Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney
Zuykov and Partners Compel the Renewal of Patent Held by Izhevsk Experimental Mechanical Plant
Izhevsk Experimental Mechanical Plant, JSC, is the right holder of the patent for the group of inventions Corrosion Resistant Steel and a Product Made of It with priority of February 1, 2005.
In 2019, an opposition was filed with Rospatent against granting a patent for a group of inventions because of their inconsistency with novelty as a requisite of patentability. Competitors of the company have previously tried to challenge the granted defense of a right. In 2018, for example, Kauri LLC filed an opposition to the patent granting on the assumption that the invention did not meet industrial applicability as a requisite of patentability. However, with the legal support provided by the Zuykov and Partners law offices, the defense of a right of the group of inventions remained valid.
Having considered the appeal received in 2019, the Patent Office concluded that the substances and products (other than one of the variants) disclosed in the patent documents have the same features as those listed in the independent claims characterizing the group of inventions under the disputed patent.
Lawyers of Zuykov and Partners defending the interests of the Izhevsk Experimental Mechanical Plant disagreed with the statement of Rospatent and pointed out the incorrectness of the calculation of the number of components used in the opposition. Nevertheless, the argument of the patent holder was rejected.
Considering the case, the Board of the Chamber for Patent Disputes concluded that the independent claims describing the disputed group of inventions contain both patentable and non-patentable alternatives to the embodiment of inventions. Therefore, the applicant was invited to make some changes to the claims. At the tribunal hearing, the representatives of Izhevsk Experimental Mechanical Plant petitioned to accept for consideration the corrected formula of the invention with specification of such generic concept as a corrosion-resistant steel for the manufacture of a plain bar of predominantly cylindrical shape. The petition was granted.
The specialists of the patent office rejected the amendments to the formula proposed by the company. Given these considerations, on November 27, 2019 Rospatent decided to satisfy the opposition and invalidate the challenged patent.
However, Izhevsk Experimental Mechanical Plant thought otherwise and filed an application with the Court for Intellectual Property Rights to invalidate the decision of the Federal Agency for Intellectual Property, Patents and Trademarks of November 27, 2019. In substantiation of the claim, Zuykov and Partners pointed to the erroneous conclusions and referred to the fact that the Rospatent decision was based on the incorrect mathematical calculation of substances composition.
Special Metal Processing Technologies LLC, Kauri LLC and Izhstal PJSC were involved as third parties without independent claims. Rospatent and third parties disputed a claim and provided a written statement of defense.
Having reviewed the claim, the court concluded that a special patent and technical examination was necessary. The expert who conducted the research came to the conclusions which testified in favor of Izhevsk Experimental Mechanical Plant.
Following the results of the proceedings, having listened to the opinions of the parties to the dispute and familiarized itself with the expert opinion, the Court for Intellectual Property Rights judged to satisfy the demands of Izhevsk Experimental Mechanical Plant, invalidate the Rospatent decision of November 27, 2019 and compel the patent office to renew the patent held by the client of Zuykov and Partners.