by the Court, confirmed use of the patented invention and industrial designs in respective products, providing their written opinions and later testifying in court. Based on this and other evidence unauthorized use of patents (as defined in Art.1358 of the Russian Civil Code) and infringement thereof was considered as proven by the Court.

The Defendant objected to compensation claims, arguing that patent owners from non-friendly states (including USA) are now entitled to zero royalties for compulsory licenses, granted by the Russian Government for national importance purposes. However, the Court dismissed that argument, having pointed out that neither Paris Convention, nor Russian national laws deprive any foreign patent owner of their exclusive right and defense thereof. In this case there was no use of invention and designs for a national purpose, and the Government Decree on zero royalties is not applicable to infringement compensation. Hence, the Court adjudged a monetary compensation to the Claimant, just lowering it to 500 thousand rubles for each patent infringed, as the judge considered the initial claims to be excessively high.

The case is transferred to the 13th Court of Appeals for hearing of the appeal filed by the Defendant.


Creation of RU Pharmaceutical registry is underway, but slow

Recent legal changes, introduced by EA PO, allows to include national patents in the EA pharmaceutical registry (active from March 2021); however, not every member country is yet willing to submit actual information on its patents. Therefore, national registries of pharmaceutical patents are still necessary.

Russian registry is still in its prototype stage and it is expected that legal framework shall be finished soon. Yury Zubov, head of RU PTO, recently stressed a necessity of parallel registry, deriving from experience, already available in EAPO. The head of the latter, Grigory Ivliev, confirmed the EA legal base is ready and theoretically every claimant may add a national patent to EA registry. But not all national PTOs are willing to provide restricted information on the patents, so the registry is doomed to be incomplete till then.


Patent cancellation means retroactive complete cease of protection

On 6 April 2021 the Commercial Court of Altay region supported the patent infringement lawsuit of Uralvagonzavod, owner of RU 2200681 patent for invention, filed against Altayvagon company. More than 36 million rubles were awarded as compensation. The decision was supported by the 7th court of appeals in September. Nevertheless, the Defendant both filed a cassation plea and started a patent cancellation with RU PTO. The latter procedure succeeded in November 2021, deeming the patent void from the date of filing. Uralvagonzavod attempted to reverse the cancellation within the IP Court, but eventually failed, managing only to stall the cassation for the main infringement case.

As the Defendant lost its exclusive right to the patented invention retrospectively, starting the date of filing (in year 2001), it meant a loss of all lawsuit basis. Following official legal opinion of the Supreme Court of Russia, the Presidium of the IP Court reversed both the first and appeal courts’ acts and dismissed the lawsuit completely