The ways out of the situation, if you have received a claim letter about a violation of the exclusive rights of the patent holder

According to Article 1229 of the Civil Code of the Russian Federation, the exclusive right is the right to use the result of the intellectual activity and the means of individualization at one’s own discretion in any way that does not contradict the law, as well as the right to dispose of the exclusive right to the result of the intellectual activity or the means of individualization. The exclusive right to the result of the intellectual activity created by a creative labour always arises initially from the author himself and it may pass to other persons only subsequently on the basis of the law or an agreement.

It is important to note that the exclusive right to an invention, a utility model or an industrial design arises from the right holder since the date of the registration of the invention, the utility model or the industrial design in the State Register.

The main cases of the illegal introduction of the patent into the economic turnover are importing (import) into the territory of the Russian Federation, in this case, the violation is the very fact of importing. They also include manufacturing, i.e. the manufacture of the product for commercial purposes; its use for commercial purposes; offering for sale, for example, advertising the product in catalogs and brochures, demonstrating in shopping windows, salesrooms, advertising clips on television and radio; selling, i.e. a commercial activity for the realization of the patented product; storing for these purposes the product, in which the patent is used. These actions are the offenses, when they are performed without a permission of the patent holder.

The disputes related to the violation of the exclusive right to an invention, a utility model or an industrial design shall be considered by the court.

According to Article 1406.1. of the Civil Code of the Russian Federation, in the cases of the violation of the exclusive right to an invention, a utility model or an industrial design, the author or other right holder, along with the use of other applicable methods for the defence and the measures for responsibility stipulated by the Code (Articles 1250, 1252 and 1253) shall be entitled to demand at his choice from the violator the payment of damages instead of the recovery of damages:

1. in the amount from ten thousand roubles to five million roubles determined at the discretion of the court on the basis of the nature of the violation;

2. in double the amount of the value of the right of the use of the invention, the utility model or the industrial design determined on the basis of the price, which in the comparable circumstances is usually charged for the lawful use of the invention, the utility model or the industrial design in the way used by the violator.

Thus, if you have received a claim letter, then it is necessary to respond. If you fail to respond to the claim letter within a month, the right holder shall be entitled to go to the court claiming to stop the manufacture of the product or the use of the technology, as well as to award damages, including for the lost profits, if he manages to prove it.

To prepare a competent response to the claim letter, you must understand clearly, whether there is really a violation of the patent.

To do this, you should check, whether your case is an exception, since there are such cases that are not a violation of the exclusive right to an invention, a utility model or an industrial design, namely:

1. the use of the product, in which the invention or the utility model is used, and the use of the product, in which the industrial design is used, in the construction, in the auxiliary equipment or during the operation of the vehicles (the water, air, road and rail transport) or the space technology of the foreign states, provided that these vehicles or this space technology are located temporarily or accidentally on the territory of the Russian Federation and the indicated product or article is used exclusively for the needs of the vehicles or the space technology. Such action shall not be recognized as a violation of the exclusive right in respect of the vehicles or the space technology of those foreign states that provide the same rights in respect of the vehicles or the space technology registered in the Russian Federation;

2. carrying out a scientific research of the product or the method, in which the invention or the utility model is used, or a scientific research of the product, in which the industrial design is used, or carrying out an experiment on such product, method or article;

3. the use of the invention, the utility model or the industrial design in extraordinary circumstances (natural disasters, catastrophes, accidents) with a notification of such use of the patent holder as soon as possible and with the subsequent payment of commensurate damages;

4. the use of the invention, the utility model or the industrial design to satisfy the personal, family, household or other non-business needs, if the purpose of such use is not gaining profit or income;

5. a one-time manufacture in pharmacies according to the doctors' prescriptions of the medicines with the use of the invention;

6. importing into the territory of the Russian Federation, using, offering for sale, selling, another introduction into the civil circulation or storing for such purposes of the product, in which the invention or the utility model is used, or the article, in which the industrial design is used, if this product or article has been introduced earlier into the civil circulation on the territory of the Russian Federation by the patent holder or by another person with the patent holder’s permission or without his permission, provided that such introduction into the civil circulation has been exercised legitimately in the cases stipulated by the Code.

