Who are the patent trolls? Let us give them a definition. A patent troll is an individual or a legal entity specializing in lodging patent statements of claim.
The patent trolls prefer to call themselves the patent holdings or the patent dealers. Other names are also applied: a non-practicing entity, a non-manufacturing patentee or a non-manufacturing entity, a patent marketer, which are mainly applied to the patentees, who do not carry out independent manufacturing activities. In fact, these are the persons, who have received as many patents as possible in their names, while these patents are only on paper, they do not have their own manufacturing facilities, that is, those, who do not implement the patent, but lodge the claims actively against the companies that violate their rights.
The analysis of the patent dispute practice shows that it is possible to obtain a patent for a well-known technical solution, if one is familiar with a certain terminology and knows the subtleties and nuances of the procedure for considering a patent application that are related to an examiner's evaluation. At the same time, the feature inherent in the already well-known products or technology is made as the main distinguishing feature for some particular new “invention,” by veiling, masking it, that is, by using a different terminology, and in fact, stating the same. Such a way is the most efficient for obtaining a patent for a utility model, since the main criterion for patentability is only a “novelty” and even insignificant differences can be recognized by the office, the main thing is to describe them correctly, unlike an invention, when the specified difference can be recognized as being from the prior art and therefore not complying with the patentability criterion an “inventive level.” The risk of the said manipulations is minimal (the patent simply will not be obtained), the punishments for trying to patent the already known invention are not stipulated by the Russian legislation, and a possible income and longing for easy money motivate very much.
In Russia, the patent trolls began to appear actively in the late 1990s - the beginning of 2000s.
The first case of the patent trolling, which is known to a wide circle of persons in Russia, was patent of the RF No. 2139818 published in 1999 for the invention “Glass Vessel,” the description of which corresponds fully to a glass bottle. Kalinichenko S.V. and Toritsyn I.V. were indicated as the authors of the said invention, and LLC Technopolis was indicated as the patentee.
Here is a part of the description of this patent: “The object of the invention, according to the patent, is to create a glass vessel ensuring a structurally embedded shape and/or a structurally embedded change in its thickness to facilitate a disposal process and/or the use as a structural element.”
Further, I quote independent claim 1, which determines a scope of the rights: “A glass vessel containing in cross-section the boundaries of an outer and inner sides, characterized in that, at least at the boundary of the outer and/or inner side, a part of the boundary line of at least one of the cross-sections is made in the form of a fragment or a combination of the fragments of the oblique conical section of a right circular cone.”
Immediately after receiving the patent, LLC Technopolis began demanding from all companies that manufacture beer and soft drinks the conclusion of license agreements and the payment of remuneration for the use of the patented product in the amount of at least 0.5% of the revenue. Technopolis formally had the grounds for such payments: they owned the patent for the technical solution, which at that time was used without permission by all manufacturers of liquids in glass containers.
However, according to the decision of the Chamber for Patent Disputes made in 2000, the patent was canceled in full, and the corresponding entry about it was published in the Register of the Patents for Inventions of 20.04.2001.
The second, also well-known history of the patent trolling in the RF is connected with the patentee of patents of the RF Nos. 2448291, 74862, 74603 and 74602 with the common priority date of December 27, 2006 (the patent for an invention and three patents for utility models with the common name “Vehicle Shock Absorber”). The author, Oleg Tikhonenko, tried to get significant amounts in euros from foreign companies – the manufacturers of automobile shock absorbers. Among the infringers of the patent rights of O.Tikhonenko were: the Japanese company Kayaba, the German company ZF Trading and the American company Gates.
The patentee appealed to the departments for economic crimes in order to stop the sale of the counterfeit, to his mind, shock absorbers and he was a success: the warehouse of one of the suppliers was arrested. Despite the fact that, according to the experts, the shock absorbers’ device of O. Tikhonenko had been described previously in the patent of the USA, and the mathematical formula, with the help of which the patent of O. Tikhonenko described the action of his improved shock absorbers had been taken from the Soviet Technical Manual, the Board of the Chamber for Patent Disputes managed to cancel the patents of Tikhonenko only in November 2009. However, it is difficult to say how much money he managed to get during the validity period of the patents and by an illegal way.
In 2014, the utility model “Toothpick Stand,” patent No. 116032, was disputed in the Chamber for Patent Disputes. According to the decision of Rospatent of 21.10.2014, based on the results of the consideration of the Chamber for Patent Disputes, Patent of the Russian Federation for a utility model No. 116032 was invalidated in full. Patent for an invention No. 2500008 “Holder for the Label of the Dial of the Wall Clock” was also invalidated in full. The date of entry in the State Register is 01.03.2017. In fact, the issue is about the boxes covered with the lids. The right holder of both these patents and another more than 800 patents of the Russian Federation is Alexander Maksimov, who is currently litigating with the pharmacy chains all over Russia, which are allegedly using his inventions illegally.
The patent troll’ claims for money damages are often dismissed and, what is more important, the patent owned by him is cancelled. Currently, this practice is widely used and quite successfully.
Currently, the authorities of different countries, being aware of the danger arisen from the patent trolling, are developing actively the measures to oppose it. For example, in the course of one of the round-tables devoted to the creation of a single regulator in the field of intellectual property on the basis of Rospatent, it was announced that in order to fight against the patent trolling, the office will issue a set of the practical recommendations, which will be published, in particular, on the website of Rospatent.
As you can see, currently, there are no purely legal methods to fight against the patent trolling, and the only effective way to oppose the patent trolls is to obtain timely the patents for all own developments, in particular, for their components, or to identify their patentees and to conclude the appropriate agreements with them.