Due to the presence of genuine disputes of material fact, the Court for Intellectual Property Rights reversed the Rospatent decision to dismiss an opposition by the judgment that the elements included in the subject matter under the disputed patent were identical in quality to the steel inventions known from patents owned by Izhevsk Experimental Mechanical Plant JSC.
Izhevsk Experimental Mechanical Plant JSC patented the High Strength Corrosion-Resistant Steel invention with a priority date from August 4, 2004. Kauri LLC owned a patent for the Stainless High Strength Steel Bar utility model with the priority date from 2006.
Both technical decisions are means of the same purpose and are aimed at achieving similar technical result. For these reasons, a litigation began between the above-mentioned companies, which lasted for several years. Zuykov and Partners law offices have been representing the interests of the Izhevsk Experimental Mechanical Plant JSC.
The reason of the conflict was the use of technical decision by Kauri LLC. Izhevsk Experimental Mechanical Plant assumed that its invention was being used, and Kauri LLC assumed that it was using a utility model, being the right holder. Kauri LLC representatives tried to challenge the patent for the invention of the plant. However, these actions were also unsuccessful.
In 2018, Izhevsk Experimental Mechanical Plant JSC filed an opposition with Rospatent against granting Kauri LLC a patent for a utility model patented by the plant. By the time the application was considered, the legal protection of this utility model had ceased to exist, but the applicant's interest in filing an opposition was not in doubt.
Having considered the arguments of the representatives of the joint stock company, Rospatent turned down the stated claims as they considered them unjustified and unmotivated. At the same time, the decision of the patent office stated that a group of inventions of Izhevsk Experimental Mechanical Plant was used as a source of comparison during the check for patentability of a utility model. Thus, the reason for the confrontation is obvious, as both companies have almost identical objects.
The lawyers of Zuykov and Partners disagreed with the position of Rospatent and filed a lawsuit. The representatives stated the following requirements:
- Invalidate the decision of Rospatent dated July 9, 2019 to dismiss the opposition to the grant of a utility model patent;
- Order Rospatent to reconsider the opposition of the plant.
The representatives of the patent office and Kauri LLC, which was involved in the dispute as a third party, objected to the satisfaction of the claimer's interests.
In substantiation of the claim, the lawyers presented a number of arguments, the essence of which was that the elements included in the subject matter under the disputed patent were identical in quality to the steel inventions known from patents of Izhevsk Experimental Mechanical Plant JSC.
Having familiarized with the materials of the case and the findings of the expert testimony, the Court for Intellectual Property Rights noted that the disputable utility model and the opposing invention were intended for the manufacture of products with similar requirements. The Court also considered that Rospatent had assessed all the arguments and factual circumstances stated in the opposition inappropriately.
As a result of the proceedings, the following judgement was announced:
- Satisfy in full the requirements of the clients of Zuykov and Partners law offices;
- Invalidate the decision of Rospatent decision dated July 9, 2019;
- Order the patent office to reconsider the opposition of the Izhevsk Experimental Mechanical Plant.