Chamber for Patent Disputes of Rospatent: functions and capabilities

The Chamber for Patent Disputes of Rospatent is a structural unit of the Federal Institute of Industrial Property (FIPS), which, in turn, carries out all necessary actions related to the registration of intellectual property.

In this article we will focus on the main functions of the Chamber of Rospatent, as well as its activities using various examples.

In accordance with paragraph 2 of Article 1248 of the Civil Code of the Russian Federation, “In the cases provided for by this Code, the protection of intellectual rights in relations related to the filing and consideration of applications for patents for inventions, utility models, industrial samples, selection achievements, trademarks, service marks, geographical indications and names of places of origin of goods, with state registration of these results of intellectual activity and means of individualization, with the issuance of relevant title documents, with challenging the provision of these results and means of legal protection or with its termination, carried out in an administrative manner (clause 2 of Article 11), respectively, by the federal executive body for intellectual property and the federal executive body for selection achievements, and in cases provided for in Articles 1401 - 1405 of this Code, by the federal executive body authorized by the Government of the Russian Federation (clause 2 Article 1401). The decisions of these bodies come into force from the date of adoption. They can be challenged in court in accordance with the procedure established by law."

Thus, it is necessary to comply with the mandatory administrative procedure, i.e., for example, to challenge a decision to refuse state registration of a trademark or to challenge the registration of a trademark, it is necessary to contact the Chamber with an appropriate objection.

Let us dwell in more detail on the two above examples: challenging a decision to refuse registration of a trademark and invalidating the granting of legal protection to a trademark, and below we will analyze the steps and key points when filing and considering objections.

Challenging the decision to refuse registration of a trademark

If, during the examination of a trademark application, a decision was made to refuse registration, the applicant has the right to file an objection within 4 months from the date of such a decision (Article 1500 of the Civil Code of the Russian Federation). Additionally, it should be noted that this period for challenging can be extended by 6 months - for this, it is necessary, simultaneously with filing an objection, to submit a petition to restore the deadline for filing an objection (Article 1501 of the Civil Code of the Russian Federation). This petition must indicate valid reasons why the deadline was missed.

Thus, this objection is submitted directly by the applicant (his representative).

Invalidation of the provision of legal protection to a trademark

In contrast to the case discussed above, when a decision to refuse registration of a trademark is contested and an objection is filed by the applicant (his representative) within four months, filing an objection against granting legal protection to a trademark has a number of differences.

First of all, it should be noted that the objection is filed by an interested person - interest must be proven when filing an objection (Article 1513 of the Civil Code of the Russian Federation).

Regarding the period within which an objection can be filed, you must pay attention to the following. The period for challenging directly depends on the grounds on which the trademark is challenged. Thus, according to Article 1512 of the Civil Code of the Russian Federation, filing objections to challenge the granting of legal protection to a trademark is possible:

• fully or partially during the entire validity period of the trademark (if legal protection was granted to it in violation of the requirements of paragraphs 1-5, 8 and 9 of Article 1483 of the Civil Code of the Russian Federation).
• fully or partially within five years from the date of publication of information about state registration in the state register (if legal protection was provided to it in violation of the requirements of paragraphs 6, 7 and 10 of Article 1483 of the Civil Code of the Russian Federation).
• completely during the entire period of validity of legal protection (if legal protection was provided to a trademark with a later priority in relation to a recognized well-known registered trademark of another person, the legal protection of which is carried out in accordance with clause 3 of Article 1508 of this Civil Code of the Russian Federation).
• fully or partially during the entire period of validity of legal protection (if the actions of the copyright holder related to the provision of legal protection to a trademark or another trademark confusingly similar to it are recognized in the prescribed manner as abuse of rights or unfair competition);
• fully or partially during the entire period of validity of legal protection (if it is provided in violation of the requirements of paragraph 3 of Article 1496 of the Civil Code of the Russian Federation).

Thus, when filing an objection, you must carefully pay attention to the period during which it is possible to challenge the validity of a trademark.

Preparing and filing an objection

It should be noted that a state fee is provided for consideration of an objection (in accordance with paragraph 2.28 of Appendix No. 1 to the Regulations on Duties). This fee must be paid and the payment order must be attached to the objection materials. If a petition is submitted to restore the missed deadline (for example, to challenge a decision to refuse registration), it is also necessary to pay a fee (in accordance with paragraph 2.8.2 of Appendix No. 1 to the Regulations on Fees) and attach it to the petition.

