Judical protection of rights to inventions and utility models

Specific aspects of judicial protection of rights to inventions and utility models have much in common in cases of violation.

Quite often individuals are patent holders. In this case, their requests to patent owners fall under the scope of regular courts. However, if a patent holder is registered as an individual entrepreneur and the patent is used by a legal entity, the trial will be held at arbitration courts.

It is essential to note, that for the cases concerning this type of disputes tried at arbitration courts, the Intellectual Property Court is a cassation court, whereas the cases, which are heard by regular courts, according to the general rule should be appealed at regional courts.

Under the general rule of jurisdiction, a complaint is filed to the court at the location of a respondent (defendant). In case an infringer is a legal entity, a complaint is filed to the court at the location corresponding to an address indicated by registration (known as legal address). If a respondent is an individual entrepreneur or an individual, a legal action should be initiated through the court at the location which is his or her domicile (a registered address of permanent place of residence).

As absolute advantages of arbitration courts as places for trying patent cases are existence of specialized commissions on intellectual property at some of these courts (for example, at arbitration courts of Moscow and Saint-Petersburg), or certain judges with specialization on intellectual property. Furthermore, the terms of trial are much shorter at arbitration courts than at regional courts.

An important condition for successful trial concerning the infringed exclusive right for invention or utility model is a right choice of evidence and its formalization. In most cases the conclusion report of patent technical expert examination, done under a court order, is considered the main evidence.
The expert examination is not necessary, if the respondent exercises the right of prior use (art. 1361 of the Civil Code of the Russian Federation) or the right of after-use (art. 1400 of the Civil Code of the Russian Federation). In this respect, it is essential to form properly the set of documents that prove the beginning of the production at relevant time.

It should be noted, that damages are very difficult to prove. Moreover, on 12.03.2014 the Federal Law No. 35-FZ introduced a new rule (art. 1406.1 of the Civil Code of the Russian Federation) establishing, that apart from the use of other applicable remedies and measures of liability established by the Code (Articles 1250, 1252, 1253), in the event of infringement of the exclusive right to inventions, utility models or industrial designs the author or other right holder at his choice is entitled to claim from the infringer a payment of compensation instead of recovery of damages:

One of the main business areas of our Agency are services on judicial protection. Our specialists have rich experience in defense of rights of our principals at arbitration courts, regular courts, criminal litigation, as well as representation in administrative proceedings, including the Chamber for Patent Disputes and Federal Antimonopoly Service.