Inventor sues engineering plant to invalidate patents

The Presidium of the IP Court has sent for reconsideration the claim of Vladimir Kushnarev, who is trying to deprive the Neftekamsk Machine-Building Plant of the rights to 26 inventions in the development of which he participated. The disputed documents were issued in 2013-2019.

In court, Kushnarev stated that, being a co-author of the inventions, "he did not give the plant consent to receive these patents, and was not an employee of the plant." The Neftekamsk Machine-Building Plant asked to dismiss the claim due to the omission of the statute of limitations.

One of the co-authors of the inventions, Yuri Obozny, who is involved in the process as a third party, also asked to dismiss the claim. According to him, Vladimir Kushnarev, "being the beneficial owner" of the plant, acts in his interests. He tries to invalidate patents in order not to pay royalties to Obozny. Yuri Obozny also drew attention to the fact that Vladimir Kushnarev "was personally involved in patenting all controversial decisions," and his son, who is also a co-author, Ivan Kushnarev, served as Deputy General Director for Economics and Development at the plant.

The court of first instance noted that the plant had the right to receive disputed patents, since their co-authors, Yuri Obozny and Ivan Kushnarev, were his employees. Since the plaintiff did not work at the plant, according to the Civil Code of the Russian Federation, he has the right to request to identify himself as one of the patent holders on an equal basis with the defendant. Demanding full recognition of patents as invalid, Kushnarev chose an inappropriate method of protection, the court said.

The Presidium of the Intellectual Property Rights Court considered that it was necessary to find out "whether there is a dispute between the parties about the procedure for disposing of the right to obtain a patent, to assess the adequacy of the method of protection chosen by the plaintiff and the proportionality of the measure of protection to the violation of the right, to investigate the purpose pursued by Vladimir Kushnarev when filing this claim."

"For the first time, the Presidium of the IP Court considered a very difficult legal issue: one of the authors of the invention asks not to include him among the patent holders, but to revoke the patent completely," says Maxim Labzin, senior partner at Intellect law firm. Sergey Zuykov, a patent attorney and managing partner of Zuykov and Partners, called the conclusions of the Board of the IP Court correct. "The court of first instance did not establish whether the plaintiff had consented to the plant obtaining disputed patents. The perspective depends very much on the actual relationship between the parties. There must have been some kind of relationship between them, so the court will have to evaluate them," the expert explained.

Source: Kommersant