Evidence base in the dispute over the protection of exclusive patent rights

The exclusive right to an invention

As stated in Part 1 of Article 1225 of the Civil Code of the Russian Federation, the results of intellectual activity and equivalent means of individualization of legal entities, goods, works, services and enterprises that are granted legal protection (intellectual property) include, among other things, inventions.

By virtue of Article 1226 of the Civil Code of the Russian Federation, intellectual rights are recognized for the results of intellectual activity and means of individualization equivalent to them (results of intellectual activity and means of individualization), which include an exclusive right, which is a property right, and in cases provided for by the said Code, also personal non-property rights and other rights (the right of succession, the right of access, etc.).

In accordance with paragraph 1 of Article 1229 of the Civil Code of the Russian Federation, a citizen or legal entity holding an exclusive right to the result of intellectual activity or to a means of individualization (the right holder) has the right to use such result or such means at their own discretion in any way that does not contradict the law. The right holder may dispose of the exclusive right to the result of intellectual activity or to a means of individualization (Article 1233), unless otherwise provided by the Civil Code of the Russian Federation.

The copyright holder may, at his own discretion, permit or prohibit other persons from using the result of intellectual activity or means of individualization. The absence of a prohibition is not considered consent (permission).

Other persons may not use the relevant result of intellectual activity or means of individualization without the consent of the copyright holder, except for cases stipulated by the Civil Code of the Russian Federation. The use of the result of intellectual activity or means of individualization (including their use in the ways stipulated by the Civil Code of the Russian Federation), if such use is carried out without the consent of the copyright holder, is illegal and entails liability established by the said Code and other laws, except for cases when the use of the result of intellectual activity or means of individualization by persons other than the copyright holder, without his consent, is permitted by this Code.

According to the provisions of Article 1346 of the Civil Code of the Russian Federation, exclusive rights to inventions, utility models and industrial designs certified by patents issued by the federal executive body for intellectual property or patents valid on the territory of the Russian Federation in accordance with international treaties of the Russian Federation are recognized on the territory of the Russian Federation.

Use of the invention

According to Part 2 of Article 1358 of the Civil Code of the Russian Federation, the use of an invention, utility model or industrial design is considered, in particular:

1. import into the territory of the Russian Federation, manufacture, use, offer for sale, sale, other introduction into civil circulation or storage for these purposes of a product in which an invention or utility model is used, or of a product in which an industrial design is used;
2. the performance of actions provided for in subparagraph 1 of this paragraph in relation to a product obtained directly by a patented method. If the product obtained by a patented method is new, an identical product shall be considered to have been obtained by using the patented method, unless proven otherwise;
3. performing the actions provided for in subparagraph 1 of this paragraph in relation to a device, during the functioning (operation) of which, in accordance with its purpose, the patented method is automatically implemented;
4. the performance of the actions provided for in subparagraph 1 of this paragraph in relation to a product intended for its use in accordance with the purpose specified in the invention formula, when protecting the invention in the form of using the product for a specific purpose;
5. implementation of a method in which the invention is used, including by applying this method.

In accordance with paragraph 3 of Article 1358 of the Civil Code of the Russian Federation, an invention is considered to be used in a product or method if the product contains, and the method uses, each feature of the invention listed in an independent claim of the patent formula, or a feature equivalent to it and known as such in the given field of technology before the priority date of the invention.

As explained in paragraph four of clause 123 of Resolution No. 10 of the Plenum of the Supreme Court of the Russian Federation dated 23.04.2019 "On the Application of Part Four of the Civil Code of the Russian Federation", an invention is recognized as used in a product or method if the product contains, and the method uses, each feature of the invention given in an independent claim of the patent formula, or a feature equivalent to it and which became known as such in this field of technology before the priority date of the invention.

The use without the consent of the patent holder of only individual features of the invention, specified in an independent clause, does not violate the exclusive right of the patent holder.

The presence in the defendant’s product or method of additional features, in addition to the features of the invention given in the independent claim, cannot serve as a basis for concluding that the invention or utility model is not used.

It should be taken into account that the exclusive right to an invention covers their use directly in a product or method, but not in the documentation (including design documentation) for the manufacture of a product in the process of development or the implementation of a method. An infringement will be the performance of an action necessary for the implementation of at least one of the stages of production using the specified documentation.

However, the use of a description of an invention in a work of science, literature or art is not covered by the exclusive right of the copyright holder.

Disputes about infringement of the exclusive rights of the patent holder

When resolving a dispute on the merits of the violation of the exclusive rights of the patent holder, the subject of proof in this case includes establishing the circumstances of the use in the defendant's product of each feature of the invention given in an independent clause of the formula contained in the patent, belonging to the plaintiff's invention (ruling of the Intellectual Property Court dated 13.03.2024 in case No. A07-29991/2021).

The establishment of the above circumstances is essential to the case and the correct resolution of the present dispute depends on their establishment.

When establishing the use of an invention, the invention formula is interpreted in accordance with paragraph 2 of Article 1354 of the Civil Code of the Russian Federation. Protection of intellectual property rights to an invention is provided on the basis of a patent to the extent determined by the invention formula contained in the patent. The description and drawings may be used to interpret the invention formula (paragraph 2 of Article 1375 of the Civil Code of the Russian Federation and paragraph 2 of Article 1376 of the Civil Code of the Russian Federation).

