In Russia the exclusive right to an invention can be granted by either a Russian or a Eurasian patent. At any time during its period of validity the patent for an invention may be invalidated and voided by a notice of opposition submitted to the Patent Disputes Chamber of the Russian Patent Office. The procedure for submitting and processing the opposition is defined by the Opposition Rules. For Eurasian patents an administrative revocation procedure is also envisaged, according to which a notice of opposition may be filed with the Eurasian Patent Office within six months of the date of publication of information concerning the grant of the Eurasian patent.
During the past year, the Russian Patent Disputes Chamber has given about 100 decisions in respect of granted invention patents. In the Eurasian Patent Office there have been fewer than 10 decisions of the administrative revocation procedure.
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The Patent Disputes Chamber
Let's consider the Chamber practice. How long can the process take? According to published decisions, the fastest case took about three months from the receipt of a notice of opposition until the approval of the decision by the head of the Patent Office, and the longest took about two years.
The first notice that the patentee (as well as the opponent) receives from the Chamber indicates the date of a board session where the opposition will be examined. This date usually gives the patentee only a couple of months, although the session can be deferred many times "because of the need to provide conditions for full and objective case proceeding" (Rule 4.3 of the Opposition Rules). For example the session was postponed on a written request of a patentee (who asked for the time to inspect the opposition) as well as on a request of an opponent (who asked for the time to review the patentee's comments). This request was made directly at the board session (decision of April 11 2006 on RU 2160120). In these cases more than one session can be carried out.
However the Chamber can dismiss a petition to defer the session:
The Opposition Rules do not envisage that the written patentee's comments as an imperative principle nor that the sending of such comments by the Chamber to the opponent are obligatory. The opponent could become acquainted with the patentee's comments during the board session. In this connection rescheduling the session would lead to ungrounded lengthening of the proceeding (decision of February 17 2006 on RU 32480).
Indeed, the Opposition Rule envisages neither obligatory presentation of the patentee's written comments on the opposition to the opponent, nor even advising the opponent of the receipt of the comments.
During the processing both the opponent and the patentee are free to choose the moment to present in the Chamber any materials that cause them concern. In fact the written patentee's comments, additions to the notice of opposition, additions to the patentee's comments and amended claims can be presented at any time, even at the session itself. At best this leads to unexpected rescheduling of the session that is not desirable.
The Rules state only that in the case of presenting "information from dictionaries and handbooks and/or indication of additional circumstances that were not taken into account in the decision of the examination division" a patentee "has to be acquainted with such information and/or circumstances and has to have an opportunity to present his opinion". They further state that "in case of the need for more careful analysis of newly presented sources of information or additional circumstances the session of the board can be postponed". These are simple words, but they give cause to appeal a decision of the Chamber if a petition to defer the session is dismissed.
What further adventures can the parties meet in the process of revoking a patent? Undoubtedly the most interesting is the amendment of the claims by the patentee.
Amending the claims
The board can propose to the patentee either that the patent be invalidated fully if there are no amendments or invalidated in part if it is amended (Rule 4.9 of the Rules).
Experience shows that patentees do not like to be passive and forestall the situation: they prefer to present amended claims together with their comments. While according to the Rules the claims can be amended only on the proposal of the board, usually claims amended on the patentee's initiative are accepted by the board for consideration "with rule 4.9 of the Rules taken into account".
How far can the patentee go when amending the claims?
Only one case of amending the claims is simple and clear: an opposition challenges the novelty, one feature has alternative meanings and the novelty requirement is not met for one or several of the sets of features. In this case, when this fact is established, the board proposes that the patentee amend the claims by excluding the one or several options from the claims. If the patentee puts aside the proposal to amend the claims, the board makes a decision to invalidate the patent in full (see the decision of January 31 2006 on RU 18697). If the patentee amends the claims as proposed, the board makes a decision to grant a new patent with these claims, which are stated directly in the decision (see the decision of March 24 2006 on RU 21979).
If an independent claim does not meet the novelty or inventive step requirements, the board can propose that the patentee introduce features from dependent claims into the independent one. While this situation has happened more than once, it is impossible to conclude from the published decisions how long the patentee is given to make such amendments and what further processing is required with respect to the amended claims. Taking this into account, when compiling an opposition patent attorneys should analyze all the dependent claims and provide arguments against them in advance, including those relating to industrial applicability – assessment of which, according to the Russian Patent Rules, is rather strict.
If the patentee finds it expedient to include in the claims features from the disclosure, he can do so by announcing that the claims do not include some essential features. After that features from the disclosure can be included in the claims, and even "the generic term reflecting the intended purpose of the invention" (a statement indicating the designation of the subject matter of the invention) can be amended.
