Patent oppositions

Considering the intricacies of the local legal systems, it is always advantageous to have an experienced and dedicated specialist on your side. For example, Russia has a bifurcated system of patent opposition and litigation. A Russian patent for an invention can be challenged by any person anytime during patent validity period in full or in part by submitting a notice of opposition to the Russian Patent and Trademark Office (Rospatent), if:

the claimed subject matter does not comply with the patentability criteria (novelty, inventive step, industrial applicability);
the essence of the invention is not sufficiently disclosed in the specification;
the claims recite features, which were not disclosed in the original specification at the filing date (added matter);
there is a patent having the same priority date on an identical invention;
the patent does not correctly identify an inventor(s) and/or patent owner;

The latter ground requires an action before the IP Court, while the rest of the grounds can be used for the opposition before the Chamber for Patent Disputes (CPD), which is a special division of Rospatent responsible for carrying out opposition and appeal proceedings.
A Eurasian patent can be challenged before the Eurasian Patent Office within 3 years following a publication date of the granted patent in the EAPO Official Bulletin, or any time before the national authorities of the EAPC Contracting States (patent offices). After expiry of the 3 year period the patent can be challenged only before the national authorities of the corresponding Contracting states. As for Russia, the opposition is considered by he Chamber for Patent Disputes of the RUPTO. If Eurasian patent is challenged before both of the patent offices in parallel the RUPTO postpones the hearing on the merits until the decision is taken by the Eurasian PTO.

A final decision on a given opposition is taken by the IP Court, which is responsible for considering appeals on the Rospatent’s decisions.
While there is no opposition system in relation to pending patent applications, third parties have an option of submitting observations (TPOs) about the patentability of the claimed invention once the application is published. Although there will be no inter parties proceedings, the third party observations will be taken by the patent office into account when making a final decision on grant or rejection of the patent.

Being skilled and experienced in patent opposition work, our patent attorneys conduct thorough prior art analysis regarding the patentability criteria and other grounds to accurately assess the prospects of possible opposition proceedings and are able to provide effective solution and legal assistance to both patent owners and their opponents.

Translations

All translators we recruit have additional linguistic training complementing their qualifications in technical disciplines, such as chemistry, pharmaceuticals, biochemistry, mechanics, optics, computer engineering, software, medical equipment and others. Our main working languages are Russian, English, German, Japanese, Ukrainian and Georgian.

We have successfully implemented MemoQ CAT tool into our translation process. This top-notch program allows us to provide competitive prices for our clients along with higher speed and quality of translations based on using client- or subject-specific Translation Memories and trainable machine translation feature.

For ensuring the highest quality, we have developed an efficient algorithm for processing a translation order: each translation is reviewed by a senior patent specialist or a patent attorney in order to ensure proper terminology, style and format.

Domain Names

At PATENTICA, we help to register, renew and transfer first- and second-level domain names on the territory of Russia, the CIS and other countries. We also provide comprehensive counsel regarding interrelation between trademark and domain name legislation, represent clients in domain name disputes, including in compliance with the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

Computer Programs

Program codes for computers and mobile applications, website codes and databases are generally considered literary work and enjoy the same protection coverage as other copyright objects from the date of their creation during the author’s life plus an additional 70 years.

Some IT solutions are also patentable as computer implemented inventions if they have features that solve a particular technical problem or have a specific technical effect. You can learn more about patentable IT solutions in the Patents section (click here).

Another way to protect rights to a computer program is state registration of the code, upon which you receive a certificate that fixes details of the code, its programming language and purpose. Such registration is a formal, fast and relatively inexpensive procedure, available, for example, at the Russian PTO. A state certificate gives a number of advantages to the IP owners, such as:

Clear identification

To transfer software and databases protected by a patent, it will be sufficient to simply indicate the registration number

Authorship

The registration clearly certifies the owner(s) and the author(s), minimizing the risks of conflicts over authorship rights

Infringement

In case of violation of rights, it is practically easier to enforce a patented object than copyright and claim damages.

Certificate of Registration

It is easier to convince a counterfeiter that his actions are illegal, by presenting a Certificate of Registration

Benefits

It is much easier to claim damages in courts, as the certificate clearly identifies the program and indicates the date of registration: the two important issues for asserting the fact of infringement

Utility Models

PATENTICA’s specialists and patent attorneys provide professional services in drafting, filing and prosecution of a utility model application, as well as responding to office actions, paying renewal fees, recording changes and preparing registration of licenses, defending and contesting utility models through oppositions and addressing infringements, counterfeit and unfair competition cases in Armenia, Azerbaijan, Belarus, Georgia, Kazakhstan, Moldova, Russia, Tajikistan, Turkmenistan, Ukraine, Uzbekistan and abroad.

The key features of a utility model in many countries are:

Object of protection

Devices

Patentability criteria

Novelty and industrial applicability

Term of protection

10 years

Assignment & Licensing

PATENTICA’s trademark and patent attorneys work closely with the legal team to get the most monetary value from your IP when counselling, drafting or reviewing contracts, or conducting negotiations in deals of all types, such as patent transfer, licenses for emerging technologies and selection achievements, trademark and copyright assignment, licensing and franchising. We handle not only explicit disposal of IP rights, but also work with transactions relating to inter-institutional research collaborations and sponsored research agreements, technology-transfer transactions, confidentiality agreements related inter alia to know-how, non-disclosure agreements and labour agreements with employee’s invention alienation and reward policy provisions.

