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New Regulatory Considerations on Administrative Disputes: What Comes Next

06 Nov 2020 (updated at 31 May 2021)
Head of Department / Patent Attorney / Mechanics Engineer

As it is known, the Ministry of Education and Science and the Ministry of Economic Development approved the new Rules for Consideration and Resolution of Administrative Disputes by Rospatent, the Federal Executive Authority on Intellectual Property. This document is effective as of September 6, 2020, replacing the previous version of April 23, 2003.

The new Rules establish the procedure for consideration and resolution of disputes on the protection of intellectual rights related to filing and consideration of applications for patents for inventions, utility models, industrial designs, trademarks, service marks, geographical indications and appellations of origin of goods, with the state registration of these results of intellectual activity and visual identity, with the issuance of the relevant documents of title, and a procedure for challenging the granting of defense of a right.

Now, the electronic interaction between the applicants and Rospatent have been worked out in more detail. Also, there is a number of clarifications of the procedural rules concerning the consideration of cases in the Chamber for Patent Disputes.

As to the electronic interaction, it is obvious that Rospatent in every possible way encourages applicants to electronic filing of documents. For that method, it is enough to use a simple electronic signature, which will not only facilitate the procedure, but also reduce the time needed, in particular the formal examination period. As a result, the terms of formal examination have been reduced to 5 work days.

When sending an inquiry at the stage of formal examination, the applicant will be given two months to rectify the circumstances that served as the reasons for sending the inquiry, after which the verification of the rectification and decision-making on the results will take up to ten work days.

Nevertheless, the possibility of submitting a printed-out opposition has also been preserved, but the innovation is that now all documents are submitted in one copy and with a copy of materials in a hard copy. The applicant must attach an electronic medium containing copies of the opposition and application and attached documents and materials in PDF format.

Stiffer requirements now apply to the translation of documents attached. From now on, the translation requires mandatory certification by the translator with confirmation of his qualification in a particular language.

In addition, the new Rules set forth the requirement to provide a review not later than 10 work days before the board meeting. If the review is submitted directly to the meeting, it can be postponed.

One of the main innovations is the provision under which the Chamber for Patent Disputes has the right to suspend the consideration of a dispute at the request of one of the parties or by the decision of a tribunal, if a case is considered in an administrative or judicial procedure, the decision on which may have an impact on the results of this dispute. Such suspension shall be possible until the decision on the said administrative or judicial case takes effect or until the interim measures against the intellectual property object being the subject of the dispute are lifted. This innovation may be useful on the one hand, but on the other hand, it will allow to delay the decision for a sufficiently long time, depending on the duration of a particular court proceeding. In total, the period of time for the board's decision can be extended to a year and a half for the situation.

The next significant change is that the new Rules allow applicants to submit additional arguments on submitted oppositions and applications, additional supporting documents and other materials in the process of consideration of the dispute. Following the old Rules, the applicant could only provide additional information from the dictionary and reference publications.

The powers of the members of the Board of the Chamber for Patent Disputes during the consideration of the dispute have also changed. The members of the Board of the Chamber for Patent Disputes can now identify additional grounds, other than those indicated by the applicant, to invalidate the granting of defense of a right to an intellectual property or grounds that prevent the granting. Information on such grounds shall be communicated to the parties to the dispute within 5 work days from the date of the meeting of the tribunal at which they are identified. The parties shall be given an opportunity to present their reasoning.

In addition, the applicant and the right holder may make changes in the application or the state register, if these changes can eliminate the reasons preventing the granting or preservation of defense of a right (in whole or in part).

A person who filed an opposition or a statement has the right to request, with the submission of relevant materials, an amendment of the requested scope of defense of a right to the invention, utility model or industrial design.

The said motions may be filed provided that the requested amendments may eliminate the reasons preventing the granting of legal protection to the claimed subject matter or if, without making the relevant changes, the granting of defense of a right should be denied in full or in part.

Within the framework of the dispute consideration, the right holder also has the right to apply with the submission of the following materials:

  • Those that change the scope of defense of a right granted by the patent in compliance with the requirements of Article 1378 of the Civil Code of the Russian Federation, provided that this does not lead to the expansion of the scope of defense of a right;
  • Those that transform a patent for an invention into a utility model certificate.

Thus, taking into account the introduction of the new Rules, we can hope that not only the terms of consideration of cases in the Chamber for Patent Disputes will be observed, but also the quality of office work and the decisions rendered will improve.

Head of Department / Patent Attorney / Mechanics Engineer