Amendments that the patentee can make in the claims during the opposition procedure "shall correspond to the claims amendments envisaged by the Russian Rules for Compiling and Filing an Examining Application for an Invention being in force on the filing date of the application". In general terms, this means that any feature from the original disclosure can be included in the claims except those disclosed in the background art section and in the drawings. After a patent is granted the opposition procedure is the only opportunity for a patentee to amend the claims.
Case studies |
The amendment of a generic term during the opposition procedure can be exemplified by the following case relating to a utility model (which are regulated by similar rules). According to the decision of March 7 2006 in RU 12720 a claim for "an element of a lamppost which represents a hollow truncated cone, characterized in that the ratios of dimensions of the element are selected from ..." was replaced with "a lamppost, comprising several elements, each of which represents a hollow truncated cone, characterized in that the ratios of dimensions of an element are selected from ..." It is interesting that at first the claims seem to be different. One of the dimensions of the element was indicated with alternatives, one of which was not novel. Accordingly, the patentee was invited to amend the claims by excluding this alternative. However, the patentee announced that "the utility model claim does not represent its essence because it does not contain a set of essential features which are sufficient to provide the technical result indicated in the disclosure". The board agreed with the patentee's statement on the defectiveness of the set of essential features and with respect to the proposed amended claims it decided that: Such an amendment of the general term shall be recognized as relating to the claimed utility model, because the terms "...a lamppost ..." and "... an element of a lamppost ..." are in a subordiante relationship, ie their scope partially coincides; the wording of the presented amended claims is fully based on the disclosure. With the claims amended in such a way, the utility model was recognized as complying with the novelty requirement. In another case during an administrative revocation in the Eurasian Patent Office the Swiss-type claim "use ... in the manufacture" was replaced with "method of treatment". In a case when the board accepted amended claims (decision of April 11 2006 on RU 2160120), the similar amended claims proposed by the patentee during the corresponding opposition procedure in the European Patent Office were considered to be "unallowable generalizations of specific disclosure chosen from the originally filed description" and the patent (EP 643455) was revoked. According to Rule 5.1, if the patentee presents amended claims "the decision of the Patent Disputes Chamber shall be made with the results of an additional full information search taken into account". On the other hand the opponent should not present additional references that were not mentioned in the original notice of opposition. It is also difficult to understand Rule 4.8 of the Opposition Rules, according to which during opposition processing "the board does not go beyond the references from the information search which are cited in the examination report". This contradicts the practice according to which an opponent usually presents references that were not found by the examiner, and the board considers these references. The Rules do not answer the question of how many times the patentee can present amended claims. In principle, the patentee can appeal a decision on the basis that he did not have a chance to amend the claims (such a case occurred, but the court upheld the decision). |
Opposition at the Eurasian Patent Office
In the Eurasian Patent Office (EAPO) the opposition procedure differs from that in the Russian Patent Office. The patentee's comments on the notice of opposition should be filed by the EAPO to the opponent, and he is usually invited to present his opinion on the comments. An oral hearing should be specially requested. In general the EAPO opposition procedure is designed to be similar to that of the European Patent Office.
What are the results of oppositions?
Redress of the opposition in the Patent Disputes Chamber means that a patent is invalidated in full or in part, meaning that the patent is considered void from the filing date of the application. A decision partially invalidating a patent includes an order to grant a new patent with the claims given at the end of the decision. A Eurasian patent amended during an administrative revocation is still valid under its original number.
The further procedure needed to invalidate a Eurasian patent in the territory of Russia as a contracting state, that is in the Russian Patent Disputes Chamber, is not yet clear. It is not clear how the corresponding information will be technically included in the Register of Eurasian Patents if the patent is invalidated in full. Even more complicated is the situation when a patent is invalidated in part because according to the Russian legislation the patent should be declared void and a new patent should be granted. But the Eurasian legislation does not settle this point. This question should be answered in the near future.
It is a peculiarity of the opposition procedure in the Patent Disputes Chamber that the decision is approved by the head of the Russian Patent Office and this is not simply a formality. The decision comes into force only after this approval, the terms for which are not fixed. The EAPO decision comes into force when the time limit to appeal it expires.
An appeal against an EAPO decision can be lodged with the President of the EAPO within four months of the date of its dispatch. The President either orders the reconsideration of the opposition or takes a final decision. Decisions of the Patent Disputes Chamber can be contested in the courts. On the basis of a study of Patent Disputes Chamber practice, the Russian Patent Office is preparing proposals to amend the legislation.
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Vladimir Rybakov |
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Yana Lipatova |
© ARS Patent 2006. Vladimir Rybakov chairs the patent group at ARS Patent in Moscow and St Petersburg, and Yana Lipatova is a patent attorney with the firm
