Securing proofs in patent disputes

The disputes in the field of intellectual property are referred to the category of the disputes of increased complexity. Undoubtedly, the patent disputes are the most complex ones, as their consideration requires experience and relevant qualifications. The judges, who consider the patent disputes and the representatives of the persons involved in such cases, often have technical education in addition to legal education.

However, the complexity of the patent disputes is not only in the consideration, but also in preparing the case for the judicial proceedings and in collecting the proofs.

When applying to court with a claim to defend the violated right, the plaintiff must prove the existence of an exclusive right to the result of the intellectual activity and the fact of a violation on the part of the defendant. To prove the existence of the right does not cause any complications. The document certifying the exclusive right is a patent granted by the Federal Executive Authority on Intellectual Property.

To prove the fact of an illegal use is not just complicated, but very complicated and often impossible. Due to the complications associated with collecting the proofs, a patent holder often refuses from the very idea to defend his exclusive right. In some cases, the refusal from the defense of the exclusive right is justified, but the patent holder often simply does not know about his opportunities, in particular, about the opportunity to use a mechanism of securing the proofs.

In accordance with Paragraph 55 of Resolution of Plenum of the Supreme Court of the Russian Federation of 23.04.2019 No. 10 “On the Application of Part IV of the Civil Code of the Russian Federation,” “While considering the cases on the defense of the violated intellectual rights, the courts should take into account the fact that the law has not established a list of the admissible proofs based on which the fact of violation shall be established (Article 55 of the Civil Procedural Code of the Russian Federation the Russian Federation, Article 64 of the Arbitration Procedural Code of the Russian Federation). Therefore, while resolving an issue on whether such fact has taken place, the court, by virtue of Articles 55 and 60 of the Civil Procedural Code of the Russian Federation, Articles 64 and 68 of the Arbitration Procedural Code of the Russian Federation, shall be entitled to admit any means of proving stipulated by the procedural legislation, including the ones obtained with the use of information and telecommunication networks, in particular the Internet.”

All proofs shall be assessed by the court, while considering the case (Article 67 of the Civil Procedural Code of the Russian Federation, Article 71 of the Arbitration Procedural Code of the Russian Federation). If the circumstances based on the information contained in the Internet are to be proved in the case, such information may be captured and formalized by a notarial protocol of inspection of a material proof – a protocol of inspection of the website. This is a rather time-consuming and costly procedure, which is associated, first of all, with the fact that the preparation of the protocol requires time, which the patent holder often does not have.

According to Paragraph 18 of Article 35 of the Outlines of the Legislation of the Russian Federation on Notary of 11.02.1993 No. 4462-I, securing the proofs shall refer to the notarial actions being made by notaries. According to Article 1 of the Outlines of the Legislation of the Russian Federation on Notary, a notary, while performing the notarial actions, shall act on behalf of the Russian Federation.

It is stated by Article 102 of the Outlines of the Legislation of the Russian Federation on Notary that at the request of the interested parties, the notary shall secure the proofs necessary in the case of considering the case in the court or the administrative authority, if there are the grounds to believe that submitting the proofs will subsequently become impossible or complicated.

Securing the proofs shall be carried out by inspecting them (Article 103 of the Outlines of the Legislation of the Russian Federation on Notary) and capturing them by means of drawing up the protocol with an indication of the circumstances discovered during the inspection (Paragraph 45 of Order of the Ministry of Justice of the Russian Federation of 15.03.2000 No. 91 “On Approval of the Methodological Recommendations Regarding Certain Kinds of the Notarial Actions Carried out by the Notaries of the Russian Federation”).

The notarial protocol of inspection of the proofs itself is admitted by the courts as a written proof, which complies with an admissibility criterion.

Capturing the fact by the notary may be carried out without notifying the violator as due to the opportunity of removing such information, this case may be referred to the exigent circumstances. This opinion has been confirmed in the judicial practice.

The Court explains in the above Resolution of the Plenum of the Supreme Court of the Russian Federation of 23.04.2019 No. 10 that along with the proof, which has been inspected by the notary, the printouts of the materials placed on the Internet may be considered as an admissible proof. At the same time, the printout materials should contain an address of the webpage, which the printout has been made from and the time of getting it should be reflected as well. It is admitted for these printouts to be made and certified by the persons involved in the case.

A document confirming the payment for the product and the one based on other proofs, such as audio or video recordings, may be submitted as the proofs of the illegal use.

