New rules for the Chamber of Patent Disputes: what should applicants expect

New rules for the Chamber of Patent Disputes: what should applicants expect

23 September 2020

On September 6th, 2020, “Rules for the Consider-ation and Resolution of Administrative Disputes by the Federal Service for Intellectual Property”, approved by the order of the Russian Ministry of Education and Science and the Ministry of Economic Development (“Rules”) came into force. The Rules were developed jointly with the Federal Service for Intellectual Property (Rospatent).

The Rules provide significant advantages for applicants, including digitalization and optimization of the procedural aspects of the dispute resolution, expansion of the procedural rights of the parties as well as reducing the terms of the dispute resolution procedures.

The main changes are as follows:

Digitalization

The possibilities of electronic interaction are expanding. This includes filing objections, statements and other documents via the official website. Moreover, there is an opportunity to acquire information and case materials on the official website. In addition, the parties may ask, to be sent to them, information about the dispute resolution, by e-mail.

Procedural terms

The Rules set out specific procedural terms: formal check - 5 business days; the first hearing on objections to the decision - after 1 month, the first hearing on other objections and statements - after 2 months. In addition, the grounds and terms to postpone the hearing, as well as to suspend the consideration of the dispute, are directly detailed in the Rules.

More transparent procedures

There is a requirement for parties to provide their positions in advance. The decision-making process is rather formalized: the conclusion is announced by the board at the hearing, a written opinion is delivered, and then the head of Rospatent or a person authorized by it makes a decision on the basis of the conclusion, or rejects the conclusion, within 2 months after the announcement of the conclusion.

Submission of additional evidence

The Rules eliminate restrictions on providing new arguments in support of the claims in the course of a dispute and providing new documents, as well as those relating to joint consideration of objections, or statements, in which the same parties are involved.

Independent experts

Independent experts can be involved in the consideration, at the initiative of the parties or the board.

Audio and video recording

Audio and video recordings of the hearing are stored for at least 4 months and provided at the request of the parties. The parties also have the right to make audio and video recordings on their own, provided they have notified the board.

Takeaways

The Rules introduce more flexible and transparent procedures with precise terms. One can expect that this modernization of the dispute resolution procedure will allow the right holders to protect their exclusive rights to intellectual property more effectively.

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Practice: Intellectual Property

Note: Please be aware that all information provided in this letter was taken from open sources. Neither ALRUD Law Firm, nor the author of this letter bear any liability for consequences of any decisions made in reliance upon this information.

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