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Russia: Patent trolls on the march until March

Unlike patent trolls in the original understanding of the term, the concept of Russian trolls is tinged by national particulars. The Russian law includes patents for a utility model. This is a simplified version of inventions which is sometimes called a petty patent. A patent for a utility model is granted without substantive examination which means that a patent may be granted for a known device with slight modifications.

Perhaps the best illustration of their activities is their affection for auto shock absorbers. Every car has several shock absorbers; cars number in the millions; hence the would-be inventors saw a lucrative opportunity in obtaining patents for shock absorbers. The foundation was laid in 2006 when three patents for utility models were obtained for a shock absorber for a means of transport. The patents covered shock absorbers used in cars for decades. The patent owners began blackmailing the car manufacturers. All three patents were cancelled in cases in which our firm acted.

Appetite though comes with eating. The trolls launched another massive action obtaining Russian as well as Eurasian patents. As soon as the patents were granted they were assigned to a US corporation Troy Capital Group, created specifically for patent troll purposes.

The ploy of the trolls consisted in camouflaging patent claims in such a way that the examiners of the Russian and Eurasian offices should not notice a trap set by the "inventors". So it happened and later it transpired that the scope of rights in those patents was such that it embraced not only new designs of the shock absorbers but also the shock absorbers used long ago on the automotive market.

For example, together with other features, the structure of the shock absorber is characterised as follows: the cylinder sleeve includes two or more sections in the area adjacent to the cylinder head and the inner diameter of the cylinder sleeve of one of the sections is larger than the inner diameter of the cylinder sleeve of another section. The number of alternating versions in the claims are many so that actually any shock absorber will fall within the ambit of the claims. The purpose of these variations in diameter is to change the damping force during the operation of the shock absorber. The catch set by the trolls is that they make claims against the manufacturers of shock absorbers in respect of sleeves of the shock absorbers which indeed have variations in diameter. These variations however were not intended to be functional but are conditioned by technological tolerances and are usually within the range of microns. Seven patents of this kind have already been cancelled in Russia. It is worth noting that the trolls also obtained US patents numbers 8146720 and 8286761 and a Chinese patent number 102374251.

It is expected that amendments which will soon be introduced to Russian law will cut the ground from under the trolls' feet because substantive examination will be obligatory for utility model patents.

Vladimir Biriulin

Gorodissky & Partners
Russia 129010, Moscow
B. Spasskaya Str
25, stroenie 3
Tel: +7 495 937 6116 / 6109
Fax: +7 495 937 6104 / 6123



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