After the conclusion of the license agreement, IP Court sent for reconsideration the objections of PSK Pharma against the validity of Chiesi's Farmaceutici SpA Eurasian patents
Previously, PSK Pharma LLC filed objections to Rospatent against the operation in the territory of the Russian Federation of several Eurasian patents, the patent holder of which is Chiesi Farmaceutici SpA:
1. Eurasian patent No. 018589 for the invention "Use of a composition containing formoterol and dipropionate beclomethasone, to prevent and/or treat asthma exacerbations."
2. Eurasian patent No. 005179 "Stable pharmaceutical preparations in the form of solutions for pressurized metered dose inhalers".
3. Eurasian patent No. 007735 "Highly dispersed formoterol preparation".
4. Eurasian patent No. 016262 "Pharmaceutical preparations in the form of a solution for pressurized metered dose inhalers".
In each individual case, the objection was satisfied by the decision of Rospatent, and the granting of legal protection to the disputed patents in Russia was declared invalid in full. Copyright holder, Chiesi Pharmaceuticals S.p.A, appealed to the Intellectual Property Court with statements to invalidate the relevant decisions of Rospatent.
06/02/2022 Chiesi Pharmaceuticals S.p.A and PSK Pharma signed a license agreement, under which PSK Pharma, among other things, was granted a non-exclusive right to use inventions protected by disputed patents. In this regard, the parties in the case signed statements on the conclusion of an agreement on the settlement of the dispute.
Within the framework of these statements, the parties asked to cancel the decisions of Rospatent, taken as a result of the consideration of objections to the validity of the disputed patents in the Russian Federation, in connection with the reconciliation of the parties, and to oblige Rospatent to re-examine the objections received by PSK Pharma against the issuance of the disputed patents.
In court hearings on the application of Chiesi Farmaceutici SpA on the invalidation of the decisions of Rospatent, Zuykov and partners represented the interests of a third party that does not declare independent claims regarding the subject of the dispute, the submitter of objections - PSK Pharma LLC, and also participated in the preparation of the draft license agreement and the coordination of its provisions with the copyright holder.
Guided by articles 110, 167-170, 176, 180, and 201 of the Arbitration Procedure Code of the Russian Federation, in a number of open court hearings on the application of Chiesi Farmaceutici SpA to invalidate the decisions of Rospatent, the Intellectual Property Court decided:
- cancel the decisions of Rospatent in connection with the reconciliation of the parties,
- oblige Rospatent to reconsider the initial objections of PSK Pharma against the issuance of contested patents in the territory of the Russian Federation.