Amending claims during post-grant opposition proceedings

Created on Monday, 14 November 2016 13:13

The Journal of the Intellectual Property Court (IP Court) has published an article (in Russian) about the possibilities of amending patent claims during post-grant opposition proceedings. The article summarizes the circumstances of court case # СИП-32/2015, which is believed to be having a great impact on possibility to amend claims during opposition procedure for all future cases.

As a result of opposition against AstraZeneca's patent RU 2222332 submitted by Patentica's patent attorney Victor Lisovenko, RUPTO revoked the patent full.
During the appeal procedure at the IP Court, the patent owner argued inter alia that RUPTO unlawfully rejected the amended claims only on the ground that the amendments were made based on the features taken from the description. In addition, AstraZeneca argued that RUPTO, when suggesting to present amended claims, had to point out the features that could lead to partial revocation of the patent.

AstraZeneca's appeal was rejected by the IP Court at the first instance and later this decision was upheld by the Presidium of the IP Court. Thus the initial decision of the RUPTO was kept in force.

In particular, the Presidium of the IP Court held that amending independent claims by introducing the features disclosed only in the description is allowed before the grant decision, while the claims during post-grant opposition proceedings could be amended only with the features of the dependent claims.
The Presidium of the IP Court also ruled that RUPTO is not obliged to point out to the specific options for amending the claims that could allow to avoid revocation of the patent.
Hence, the patent holder himself should be prepared to analyze the best way to amend the claims during the opposition procedure taking into account the cited prior art and the arguments of the opponent(s).

For more information on the above-mentioned case or opposition and litigation procedures in Russia in general please feel free to contact us at This e-mail address is being protected from spambots. You need JavaScript enabled to view it. .

Patentica is monitoring the IP practice in Russia and will be glad to defend ligitimate rights and interests of its clients in litigations concerning intellectual property infringement.