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Published: June 11, 2019

Equivalents or innovation: «A.Zalesov & Partners» Patent & Law Firm successfully defended the manufacturer of railroad machinery TPTA RYTM Inc. in a patent infringement dispute

TPTA RYTM Inc., a Client of «A.Zalesov & Partners» Patent & Law Firm, a local manufacturer of breaks systems for trains from the City of Tver, was faced a patent infringement lawsuit filed by the major Russian railroad machinery manufacturer Transmash, who claimed permanent injunction and seizure and destroying of the devices in dispute, because of the alleged infringement of an invention patent RU 2578400. Due to the plaintiff, all the row of defendant's break pressure distributors was under the scope of the patent claims, therefore the selling of the client's products should be stopped. Both parties agreed that there is no literal infringement, therefore the main dispute was regarding the possibility of applying the doctrine of equivalents to the case. The patent claim under dispute had a very long list of features, some of them very specific. Some of these features were further developed by the defendant, and such development was considered novel and inventive by RU PTO since respective invention patents protecting these amended features were granted. It should be also noted, that previously and apart from this court case, the defendant tried to invalidate the patent basing on the lack of inventive level, and the RU PTO found, that these very features of the patent in question were not known from the prior art, and therefore ensured inventive level of the invention. So, the question was, whether a doctrine of equivalents should be applied to the situation, when a feature A, distinguishing the invention from the prior art, was substituted by the defendant by another feature B, which in its turn was considered by RU PTO a substantial achievement, novel and inventive. The experts nominated by court agreed with the defendant's position, that in this case such a substitution cannot be considered an equivalent, but should be treated as further innovation, and therefore cannot be within the scope of the patent claims. The Arbitration Court of the Tver Region took the decision on March 25, 2019, by which agreed with the experts and refused in claims in full. The plaintiff appealed the decision, meanwhile, the appeal instance agreed with the defendant's position and confirmed the decision by its Ruling as of June 6, 2019. The court case number is А66-28/2018, full file of the court case can be seen here. The case was very important both for our client, who was facing the threat of full stop of operation and for the court practice since the decision shed some further light to principles of application of the doctrine of equivalents in Russia. The defendant was represented in both instated by the «A.Zalesov & Partners» Patent & Law Firm LLC: by Aleksey Zalesov, managing partner, Irina Ozolina, senior partner and Vlad Ryabov, a senior lawyer.



Published: June 11, 2019

«A.Zalesov & Partners» Patent & Law Firm is ranked by IAM Patent 1000 2020 as a «Silver» company for patent litigation in Russia

On June 6, 2019, the renown worldwide edition IAM Patent 1000 released a new ranking of the world's leading patent professionals for 2020. We are honored and proud to be listed as «Silver» firm in patent litigation in Russia, among other renown colleagues from this field. Due to the edition: «Clients are swift to endorse A Zalesov & Partners: "the firm is incredibly responsive, and the quality of its advice is consistently high. It explains issues succinctly and takes a highly commercial approach, too. Added to this, on a personal level, its practitioners are also extremely pleasant to deal with and very approachable." "They have an in-depth understanding of technical issues, which enables them to devise the best filing and prosecution strategies. Instead of simply following instructions, they always go one step further – they give proactive advice and act very quickly." We are grateful to our clients, who estimated our efforts so high, inducing and inspiring us to perfect our skills and quality of services even more, and also grateful to our professional team, who works hard, being creative and responsive to deserve this appraisal. We are also proud to confirm Dr. Aleksey Zalesov's ranking in the list of the best patent litigators in Russia, and Irina Ozolina — in the second tier of recommended individuals for the field. The full ranking is published here.



