Defending against a patent attack

25-05-2017

Defending against a patent attack

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Russian and Eurasian patent applicants should closely examine the scope of their dependent claims during patent prosecution to secure a strong defence strategy against a possible invalidity action, say Victor Lisovenko and Maria Nilova of Patentica.

With the establishment of Russia’s Intellectual Property Court in 2013, whose duties include the reconsideration of decisions taken by Rospatent, various companies acting in the Russian market have gradually become more active in filing invalidity requests to the office’s Chamber for Patent Disputes (CPD).

Patent invalidity proceedings take on average 1.5 to 2.5 years, including court reconsideration. They can be initiated at the CPD at any time against a Russian patent and after expiry of the six-month post-grant opposition period in the case of a Eurasian patent. 

"Making amendments to claims during an opposition procedure or invalidity proceedings is a well-known approach to avoid the revocation of a patent in its entirety." 

Annually the IP Court reconsiders approximately 50% of all patent invalidation decisions, with official statistics putting the reversal rate at about 10-20%. The court has issued some important decisions clarifying the essence of various patent provisions, shedding light on the rules and principles of invalidity proceedings in Russia.

One such important practical issue is the ability to amend claims of a challenged patent during invalidity proceedings. This was thoroughly considered by the IP Court during a dispute between AstraZeneca and Rospatent in 2015.

Russian patent RU2222332 was granted to the pharma company for the use of a composition for treating certain respiratory conditions. An invalidity procedure was initiated by a generic manufacturer, which preferred to stay unnamed and was represented by Patentica’s patent attorneys. The patent was held invalid and revoked in its entirety based on novelty.

During oral hearings at the CPD the patentee was given an opportunity to submit amended claims. Having revoked the patent as a whole, the CPD held that the originally granted claims were not novel. In addition, the proposed amended claims were found to be inadmissible, as they were beyond the scope of claims as granted. The patentee appealed against this decision to the IP Court, which upheld the CPD’s decision and rejected the lawsuit.

Making amendments to claims during an opposition procedure or invalidity proceedings is a well-known approach to avoid the revocation of a patent in its entirety. In some jurisdictions patent proprietors are given the opportunity to file several requests with amended claims. However, according to Rospatent invalidity procedural rules, amendments can be made only once, and at the discretion of the CPD members considering the case.

The CPD has the right to invite a patent proprietor to amend the claims if the amendments can lead to the maintenance of the patent at least in part. In the absence of the amendments the patent should be revoked in its entirety.

Supreme Court standard

In 2010, the Supreme Court of Russia made it clear that the CPD is obliged to invite a patentee to make certain amendments to help determine whether the patent could be kept in the amended form. Whether the CPD has to specify the exact amendments was not stated.

This question was clarified by the IP Court in the AstraZeneca case. The court stated that the CPD is not obliged to indicate or recommend specific amendments, which could save the patent from complete revocation. This suggests that a patentee seeking to amend the claims during invalidity proceedings has to weigh up, critically and objectively, the possible counter arguments of the opposing party when proposing amendments to the set of claims.

Another important issue clarified by the IP Court during the case was the issue of the admissibility of amendments. When submitting the amended claims, AstraZeneca supplemented the independent second medical use claim with several features from the specification to make the use of the composition more precise, with the features characterising the regimen of administration.

The CPD held the amended claims inadmissible as they were changed beyond the scope of claims as granted. The IP Court agreed with that reasoning, ruling that such a practice provides a fair balance of social and economic interests between patent proprietors and the general public.

Taking the above ruling into account in order to strengthen a patent against post-grant invalidity proceedings, an applicant of a Russian or Eurasian patent should closely examine the scope of their dependent claims during patent prosecution. In the course of possible invalidity action, all possible commercially advantageous embodiments within the set of claims should be explored in order to secure a strong defence strategy.

Victor Lisovenko is a Russian and Eurasian patent attorney at Patentica. His practice includes drafting and prosecuting patent applications, compiling oppositions and third-party observations and representing clients before the courts. He is a member of the Russian Association of Patent Attorneys, St. Petersburg Association of Patent Attorneys, AIPPI and LES. He can be contacted at: victor.lisovenko@patentica.com

Maria Nilova is a managing partner at Patentica. She has an MSc in chemical technology and a PhD in materials sciences from St. Petersburg University of Technology. Nilova has had considerable experience in patent matters since the 1990s. She specialises in patent prosecution in chemistry, chemical technology, pharmaceuticals, cosmetics and polymers. She can be contacted at: maria.nilova@patentica.com

patent, patent litigation, patent prosecution, Patentica, Victor Lisovenko, Maria Nilova, patent invalidity, Supreme Court of Russia

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