If you understand that the above circumstances are not applicable to your situation, the next step will be to carry out a comparative analysis of the product or the method with the features of the invention, the utility model or the industrial design.

The invention shall be recognized as used in the product or the method, if the product contains, and the method uses, each feature of the invention provided in an independent claim of the claims, or the feature equivalent to it and which has become known as such in this technical field before the priority date of the invention. An equivalent replacement shall be the replacement of the feature, if the essence of this invention is not changed, and the means of carrying out the replacement to the equivalent ones are known in this field.

 The utility model shall be considered to be used in the product, if the product contains each feature of the utility model given in the independent claim of the claims of the utility model contained in the patent.

The industrial design shall be recognized to be used in the article, if this article contains all essential features of the industrial design or a set of the features that makes the same general impression as the patented industrial design on the informed consumer, provided that the articles have the similar purpose.

Thus, to establish the fact of the use under the patent, it is necessary to carry out a comparative analysis of the independent claims of the claims/the utility model and the essential features of the industrial design with the technical features (characteristics) and the appearance of the disputed product (a technical subject matter) and to identify their presence or absence.

According to the results of the comparative analysis, it will be possible to draw a conclusion about the violation/non-violation of the exclusive right.

In case if the violation is not established, then you can freely write in the response to the claim letter that it is has been sent to you illegitimately. That the right holder has no grounds for going to the court. If your arguments are convincing, then you will more likely manage to avoid the continuation of the conflict and the right holder's going to the court.

In case if you understand that you are nevertheless violating the exclusive right, then there are several variants for the further developments:

1. You can offer the patent holder to reach an agreement, and if he becomes interested, to formalize a relationship with him legally. The transfer of the right to the use of the patent granted from the right holder to third parties is possible within the framework of several agreements. Depending on the completeness of the transferred rights, as well as on the accompanying transfer of the rights to other subject matters of intellectual property, transferring the patent for a temporary use within the framework of a license agreement, as well as transferring the patent together with a trademark at the conclusion of a franchise agreement (franchising) is stipulated. The effect period of the license agreement shall be limited to the effect period of the very patent. One should remember that after the termination of the legal protection of the patent, all rights transferred under the license agreement shall also cease to be in effect. The license to the use of the patent may be either exclusive or non-exclusive.
2. If the right holder himself does not use and does not plan to use his technical solution, then the variant of selling the patent for an invention, a utility model or an industrial design is not excluded.  Selling is carried out by the conclusion an agreement on the patent alienation. The agreement, according to which the assignment of the patent occurs, should undergo the state registration with Rospatent. In this case, you do not need paying the license fees regularly, you will pay once and for all.
3. If you understand that the method that you are using for the manufacture of the products is completely identical to the one claimed in the patent for an invention, but at the same time, if, for example, the fact that you have easily changed the parameters of the equipment operation or, for example, you have excluded one of the operation steps in the method, does not affect the quality of the product, but, at the same time, the right holder fails to prove a violation of his patent, you can allow him going to court, knowing beforehand that he will lose the suit. However, such tricks are possible only if it comes on the method defended by the rather narrow claims, with the indication of, for example, the particular values of the content of the components of the composition or the modes of the technological process.
4. If you fails to come to an agreement, then you have a possibility to file an objection with Rospatent in order to recognize the patent to be void (the cancellation of the patent). To do this, it is necessary to carry out an international patent and information search in order to identify the sources of the information published before the date of filing the application, which confirm the non-compliance of the solution defended by the patent in case of the utility model with the patentability criteria “novelty” and “industrial applicability,” in the case of the invention – with the criteria “novelty,” “inventive step” and “industrial applicability,” in case of the industrial design – with the criteria “novelty” and “originality”; or, for all cases, to cancel the patent upon the evident use, if there is relevant evidence.

It is not always easy to choose a right way and strategy by yourself, therefore, approaching the current situation individually, the specialists of our team will always advise you the best way out, an algorithm of the actions and they will provide a full range of the services related to the preparation of the response to a claim letter, to carrying out a comparative analysis with the formalization of the relevant opinion, to filing an objection to the cancellation of the patent, to the representation of your interests in the court, etc.