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The Russian patent litigation system is bifurcated: patent infringement cases are heard by courts, while patent invalidity actions are filed with the Chamber of Patent Disputes, a sub-division of Rospatent, the Russian IP office.
Disputes between commercial entities are solved in the Arbitrazh (commercial) courts, so patent infringement law suits are typically filed with the regional Arbitrazh court. The location of the court depends on the registered address of the defendant.
Judges in the Arbitrazh courts do not have technical backgrounds, so the decision regarding a possible patent infringement is based on the opinion of a technical expert. There is no jury trial. The appointed expert carries out an examination following the court’s request and submits a written report in which the allegedly infringing product or method is compared with the scope of the independent claims.
The claimant and the defendant can both propose their own expert candidates. The judge decides which candidate is most suitable based on the candidate’s technical background and expertise in the relevant area, as well as the total costs of the examination and written report.
According to our experience, the number of hearings and the duration of the proceedings at the Arbitrazh courts can vary depending on the region and the judge handling the case; proceedings handled by courts in Moscow and St. Petersburg tend to be completed somewhat faster than those in some other regions.
The decision issued by the Arbitrazh court can be appealed within one month in the region’s appeal court (there are 21 regional appeal courts in the Russian Federation). A further appeal can be filed with the IP Court located in Moscow, which acts as a court of cassation.
In addition to reviewing the decisions of the Arbitrazh courts and appeal courts, the IP Court is a court of a first instance for, for example, the cancellation of a trademark on the grounds of non-use.
Before filing a patent infringement lawsuit, it is highly recommended to obtain evidence in which all the features present in the patent’s independent claim are used in the allegedly infringing product.
In practice, such evidence could be a sample of the product bought from the manufacturer or the distributor, or other evidence such as technical documentation, eg, instructions, manuals, etc.
“It is highly recommended to obtain evidence in which all the features present in the patent’s independent claim are used in the allegedly infringing product.”
If the evidence is published online, notarised copies of the relevant web pages should be obtained before filing the lawsuit, as the infringer is likely to remove all the relevant information after the proceedings have been initiated.
According to the law, the claimant should send a warning letter prior to initiating the infringement proceedings, if the claimant intends to claim monetary compensation or damages.
The winning party can claim compensation of the legal expenses from the losing party, but in practice, only a part of the expenses will be compensated.
Damages awards are usually nominal when compared to some other jurisdictions.
According to the statistics for 2018 published by the Supreme Court of the Russian Federation, all arbitration courts examined in total 94 patent infringement cases, and the total amount of compensation claimed was ₽256,716,000 ($3,496,471). Forty cases (42%) were satisfied and the total amount awarded was ₽12,196,000. This means that ₽304,900 was the average amount of compensation per case.
In 2019, all arbitration courts examined 149 patent infringement cases, and the total amount of compensation claimed was ₽1,078,350,000. Among these cases, 76 (51%) were satisfied and the total amount awarded was ₽43,929,000. This gives ₽578,013 as the average amount of compensation per case.
Erik Viik is a partner and patent attorney at Papula-Nevinpat. He can be contacted at: firstname.lastname@example.org
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