Important Update on Divisional Applications in Russia

Important Update on Divisional Applications Filing Strategy at the RUPTO after Recent IP Court decision.

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.

According to the decision in question upon filing a second, third, etc. divisional application it is now necessary for the original parent application to be pending to establish the same priority date. Once a patent on the parent application is granted the doors for any divisional applications are closed.

In the light of this decision it is advisable filing potential divisional applications all at once before the date of issuing a patent on the original parent application. As usual the substantive examination of a divisional application can be deferred for up to three years from its filing date. Upon requesting substantive examination, the clams can be amended to achieve the desired scope of protection, minimizing the initial costs of filing several divisional applications simultaneously.

The Court’s decision has been made final and entered into force on October 6, 2023. It is however still subject to potential 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.