MIP International Patent Forum 2013 Russia Focus

Transcription

1 MIP International Patent Forum 2013 Russia Focus Natalia Gulyaeva, Partner Head of IP, Media & Technology, Hogan Lovells CIS 16 April 2013

2 Patents as a key to business expansion: produced in Russia Russian Government's call for localization of production in Russia (e.g. high tech and pharma) Preferential treatment of local manufacturers Definition of "localized product" still remains unclear Secondary packaging does not constitute localization Call for high tech production and transfer of patented technology to Russia 2

3 Key trends in patent protection and enforcement in Russia Patent protection Russian Patent Office (Rospatent) Eurasian Patent Office (EAPO) Patent enforcement Russian courts State commercial courts ("arbitrazh" courts) IP court Courts of general jurisdiction Chamber for Patent Disputes under Rospatent (CPD) 3

4 Russian Patent v Eurasian Patent Russian Civil Code Rospatent Russian Patent Eurasian Patent Eurasian Patent Convention (EAPC) Eurasian Patent Office (EAPO) RU RU AM AZ BY KZ KG MD TJ TM More lengthy prosecution (2-4 Office Actions; 2-4 years) More formalized approach Less vulnerable to patent invalidity action Russian law is applied by Russian courts for patent enforcement More expedite prosecution (1-3 Office Actions; years) More liberal approach More vulnerable to patent invalidity action Choice of law potential difficulties for patent enforcement 4

5 Patent enforcement: jurisdiction Patent infringement action State commercial courts patent disputes between legal entities and individual entrepreneurs Courts of general jurisdiction patent disputes involving individuals IP court Patent invalidity action CPD 5

6 Patent enforcement: Russian IP Court A specialized court for IP rights within the system of state commercial courts Expected to be introduced in 2013 Jurisdiction: Court of first instance (e.g. claims against the CPD' rulings) Court of 2 nd appeal (e.g. for patent infringement actions) 6

7 Patent infringement Direct Infringement import manufacturing application offer for sale sale other introduction into commerce storage Threat of Infringement preparations for infringement actions (obtaining regulatory approvals does not constitute preparation) Important: no scientific research, experiment or personal use with no commercial intent 7

8 NPEs in Russia: threats The number of Russian NPEs is growing The approaches of Russian NPEs are becoming more sophisticated The quality of patent examination remains not ideal No developed practice of Russian courts recognizing the NPEs' actions as "abuse of rights" The state fees involved into civil litigation are fairly low 8

9 NPEs in Russia: defensive tactics NPE's action Patent infringement action before the court of general jurisdiction Your potential counter-action Patent invalidity action before the CPD Stay of proceedings before the court of general jurisdiction Counter-claim for recovery of legal fees Patent infringement action before the state Patent invalidity action before the CPD commercial court Motion on termination of proceedings before the state commercial courts due to lack of jurisdiction Counter-claim for recovery of legal fees Administrative action (fine in amount of approx. GBP with confiscation of respective infringing products) Providing police with evidence of noninfringement 9

10 NPEs in Russia: defensive tactics NPE's action Criminal action (fine in amount up to GBP approx. 4,200 or salary (or other income) of respective top manager for a period that not exceeds 18 months; or obligatory works up to 480 hours or as compulsory works up to 2 years or imprisonment up to 5 years) Your potential counter-action Providing the prosecutor's office/ police with evidence of non-infringement Letters to the Russian state authorities Promptly responding to the inquiries of state authorities Defamation claim Audio-recording of any out-of-court discussion and court proceedings 10

11 Thank you! 11

12 Used resources ce.gif 12

13 Your contact Natalia Gulyaeva Partner, Head of IP, Media & Technology Hogan Lovells CIS Tel.:

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