In addition, an electronic medium (disk, flash drive) must be attached to the objection materials, on which the objection and all attachments should be recorded.

Further, after filing an objection, the applicant (the person who filed the objection) is sent a notification within approximately 1.5-2.5 weeks that the objection has been accepted for consideration. This notification informs the applicant that the objection has been accepted for consideration and the date for scheduling the meeting (the date and time of the meeting, the office are reported, and the person responsible for considering the objection is indicated). The notice also indicates a unique identifier through which opposition materials can be downloaded. Then, using the specified identifier, you can track all materials that are included during the consideration of the objection. Thus, knowing the unique identifier, you can always access the opposition materials.

If an objection is filed against granting legal protection to a trademark, then in addition to the applicant (the person who filed the objection), a similar notification is sent to the copyright holder. This notice informs that an objection has been filed, also indicates information about the meeting, and the copyright holder is invited to send his response based on the objection.

It should be noted that the review and additional materials must be sent to the teaching staff of Rospatent in advance (no later than ten working days before the date of the board meeting) so that the members of the colleague, as well as the other party, can familiarize themselves with the documents. Failure to send feedback/ additional materials in advance will result in the meeting being postponed to a later date.

Working session and powers of the participants

As for the general process of how the meeting takes place, the following should be noted.

At the appointed date and time of the meeting, you must appear at the Chamber for Patent Disputes of Rospatent. Entry is strictly based on a pass, for which you must present an identification document to the pass office, as well as a notice of the appointment of a meeting - based on these documents, a pass is issued.

If it is not possible to attend the meeting in person, participation via video conferencing is available. To do this, it is necessary to submit a corresponding petition (simultaneously with the objection or after filing the objection, but no less than 15 working days before the date of the board meeting).

It should be noted that your authority at the meeting must be confirmed by a power of attorney - its original is required, which should be presented to the members of the board of the Chamber.

An objection to the Chamber is considered collegially - the board must have at least three members, including the chairman.

During the meeting, the parties to the dispute are given the floor. During the meeting, questions may be asked by the board. After the presentation is completed and no questions/clarifications arise from the board, the board members retire to the deliberation room to make a decision. Based on the results, the board makes a decision - to postpone the meeting, satisfy the objection or refuse to satisfy it.

During the meeting, a protocol is kept, which records information about who takes part in the meeting, what documents were presented at the meeting (if they were included during the meeting). If the meeting is postponed, a corresponding note is made about this. If a decision was made based on the results of the meeting, then it is written down in the operative part of the board’s conclusion.

If a decision is made at the meeting (to satisfy the objection/refuse to satisfy), within up to 2 months from the date of the meeting of the board at which its conclusion was formed, the head of Rospatent or a person authorized by him, based on the results of consideration of the dispute, makes one of the following decisions:

• to satisfy the objection in whole or in part;
• refusal to satisfy the objection.

The conclusion of the board is attached to the decision of the head of Rospatent or a person authorized by him and is an integral part of it.

The decision comes into force on the date of its approval.

On the Chamber's website you can find a decision on a specific case - to do this, you should use the search form, where you must specify the application/certificate number or the name of the intellectual property object to search.

Challenging the decision of the Chamber

In accordance with paragraph 2 of Art. 1248 of the Civil Code of the Russian Federation, decisions of Rospatent adopted based on the results of consideration of disputes can be challenged in court in the manner prescribed by law. The decision of the Chamber can be appealed by filing an application with the Intellectual Property Rights Court. The deadline for filing an application is 3 months from the date of approval of the decision.

Thus, evidence for consideration of the Chamber case should be prepared assuming possible subsequent consideration in court. In this regard, you should carefully approach the formation of the evidence base in order to use it in court, if necessary.

Summarizing the above, it is obvious that, due to its specificity, preparing an objection and participating in meetings of the board for consideration of objections requires certain knowledge, skills and careful preparation. Compliance with all requirements and having a well-structured strategy will allow you to achieve success.

Sources:

1. Civil Code of the Russian Federation (part four) dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (as amended and supplemented, entered into force on June 29, 2023)
2. Order of the Ministry of Education and Science of Russia and the Ministry of Economic Development of Russia dated April 30, 2020 No. 644/261 “On approval of the rules for the consideration and resolution of administrative disputes by the federal executive body for intellectual property”
3. Regulations on patent and other fees for carrying out legally significant actions, approved. Decree of the Government of the Russian Federation dated December 10, 2008 N 941, as amended on September 19, 2022) (as amended on June 29, 2023).