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Rospatent began to consider a dispute between Apple and Russian entrepreneur

21 Dec 2023

On December 15, 2023, the board of the Chamber for Patent Disputes began considering the case of Apple Rus on a patent for an emergency mobile phone (utility model). Apple demands that the patent should be invalidated, insisting that there is no "novelty" and that it repeats the international patents of the US company. The patent for the mentioned utility model was received by entrepreneur Artashes Ikonomov in 2013.

In 2019, Ikonomov appealed to the Presnensky District Court of Moscow with a request to prohibit Apple from selling iPhones with the "Emergency Call — SOS" function, believing that the defendant violated his exclusive rights by illegally using a utility model based on his patent. But the court refused Ikonomov. The case came to consideration by the Supreme Court, which also refused to satisfy the entrepreneur's demands.

In its turn, Apple Rus appealed to Rospatent with an objection to recognizing Ikonomov's patent for a utility model invalid in Russia, referring to the fact that the utility model does not meet the condition of "novelty", but it was also refused. Apple Rus tried to challenge this decision in the Intellectual Property Court and oblige Rospatent to re-examine the objection, but the court refused the company.

Ikonomov again appealed to the Presnensky District Court of Moscow with a demand to recognize Apple Rus as having violated his exclusive rights to a utility model, as well as to recover compensation from the company for 295 billion rubles. Apple representatives argued during the proceedings that the phones use their technologies.

Patent attorney, managing partner of Zuykov and partners Sergey Zuykov notes that utility models have always been in the "gray zone" since they have only one actual criterion of protectability — novelty: "Until 2014, the examination was not carried out, and various applicants patented bottles, cigarettes, etc. And then they terrified the entire market at the slightest hint of a possible violation of their rights." Sergey Zuykov believes that changing these rules will not be able to become an argument in the chamber since to revoke a patent, proof of novelty is necessary. That means it should be proved that such a mobile phone was produced and sold before the date of filing a patent application.

At the same time, this expert considers the claim of 295 billion rubles to be an excessive demand and believes that this may indicate that Ikonomov may be a "patent troll" who does not produce goods with his technical solution himself but tries to get some money from a real manufacturer. "It is unclear how the patent holder counts the amount of compensation of almost 300 billion rubles. The usual amount of the license fee is 5-10% of the value of the product sold using patent rights. With a turnover of 85 billion rubles (the turnover of Apple Rus in Russia in 2022, according to Rusprofile) for a year, the license could amount to, for example, 8.5 billion rubles. Taking into account the limitation period, compensation could be 25-30 billion rubles," concluded Sergey Zuykov.

Source: RBC