Three authors of inventions and utility models in the field of production of explosives filed a lawsuit regarding invalidation of patents on inventions and utility models to the Court of Intellectual Property Rights against JSC “Spetskhimprom”, whose interests were represented by lawyers of the company "Zuykov and partners".
The Plaintiffs in their petition claimed that in the relevant patents, the patent holder – JSC "Spetskhimprom" - mentioned incorrectly, as between the company and the authors were not concluded contracts on alienation of rights for receiving the patents, and, therefore, JSC "Spetskhimprom" has no rights regarding the intellectual property objects. Accordingly, the Plaintiffs asked the court to recognize the patents invalid and to compel Rospatent to issue new patents on mentioned inventions and utility models with an indication the Plaintiffs as patent holders.
The lawyers of Zuykov & partners, as representatives of the patentee, argued their position, in particular, that these inventions and utility models are work’s inventions for the plaintiffs. The court took into consideration that the invention, utility model or industrial design may be deemed as work’s invention in part, and if one of the author of this object created it in connection with the performance of his employment duties or a specific task of the employer in collaboration with another natural person, than share in the exclusive rights of the contingent employee may estimates as official character. In addition, the court noted that the recognition of the technical decision of the utility is not required a document defining the employment responsibilities (employment contract, job description) contained a specific reference to the implementation of the program to develop specific patentable subject matter or the improvement of known designs and decisive point for the recognition that the technical solution is the service one, is the fact of its creation within the framework of employment duties, the content of which can be expressed in the form of a relatively common round of labor duties or the specific job carried out by the worker.
After analyzing all the circumstances and the parties ' arguments, the court applied article 10 of the Civil Code of the Russian Federation and recognized the argument that the actions of the plaintiff in contesting the patents represent a deliberately abusive exercise of rights, and their only purpose is to harm SJC Spetskhimprom, and the abuse is obvious.
Thus, the court rejected the claim of the plaintiffs, and the lawyers of the company "Zuykov and partners" managed to achieve a saving of client rights for inventions and useful models.