Patenting of inventions and utility models in Russia involves a mandatory full examination of patentability. Though examiners of the patent office (Rospatent) are quite experienced, disputes over patentability of an invention or utility model regularly arise between the applicant and the examiners or between the patentee and third parties who disagree with the grant of a patent. 

The Russian patent system provides for administrative and judicial review of disputes on patentability of inventions and utility models.

First, the disputes arise at the stage of examination of a patent application.

An applicant who does not agree with the decision on the application may file an appeal with the Chamber of Patent Disputes of the Patent Office.

An appeal may be submitted within seven months from the disputed decision. The missed time limit for filing an appeal may be restored at the request of the applicant. The request for restoration of the time limit, together with the appeal, may be filed within twelve months after the expiry of the missed term.

A fee of RUB 3,000 for each independent claim of an invention (utility model) and RUB 3,000 for restoration of the missed term for filing an appeal is charged for the examination of an appeal.

The appeal is examined by a panel of three experts with the applicant invited. The applicant may participate in the meeting remotely.

During examination of the appeal, the applicant may supplement and clarify his arguments, as well as provide amendments to the claims of the invention (utility model), if such amendments eliminate the reason for refusal to grant a patent. However, the substance of the application as originally filed should not be changed.

The panel experts, in addition to considering the arguments raised in the appealed decision and in the applicant’s appeal may raise additional grounds for refusing to grant the patent.

Upon examination of the appeal, the Patent Office may uphold the disputed decision or issue a new decision, including on grant of a patent or refusal to grant a patent on other grounds.

Secondly, disputes about the patentability of an invention (utility model) may arise after the patent has been granted.

The validity of an issued patent may be challenged during the entire term of its validity on the grounds that the invention (utility model) does not meet the patentability criteria or that the invention (utility model) was not sufficiently disclosed in the application. A notice of opposition to an issued patent may be filed with the Chamber of Patent Disputes by any person. A person who has proved his interest may challenge a patent even after the expiration of its term of validity.

A fee of RUB 7,000 for each independent claim of an invention or RUB 5,000 for each independent claim of a utility model shall be charged for the examination of a notice of opposition against the patent.

A notice of opposition shall be examined by a panel of at least three examiners with the invitation of the patentee and the person who filed the opposition. The parties may participate in the panel meeting remotely by video conference.

In the course of examination of the notice of opposition, the person who filed it may clarify and supplement his petition, including provide new arguments in favor of invalidity of the patent, while the patentee may provide counterarguments, as well as request to amend the claims of the invention (utility model) without changing the essence of the invention (utility model) and without extending the scope of protection. Given that inventions and utility models have different patentability criteria (there is no inventive step requirement for utility models), the owner of a challenged invention patent may request that it be transformed into a utility model patent.

Panel examiners may not consider grounds of patent invalidity other than those cited in the invalidation petition.

Based on the results of the examination of the notice of opposition, the Patent Office may either reject the petition and maintain the patent as is, or grant a new patent with modified claims (including a utility model patent instead of an invention patent), or grant the notice of opposition and invalidate the patent entirely.

Foreign persons file a notice of opposition with the Patent Office and participate in the hearing through Russian patent attorneys.

Rules for patentability disputes were approved by Joint Order of the Ministry of Education and the Ministry of Economic Development dated 30.04.2020 No. 644/261 (amended by Joint Order of the Ministry of Education and Science and the Ministry of Economic Development dated 23.11.2023 No. 1140/646).

According to the statistics, disputes on patentability of inventions and utility models are satisfied in about 35-40 % of appeals and invalidation petitions.

Decisions made by Rospatent on appeals and invalidation petitions can be challenged at the Intellectual Property Court (IPC).

The IP Court examines the legality of the Office's decisions and may either confirm the decision or invalidate it. In the latter case, the court may order Rospatent to reconsider the appeal or notice of opposition, or order the Office to grant the patent, including with amended claims, or, on the contrary, cancel the registration of the invention and invalidate the granted patent in full.

According to statistics, the IPC satisfies about 25% of complaints against decisions of Rospatent. The IP Court decisions can be challenged by cassation at the Supreme Court.

To ensure uniformity in judicial practice, the Supreme Court from time to time adopts guiding rulings. For example, in 2019, Resolution No. 10 of the Plenum of the Supreme Court "On the Application of Part IV of the Civil Code" was adopted, which provides guidelines both for Rospatent and the IP Court.

In addition, disputes on patentability of inventions may arise and be considered in respect of inventions protected by Eurasian patents issued by the Eurasian Patent Office (Moscow) and be valid simultaneously in eight member countries of the Eurasian Patent Convention (Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan).

Within three years after the grant of a Eurasian patent, it may be challenged on the grounds of unpatentability of the invention by any person by filing a notice of opposition with the Eurasian Patent Office. In this case, the decision taken on the opposition will be valid in all member states.

Persons from non-member States file oppositions with the Eurasian Patent Office and participate in the examination there through Eurasian patent attorneys.

After the specified three years patentability of the invention and the validity of the Eurasian patent can be challenged separately in each of the participating countries. The procedure for challenging in this case is the same as for challenging national patents, but the requirements for inventions established by the Eurasian Patent Convention are taken into account. In this case, the decision made regarding the Eurasian patent will be valid only in the state where the corresponding dispute was considered.

In general, the existing system and established practice in Russia for resolving disputes on patentability of inventions and utility models allow for obtaining patent protection for a deserving it technical decisions and, if necessary, effectively challenging the granting of protection to non-patentable subject matter.