Litigation

PATENTICA’s team of certified lawyers is backed up by trademark and patent attorneys who join forces to offer perspective attack and defence strategies and actions in administrative bodies and courts. In Russia, for example, the list of authorities includes a Rospatent division – the Chamber for Patent Disputes, Federal Antimonopoly Service, commercial courts (including the High State Arbitration Court), the Intellectual Property Court, police and the Customs Office.

The scope of litigation matters we deal with embraces IP infringement, cybersquatting, counterfeit, competition law (unfair competition), unauthorized registration of IP in the name of agents and challenging decisions of the Patent and Trademark Office.

Attorneys represent litigant parties in civil actions, adopting a flexible approach to protecting their IP rights.

We also involve law enforcement organizations, when necessary, to promptly combat counterfeiting, and we hand over relevant information to the Customs offices in order to identify and stop counterfeit merchandise. In addition, PATENTICA’s attorneys regularly counsel clients concerning possible defensive and enforcement strategies for patents, trademarks, and broader issues.

Copyright

Even when no official copyright registration is stipulated by the IP law, enforcing copyright and protecting authorship can be appreciably facilitated by means of depositing samples of copyright objects.

PATENTICA’s legal team is experienced in assisting clients with depositing, representing both plaintiffs and defendants in infringement lawsuits, drawing up transfer and franchise agreements, consulting on applicability of blockchain technologies and overall management of IP portfolio including works qualifying for copyright protection.

Industrial Designs

PATENTICA’s patent attorneys deal with design application prosecution from filing to registration, maintenance through renewal, recording changes and licenses, responding to Office Actions, defending and contesting designs through oppositions and addressing infringements, counterfeit and unfair competition cases in Russia, CIS countries and abroad.

We also help to overcome Notifications of refusal issued in relation to international designs filed via the Hague System, conduct clearance and freedom-to-operate searches and provide fully-fledged design portfolio management strategies.

As an example, here are the basics of industrial design patents in Russia:

5 years

Design patents are valid for 5 years. The term can be extended repeatedly for 5 years for a total of 25 years.

12-months’ grace period

A 12-months’ novelty grace period for filing an application is allowed after the original disclosure of a design before an application must be filed for its registration.

Several variants

One application can contain several variants of one design or a group of designs forming a set of articles – on the condition of compliance with the requirement of unity.

Trademarks

A wide range of company’s identifiers can become trademarks: a word, image, logo, 3D mark, smell, colour, position mark, hologram, music tracks, short video – the list goes on, allowing businesses to protect their identity and enhance its value. A registered trademark is a weapon against infringement, unfair competition, counterfeit and dilution. Furthermore, a trademark is an indispensable part of a franchise agreement, which is one of the leading tools in modern economics.

PATENTICA provides a comprehensive range of trademark services covering the following areas:

Filing&Office Actions

in Russia, the CIS and adjacent countries (including the Madrid system)

Searches

both preliminary and post-registration (monitoring)

Provisional refusals

under the Madrid system in Russia, the CIS and adjacent countries

Customs Registry

both entering and renewal

Trademark portfolio management

developing enforcement strategies, handling cases in administrative institutions and courts, naming and creating logos

Oppositions

against pending and registered trademarks

Post-registration

renewals, transfer of rights, licenses, voluntary renunciation of rights, changes

Patents

We at PATENTICA believe that a well-developed, comprehensive patent strategy, including timely registration of IP rights as well as monitoring of competitor’s patent activity, is essential to enhance the competitiveness of a company and avoid possible complications connected with enforcing IP rights on the market. PATENTICA deals with domestic and foreign patent prosecution, due diligence and freedom to operate investigations, assignment and licensing agreements, invalidity actions, litigation and post-registration maintenance.

Departments

Our patent department provides extensive range of services across diverse technology areas. Our Patent Attorneys and Experts are grouped by main focus into the following departments:

Chemistry & Chemical Engineering

Life Sciences & Biotechnology

Pharmaceuticals

Mechanical Engineering

Electrical Engineering

Material Sciences

Software and IT

In cases of complex modern technology often patent attorneys and experts specializing in different technical areas work together to meet the needs of our clients.

PATENTICA professionally assists in prosecuting patent applications before the Eurasian Patent Office (EAPO). As a result of smooth and streamline examination procedure handled by the patent attorneys of our firm a Eurasian application transforms into a single Eurasian patent equally enforceable in up to 8 EAPC countries including Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan. Alternatively we could help in obtaining individual patents in the same countries or neighboring countries that are not parties of the Eurasian Patent Convention such as Georgia, Ukraine and Uzbekistan. Finally we draft and file a considerable number of PCT applications, which is a popular option for our domestic and international clients, who wish to obtain patent protection in different countries worldwide.

PATENTICA deals with drafting, filing and prosecuting patent applications, as well as preparing and registering assignments and licenses, handling appeals and oppositions, and dealing with the renewal of patents. The practitioners in our patents group also have significant experience in attending patent disputes at the administrative institutions, such as Chamber of Patent Disputes of the Russian Patent Office, and represent clients in court cases, including Intellectual Property Court.

Additionally, we offer a range of advice-based services, such as freedom-to-operate searches, patentability searches, IP due diligence, IP strategy consulting and others.

PATENTICA participates in technology transfers and offers our clients from academic and research institutions comprehensive help in finding possible investors in their business and qualified advice at every stage, from provisional patent filings to the signing of valuable transfer deeds.