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Court Invalidated Design Patent in Part of Indication of Patentee

20 May 2021 (updated at 08 Jul 2021)

The Court for Intellectual Property Rights resolved a case on invalidation of a design patent due

to incorrect indication of the patentee. The plaintiff was able to prove the creation of the

appearance of the product before the beginning of labor activity in the patentee company, in

connection with which the design could not be considered as a service design.

The author of the appearance of a product registered as an industrial design No. 116537 claimed

for invalidation of the patent in the part of the indication of the patentee.

During the consideration of the case, the authorship was not disputed. The disputable issue was

the question of when the design was developed and, consequently, whether it was a service

design, since the patentee was the employer of the author.

Having studied the files with drawings of the future industrial design submitted by the plaintiff

and comparing the appearance of the object in the drawings and the appearance of the object

recorded in the patent, the court concluded that the files represented exactly the image of the

disputed product.

The Company insisted that the design had the service invention regime. To this end, it provided

evidence that during the plaintiff’s employment with the company, these files were changed and

other actions were performed with them. However, the time and nature of the creation of the

appearance of the disputed product could not be confirmed in this way.

The submitted correspondence of the plaintiff with the persons assisting in obtaining the patent,

in which it itself reported to indicate the company as the patentee, also did not help to prove

either the fact of creation of the service invention or the fact of transfer to the company of the

right to obtain the patent.

As a result, the court concluded that the disputed object of patent rights had been created before

the beginning of the plaintiff’s employment with the company, and recognized the patent as

partially invalid, compelling Rospatent to replace the patent holder.

Sergey Zuykov, the Managing Partner of Zuykov & Partners, Russian Patent Attorney and

Eurasian Patent Attorney comments as follows. According to Article 1370 of the Civil Code of

the Russian Federation, an invention, utility model or industrial design created by an employee

in the course of his duties or a specific assignment of the employer shall be deemed a service

invention, utility model or industrial design; the exclusive right to a service invention, service

utility model or service industrial design and the right of obtaining a patent are owned by the

employer, except as otherwise envisaged by a labour contract or civil law contract between the

employee and the employer.

In the context of the law, in order to recognize a technical decision as serviceable, it is not

necessary that the employment agreement, job description or other document defining the

employment duties contain a reference to the creation of specific objects of patent rights.

What is essential is the fact of creation within the framework of labor duties which may be

formulated quite generally. However, in the case, the defendant did not provide evidence

confirming the labor function of the plaintiff during the period of work or the existence of a work