The Chamber for Patent Disputes is one of the most important divisions of FIIP performing the functions related to registration and protection of exclusive rights in intellectual property items. The Chamber was founded in 2005, is located in Moscow and has no branches in other cities significantly complicating the process of applying for the persons living in remote regions of Russia.
The competence of the Chamber for Patent Disputes includes consideration of objections to decisions of the expert commission on refusal to register a trademark or refusal to grant a patent. The CPD is also responsible for settling the disputes on challenging the granting of legal protection to trademarks, inventions, utility models and industrial designs.
Objection to the decision of the expert commission
If you are refused in trademark registration, it does not mean that it is impossible to obtain trademark rights. The fact is that Rospatent expert commission makes a lot of wrong decisions, often the experts simply have no information enough enabling them to get a complete picture and make a reasonable decision. The same applies fully to granting a patent for an invention. The task of a professional patent attorney is to overcome such refusals in the interests of the client.
In our assets there are dozens of trademark registrations and several patents become possible only after the case was considered by the CPD. PATENTUS experts will identify the grounds for contesting the refusal, determine the list of necessary evidence, and prepare an argumented objection.
Objection against granting legal protection to a trademark
The possibility to challenge the granting of exclusive rights in a trademark or a patent is provided by law in order to limit the legal monopoly of copyright holders, to ensure market development, as well as to eliminate violation of the rights made during the registration of any intellectual property item.
In practice, the trademarks are disputed in two cases: a) the disputed trademark prevents later registration; b) the claims are made on the basis of the disputed trademark. As for the patents, taking into account the obligatory novelty of all protected solutions, the patents are disputed not for the purpose of patenting similar solutions, but in order to avoid the claims of a patent owner.
The Civil Code of the Russian Federation contains a list of the grounds for challenging the rights in a trademark or a patent. Most of the disputes in this category are referred to the competence of Rospatent (namely, to the competence of the Chamber for Patent Disputes established under the FIIP).
Please consider that the decisions of Rospatent (CPD) are not final and can be challenged in court. The advantage of our company is the experts having experience in settling such cases both in CPD and in the courts. This makes us possible to support the client's case from the beginning to the completion, render a full range of services significantly increasing the quality and chances for success.
Objection against granting a patent of the Russian Federation for an invention, utility model, industrial design
Upon registration of inventions, utility models and industrial designs, the expert commission makes mistakes. It is natural. Moreover, the registration procedure for utility models does not provide for checking the compliance of the claimed utility model with the "novelty" patentability requirement, and when specifying the authors and applicants in the application for an invention/ utility model or an industrial design, Rospatent does not verify: whether the specified persons are real authors and whether they have the right to obtain a patent.
As a result, many patents (roughly estimated at 15% to 35%) can be invalidated in full or in part on various grounds, and often it is the only acceptable way out of a patent dispute. According to Article 1398 of the Civil Code of the Russian Federation, an objection against granting a patent can be filed by any person who became aware of any violations occurred when claiming legal protection.
The objections motivated by the illegal composition of the authors/ patent holders are considered in court. As a rule, this method is effective if the interests of a group of authors and/or patent holders diverge for some reason, as a result one of them can support the legal position of the person interested in invalidating the patent.
The objections motivated by the fact that the invention/ utility model or the industrial design does not meet one or more requirements to patentability are considered by Rospatent. In this case, the success of the objection will depend on the results of the patent search, the purpose of which is to find the documents escaped the eyes of the expert commission and discrediting the invention/ utility model/ industrial design. The decisions of Rospatent taken on an objection may be challenged in the Intellectual Property Court within 3 months from the date of adoption.
In the event of success, the patent is declared invalid from the date of filing the application, meaning the absence of the problems arisen from the patent, if they were before the decision on the objection was made.
What kind of disputes are considered by the Chamber?
You can appeal to this federal authority, when the disputes regard intellectual property rights registration and protection, particularly:
- if the trademark was recognized by Rospatent as unregistrable;
- if it is necessary to challenge the result of the examination of the designation after it is submitted for registration;
- when contesting a refusal to register a designation;
- if it is necessary to challenge the results of the trademark examination when third parties attempt to register a similar brand;
- when contesting the withdrawal of an application for a patentable item or registration of a designation;
- if it is necessary to challenge the well-known status of a trademark;
- when appealing against the decision of Rospatent regarding international registration of the designation (or refusal to do so);
- when contesting a decision to grant a patent, when a copyright holder of another existing patent believes that this will violate its rights;
- if it is necessary to challenge the decision to grant a patent, provided that this action, in the opinion of the applicant, has no legal grounds.
Please, pay attention: in many cases, it is possible to apply to higher instances, such as the Intellectual Property Court, only after applying to the Chamber for Patent Disputes and completing the relevant procedure.
To learn more about the Chamber functions see the official website of the Federal Service for Intellectual Property.
The ways we operate
1. Upon your request, our experts conduct a detailed analysis of your problem and provide you with a preliminary opinion.
2. We think over a strategy enabling us to get a positive result, make a presentation to the client, telling why we chose this particular area of work and what is required to complete the case successfully.
3. We represent the client in the Chamber for Patent Disputes, submit the necessary documents (objection, response, etc.). We are supervising the case until receipt of the decision.
4. We continue to protect the interests in other instances, for example, in the Intellectual Property Court, if the result does not meet the client's requirements. We render this service under a separate agreement.
PATENTUS staff consists of experienced lawyers and patent attorneys. Due to the staff of qualified employees, we perform our work at the highest professional level.
The cost of your representation in the Chamber and other instances, you can find in our price list or call our office at +7 (495) 514-05-94 (Moscow), 8 800 100-82-47 (toll free for Russia).
We also work remotely, helping our regional clients and foreign clients to settle the most complicated issues of intellectual property protection.
Why should it be us?
1) PATENTUS is the leader of the Russian Federation in the number of intellectual property disputes handled with involvement of our lawyers and patent attorneys in the Intellectual Property Court and the Chamber for Patent Disputes.
2) We are in TOP-20 rating "Intellectual Property - Pravo.Ru 300" (2013-2019)
3) Our patent experts have considerable experience in representing the Russian clients both in Rospatent, the Eurasian Office, and in foreign countries.
4) Among PATENTUS clients are those listed in the FORTUNE 500 list.
5) Professional liability of our experts is insured for the amount of 5 000 000 rubles.