If there are the grounds to believe that submitting the proofs will subsequently become impossible or complicated, then the proofs necessary for the case may be secured by the notary (Articles 102, 103 of the Outlines of the Legislation of the Russian Federation on Notary).

It is quite complicated to collect independently the proofs regarding the use of the invention that is defended by the patent of the Russian Federation. This is especially true for the invention, which is a method of the manufacture of the product. It is necessary to know and understand a technological process of the manufacture of the products and to have access to it to capture it.

In accordance with Paragraph 1 of Article 72 of the Arbitration Procedural Code of the Russian Federation “The persons involved in the case, who have the grounds to fear that submitting the necessary proofs to the Arbitration Court will become impossible or complicated, may file a petition on securing these proofs.”

Securing the proofs is carried out by the Arbitration Court according to the rules established by the Arbitration Procedural Code of the Russian Federation to secure the claim.

Following the petition filed by an organization or a citizen, the Arbitration Court shall be entitled to undertake the measures to secure the proofs before lodging the claim.

The persons involved in the case, who have the grounds to fear that submitting the necessary proofs to the Arbitration Court will become impossible or complicated may file the petition on securing these proofs (Paragraph 1 of Article 72 of the Arbitration Procedural Code of the Russian Federation), as well as they may apply on securing the proofs before lodging the claim (Paragraph 4 of Article 72 of the Arbitration Procedural Code of the Russian Federation). The petition shall specify the proofs that need to be secured, the circumstances that need to be confirmed by these proofs, the reasons that have forced to file the petition on securing them (Paragraph 2 of Article 72 of the Arbitration Procedural Code of the Russian Federation).

The courts resolve the issue on a need to secure the proofs taking into account the information indicated in the corresponding petition, including the information on the content of the case being considered, on the proofs that need to be secured, on the circumstances that need to be confirmed by these proofs, as well as on the reasons that have forced the applicant to file the petition on securing the proofs (Paragraph 7 of Resolution of the Plenum of the Supreme Court of the Russian Federation of 15.06.2010 No. 16 “On the Practice of the Application by the Courts of the Law of the Russian Federation “On Mass Media”).

The need to secure the proofs arises, if it is obvious that the sources of the information on the facts can be destroyed, will disappear, will change their properties or their use will become impossible or complicated.

In accordance with Article 90 of the Arbitration Procedural Code of the Russian Federation, the secure measures shall be the urgent temporary measures aimed at securing the claim or the property interests of the applicant. The secure measures shall be admitted at any stage of the arbitration process, if the failure to undertake these measures may cause complications or make it impossible to execute the judicial act, as well as in order to prevent causing significant damage to the applicant. The secure measures must be proportional to the claim lodged.

The Arbitration Court shall find the party’s petition on applying the secure measures to be justified, if there are the proofs confirming the existence of at least one of the grounds stipulated by Paragraph 2 of Article 90 of the Arbitration Procedural Code of the Russian Federation and it shall be entitled to apply the secure measures provided there are both grounds. In addition, by virtue of Paragraph 4 of Article 93 of the Arbitration Procedural Code of the Russian Federation, securing the claim cannot be refused, if the person applying on securing the claim has submitted counter security.

In the case the petition is satisfied, the bailiffs may come to the manufacture in order to capture the manufacturing process. However, as a rule, such petitions are not satisfied by the court because while applying on securing the proofs, the plaintiff cannot determine the proof, which he cannot obtain independently. In addition, the plaintiff often cannot indicate the place, where the proof is located. This argument is confirmed by the judicial practice, “the applicant has not indicated (has not concretized) the place and the method of securing the proofs. In particular, there has not been indicated the location of the applicant's personal computer, at which the documents should be reviewed according to the applicant's petition pursuant Article 72 of the Arbitration Procedural Code of the Russian Federation).” in the Decision of the Intellectual Property Court in case No. SIP-213/2018 of 03.05.2018.

In the cases of emergency, when preparing the case for the judicial proceedings, as well as during hearing the case, the court, according to Paragraph 10 of Part 1 of Article 150 and Article 184 of the Civil Procedural Code of the Russian Federation the Russian Federation, Article 78 and Paragraph 3 of Part 1 of Article 135 of the Arbitration Procedural Code of the Russian Federation, shall be entitled to carry out inspection of the proofs and studying them at place pursuant the manner stipulated by these Articles (in particular, to review the information posted at a certain resource of the information and telecommunication network in real-time).

Summing up, it can be concluded that it is often not so complicated to obtain the legal protection of the result of the intellectual activity compared to its defense.