In December 2018 Polymer CJSC has filed a lawsuit against Perspectiva LLC, demanding to recognize its patented utility model (Patent RU 150662) as dependent on utility model under patent RU 104560 held by the claimant, as well as to impose a ban on use of the above model. Both utility models describe railway sleeper pads. The earlier patent was granted to Mr. Akimov Vladimir, director general and shareholder of Polymer CJSC, who later licensed it to the claimant under an exclusive license contract. The defendant has received its patent from Tries LLC in 2017 under an assignment contract.

Having tried the case, the Moscow city commercial court has dismissed the lawsuit due to a non-applicable way of defense of exclusive rights. As under art. 1252 of the Russian Civil Code there is no provision for deeming the utility model as dependent among patentowner’s rights, Polymer CJSC could not file such a claim for restoration of its rights and interests. Recognition of patents’ dependency may be only a means of facts finding, but not a way of defense of rights as such. This decision was supported by the Ninths Court of Appeals in November 2019.

But in May 2020 the IP Court, having considered the cassation plea, has ruled that the claimant is indeed entitled to recognize the defendant’s utility model as dependent from its own patented model, using provisions of art. 1358.1 of the Civil Code. The essence of the case in question was not a termination of the defendant’s utility model, but an existence of a right to use thereof only with a claimant’s consent. Use of a dependent patented object of rights may be recognized as an infringement of another patentowner’s rights notwithstanding the fact of patent termination (or absence thereof).

Therefore, the IP Court ruled to overrule the decisions of both the first instance and appeal courts and to send the case to the Moscow city commercial court for a new trial.

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