International Patent Search: A Tool for Patent Invalidity

Patent cancellation is a labor-intensive but sometimes necessary process to protect the legitimate interests of third parties. The most common and effective reason for declaring a patent invalid is that the registered patent does not meet the requirements of patentability. High-quality patent searches play a key role in this process.

To challenge a Russian patent for an invention or utility model, the Chamber for Patent Disputes at Rospatent relies on Article 1398 of the Civil Code of the Russian Federation. According to subparagraphs 1–3 of paragraph 1 of this article, a patent may be fully or partially invalidated if:

• it does not meet the conditions of patentability;
• the application documents for the invention or utility model, submitted on the filing date, fail to disclose the essence of the invention or utility model with sufficient completeness for a specialist in the relevant technical field;
• the patent claims, as granted, include features not disclosed in the application documents as of the filing date.

The conditions of patentability are defined in Article 1350 of the Civil Code. The “state of the art” includes any information that became publicly available worldwide before the priority date of the invention. This means that any document or publication existing before the priority date of the contested patent can be used to prove lack of novelty or inventive step.

Specifics of Challenging a Eurasian Patent

A Eurasian patent is valid in all member states of the Eurasian Patent Convention. According to Rule 54(1) of the Patent Regulations under the EPC, a Eurasian patent can be fully or partially invalidated at any time during its term.

An important feature is that, since 2017, insufficient disclosure of the invention has been recognized as an independent ground for cancellation of a Eurasian patent (Rules 53 and 54 of the Patent Regulations).

Within nine months of the publication of a Eurasian patent, any person may file an objection directly with the Eurasian Patent Office. After this period, the patent can be challenged separately in each member country according to national procedures. In Russia, for example, the process involves filing an objection with Rospatent, and the decision can be appealed in the Intellectual Property Court.

The Role of International Patent Information Searches

To successfully cancel a patent, it is not enough to rely solely on Russian databases. Since the state of the art is determined globally, the search must cover a wide range of sources: foreign patent offices (USPTO, EPO, JPO, China, Korea, etc.); international organizations (PCT, EAPO); non-patent literature (scientific articles, dissertations, technical journals, conference materials); commercial and open-access patent databases; and more.

Professional patent searches help identify documents that can serve as evidence in a cancellation dispute, including earlier patents, publications, and application descriptions that became publicly available before the priority date of the contested patent.

Why Challenge Russian and Eurasian Patents

• Market access for your product

A valid patent grants the owner an exclusive right (Article 1358 of the Civil Code). If your company plans to launch a product covered by another patent, you cannot do so without the patent holder’s permission. Cancelling such a patent removes the barrier and allows legal market entry.

• Reducing or eliminating licensing fees

Sometimes it is easier to pay for a license than to challenge a patent. However, if royalty payments are excessive and there are grounds to believe the patent was granted unlawfully (e.g., for an obvious solution), challenging it becomes economically justified. Successful cancellation eliminates the obligation to pay royalties.

• Protection against patent trolls

Unscrupulous patent holders may acquire “non-working” patents and file claims against real manufacturers. Such patents often lack novelty or inventive step. Third parties may proactively cancel these patents to prevent lawsuits or compensation claims.

• Freedom to operate

Large companies conduct patent clearance studies before launching new products or entering new markets. If another patent covers a critical technical solution, the most reliable way to ensure freedom to operate is to cancel that patent. Otherwise, one must either work around the patent (not always possible) or negotiate a license.

• Preparation for mergers, acquisitions, or investments

During legal due diligence, investors or buyers examine the target company’s patent portfolio for legal clarity. Discovering a “weak” patent that competitors could challenge can reduce the deal value. The deal initiator may proactively cancel such patents before negotiations to clean the portfolio or reduce the price.

By invalidating a competitor’s key patent, one can reduce their investment attractiveness, market monopoly, or bargaining power in cross-licensing negotiations. Such strategies are common in high-tech industries (pharmaceuticals, telecommunications, IT).

• Defense against unfounded lawsuits

If a patent infringement lawsuit has already been filed against a company, one option is to file a counter-objection with the Chamber for Patent Disputes to cancel the plaintiff’s patent. Suspending court proceedings until Rospatent resolves the dispute is often advantageous to the defendant.

It is important to understand that filing an objection against a patent is not “negative PR” but a legal mechanism to remove decisions that do not meet patentability requirements (Article 1398 of the Civil Code, Rule 54 of the EPC Patent Regulations). Fair market participants use it to restore competition.

Advantages of Working with a Professional Patent Attorney

Conducting an international patent information search is a strategic step before filing an objection. It allows you to identify evidence confirming non-compliance with patentability requirements, assess the chances of success, and minimize risks.

If your goal is to cancel a Russian or Eurasian patent, do not rely on a superficial analysis. Entrust the international patent search to the professionals at Zuykov and partners — the foundation on which the success of the entire process is built.