Resolving Administrative Disputes by Rospatent: New Regulatory Considerations

As provided by paragraph 2 of Article 1428 of the Civil Code of the Russian Federation, there is a possibility to defend the rights associated with the filing and consideration of applications for registration of intellectual property, as well as a possibility of granting and challenging state protection.

As a general rule, applications on the above issues are considered at the first stage by the Federal Executive Authority on Intellectual Property. The Civil Code establishes the basic rules describing the fundamental rules of law in this area.

However, for a smooth and efficient functioning of any procedure, a set of provisions describing the procedure in detail is required. When it comes to appealing actions and decisions of a patent office, such are the Rules for Consideration and Resolution of Administrative Disputes by the Federal Executive Authority on Intellectual Property (hereinafter - the Rules), effective as of September 6, 2020.

According to the Civil Code of the Russian Federation and the abovementioned Rules, the following categories of cases for which the abovementioned Rules apply are distinguished:

• Disputes over the oppositions of applicants to the decisions of Rospatent based on the results of the examination of intellectual property.
• Consideration of appeals related to the challenge or termination of existing legal protection.

Due to the fact that the Rules describing the procedure of consideration appeals by the concerned parties were in force in Russia before, the adopted Rules should not be considered fundamentally new. However, the introduced provisions have a number of innovations that may be summarized as follows.

• Simplification of the procedure for filing oppositions, statements, reviews, clarifications and other legally binding documents. The Patent Office has an active policy of replacing paper media with electronic analogues. Now applicants have the right to send to Rospatent an appeal in digital format. At the same time, other parties to the conflict will also be able to provide necessary information in the remote mode. If the documents are submitted on paper, it is necessary to attach the flash memory with printed out copies. The advantages of this method are obvious: for both individuals and legal entities, it is a saving of time and money. As for the state authority, it is alignment of document flow, reduction of possible errors and reduction of the period of consideration of cases.
• Accretion of power of the parties. Under the new Rules, participants are authorized to present new arguments during the consideration of a dispute, as well as to refer to the newly discovered evidence for the decision of the patent office upon examination of the case. Information on additional arguments will be sent to the other party within 5 work days from the date of their receipt. In this case, the latter party shall have the right to submit its opinion. Thus, the proceedings will be fair and more dynamic, as the actual information may affect the course of the case and the decision adopted.
• Opportunity for applicant and right holder to make changes in the application or information in the state register during consideration of the dispute. This is acceptable if such actions will eliminate the reasons preventing the provision or preservation of defense of a right (in whole or in part).

The main objectives of the new version of the Rules are to optimize the activities of the patent office, reduce the volume of paper flow, accelerate the process of resolving cases and expand the scope of authority of the parties to a dispute.

On top of that, the adopted Rules will allow the following.

• Acceleration of consideration of appeals. As Grigory Ivliev, the head of Rospatent noted: “Formal inspection and acceptance of an opposition or application for consideration will take no longer than 5 work days”.  In case of timely payment of the state duty, the consideration of the case on the opposition against the decision of Rospatent will begin within one month after the receipt of the application for consideration. In other cases, it will take no longer than two months from the date of acceptance for consideration.
• Combination of several disputes into one record keeping procedure, if the parties are the same persons or entities and they agree to such actions.
• Increase in publicity and openness of consideration of disputes. According to the information provided by the patent office: “Documents and materials, as well as other information on the case will be published on the official website within five work days from the date of their receipt”.  Clause 47 of the Rules provides for mandatory audio and (or) video recording of the Board meeting. Carriers with the recordings shall be kept for at least four months from the date of the meeting, with the possibility of providing a written request within 5 days by either party to the dispute.
• Simplification of the procedure for participation in the consideration of the dispute. Interested parties have the right to submit an application for participation in the meeting using video-conferencing not less than 15 work days before the date of consideration of the case.

It should also be noted that any innovations first require application in practice, and only then there will be an opportunity to analyze the level of their applicability, as well as the pros and cons of the adopted rules.