Based on the above, the most important point to be proven in such cases is the establishment of the use in the defendant’s products of each feature of the invention, given in the independent clause of the formula contained in the patent.

As a rule, due to the need for special knowledge in the field of chemistry/physics/mechanics/other fields to establish the fact of the presence/absence of use in products of each feature from the independent claim of the patent for inventions, the plaintiff, in order to prove the above-mentioned circumstance, together with the statement of claim, submits to the case materials a pre-trial opinion of a specialist who carried out the relevant analysis and has the necessary education and qualifications.

In turn, the defendant, in order to refute the above circumstances, together with the response to the statement of claim, also submits to the case materials a pre-trial expert opinion confirming the fact of the absence of use in the disputed products of each feature of the independent claim of the patent for inventions.

The above-mentioned opinions will not be considered expert opinions within the meaning of Article 86 of the Arbitration Procedure Code of the Russian Federation, however, they constitute written evidence that is subject to assessment along with other evidence available in the case materials (ruling of the Intellectual Property Court dated 22.01.2020 in case No. A46-16641/2018).

In such a case, a situation arises in which the case materials contain two pieces of evidence with directly opposite conclusions on the same issue.

From the point of view of the position of both the plaintiff and the defendant, in this situation it is important to file a petition for the appointment of a patent forensic examination of the case.

Taking into account the above, on the basis of Part 1 of Article 82 of the Arbitration Procedure Code of the Russian Federation, in order to clarify issues arising during the consideration of the case that require special knowledge, the arbitration court appoints an expert examination at the request of a person participating in the case or with the consent of the persons participating in the case. If the appointment of an expert examination is prescribed by law or provided for by an agreement or is necessary to verify a statement about the falsification of the evidence presented or if it is necessary to conduct an additional or repeated expert examination, the arbitration court may appoint an expert examination on its own initiative.

Thus, in case No. A46-16641/2018, the Intellectual Property Court indicated that the plaintiff was not deprived of the right, as part of the collection of evidence, taking into account the length of the case, to submit evidence in the case materials in support of his legal position that refutes the defendant's evidence, including filing a motion to appoint a forensic examination in the case. However, the plaintiff did not exercise this right.

Thus, the plaintiff's claims were denied, and the decision was based on the submitted pre-trial report, which contained conclusions about the absence of the fact of using each feature of the independent claim of the patent for an invention.

However, it should also be borne in mind that, as stated in paragraph 12 of the Resolution of the Plenum of the Supreme Arbitration Court of the Russian Federation dated 04.04.2014 N 23 “On certain issues of the practice of applying the legislation on expert examination by arbitration courts”, in accordance with the provisions of parts 4 and 5 of Article 71 of the Arbitration Procedure Code of the Russian Federation, an expert’s report does not have a pre-established force for the court and is subject to assessment along with other evidence.

The court evaluates the evidence, including the expert's opinion, based on the requirements of Parts 1 and 2 of Article 71 of the Code. In this case, based on the results of the evaluation of the evidence, the court must provide reasons for accepting or rejecting the evidence in the case (Part 7 of Article 71, Clause 2 of Part 4 of Article 170 of the Arbitration Procedure Code of the Russian Federation).

In practice, courts often disregard other evidence, giving predetermined weight to the expert's conclusion. An example of this can be seen in case No. A71-3392/2023.

Given the above, the expert examination conducted in the case can largely predetermine the court's conclusions regarding the establishment of the presence or absence of the use of each feature of the independent claim of the plaintiff's patent in the defendant's products.

Thus, the standard evidentiary base in such disputes consists of:

• a patent as proof of the exclusive right to an invention;
• a pre-trial expert opinion, as well as a conclusion obtained as a result of a forensic examination, as evidence of the presence/absence of a violation;
• evidence indicating that the defendant has committed the actions specified in Part 2 of Article 1358 of the Civil Code of the Russian Federation (i.e., confirming the use of the invention directly in the product or method, but not in the documentation (including design documentation) for the manufacture of the product under development or the implementation of the method. It is important to understand that a violation will be the commission of an action necessary for the implementation of at least one of the stages of production using the specified documentation).

As additional evidence in such disputes, depending on the subject of the stated claims, the following may be presented in the case materials:

• a pre-trial assessment report, as well as a report obtained as a result of a forensic examination, as evidence of the validity of the amount of the material part of the stated claims (in the event of recovery of compensation);
• license agreements of the patent holder with third parties, as evidence of the validity of the amount of the material part of the stated claims (in the case of recovery of compensation under the rules of paragraph 2 of Article 1406.1 of the Civil Code of the Russian Federation);
• screenshots of Internet pages/notarial protocols of inspection of evidence, including on the Internet.

It should be borne in mind that, depending on the specifics of a particular dispute – in particular, depending on the specifics of the patent formula for an invention, as well as depending on the procedural behavior of the parties, it may be necessary to submit other evidence to the case materials confirming/refuting certain facts, including conducting forensic examinations on other issues.