Published: June 11, 2019

A.Zalesov & Partners Patent & Law Firm Team spoke at the conference «Modern Regulation of Intellectual Property and Licensing in the Eurasian Economical Union» in Minsk, Belarus

Irina Ozolina, senior partner, and Dr. Yulia Dutikova, leading patent specialist of A.Zalesov & Partners Patent & Law Firm spoke at the conference «Modern Regulation of Intellectual Property and Licensing in the Eurasian Economic Union» held in Minks, Belarus on June 5-8th, 2019. Our team was moderating the section «Pharma. Challenges of legal regulation and legislative initiatives». Dr. Yulia Dutikova presented the pros and cons of the new initiative of RU PTO and the Ministry of Health of Russia to create a Unified Register of Patents for Pharmaceuticals. Irina Ozolina gave an overview of recent patent disputes in pharma filed, mentioning some tendencies and controversies of the courts approaches in recent years. The conference was organized by the Russian Chamber of Patent Attorneys, LES Russia, Belorussian Association of Patent Attorneys and Association «Belbrand». The event welcomed representatives of RUPTO, Belpatent, EAPO, Eurasian Commission, Federal Antimonopoly Service, and other officials and IP practitioners from more than 13 countries, who gathered to share the views regarding current laws, practice and anticipated developments of IP law in the region. A.Zalesov & Partners Patent & Law Firm LLC is proud to be one of the sponsors of the event.



Published: June 11, 2019

The Ninth Arbitration Court of Appeal upholds the decision in favor of Canon Inc, the client of «A.Zalesov & Partners» Patent & Law Firm, rejecting the appeals filed by the Defendants

A Client of «A.Zalesov & Partners» Patent & Law Firm Canon Inc. filed a lawsuit with the Moscow City Arbitration Court on December 26, 2017, requesting that the defendants stop the infringement of the invention patent 2467370 and pay monetary compensation. The defendants: the largest supplier of consumables, components and spare parts for the maintenance of printing and the computer equipment on the Russian market, and his largest retailer, were infringing the plaintiff's patent rights by importing and distributing certain models of cartridges, where Plaintiff's invention was illegally used. As a result of consideration of the case, the court satisfied the claims of the plaintiff, forcing both defendants to stop offering for sale, sale, and, otherwise, introducing cartridges into civil circulation, in which the invention is used. One of the defendants was forced to publish the resolutive part of the judgment in the official RUPTO bulletin. The court also awarded monetary compensation to be paid to the plaintiff. The Defendants filed Appeals against the decision of the Moscow Arbitration Court to the Ninth Arbitration Court of Appeal. On May 6, 2019, the Ninth Arbitration Court of Appeal has issued his final ruling in full deciding to uphold the decision (for more information about the case A40-251219/2017 please follow the link.



Published: June 11, 2019

The appeal instance confirmed the first instance court decision in favour of A.Zalesov&Partners' Client in a patent infringement case in the field of municipal machinery

A Client of A.Zalesov&Partners, a local manufacturer of municipal machinery (Ryazanskaya Region), was sued by a local patent owner (Moscow) seeking for an injunction, destroying of vehicles in dispute, and demanding monetary compensation for patent infringement in the amount equal to the full price of the vehicles sold out. The suit was based on the doctrine of equivalents since both parties agreed that there was no literal infringement of patent RU 2487070. An expert nominated by the court found equivalency; thus, declared that the patent was infringed. A.Zalesov&Partners provided a bulk of evidence to prove that the expert's conclusions were erroneous and contradicting to the facts of the case. A cross-examination of the expert revealed discrepancies in the expert's position. It was proven, that first, the expert erred in the function of the defendant's feature, which she considered equivalent to the patented one, and second, she erred in choosing the proper prior art to prove that the defendant's feature was known as equivalent before the patent priority date (the requirement of art. 1378 of the Civil Code is that that using an equivalent feature can be considered infringement if this feature is known as equivalent from prior art before the patent priority date). After more than one year consideration in the first instance, the Moscow City Arbitration Court ruled to reject the patent owner's claims in full. The decision was appealed by the patent owner, and a repeated expert opinion, nominated by the appeal court, confirmed, that there was no patent infringement. By its Ruling as of May 6th, 2019, the 9th Appeal Arbitration Court upheld the decision of the first instance, that the claims should be dismissed due to non-infringement. The full court case file on the case A40-30260/2017 can be found here. The defendant was represented by «A.Zalesov & Partners» Patent & Law Firm LLC team: Aleksey Zalesov, managing partner, Irina Ozolina, senior partner, and Vlad Ryabov, a senior lawyer.



Published: June 11, 2019

Irina Ozolina contributed to WTR daily with an article featuring the most important points of the Plenum of the Russian Supreme Court as of April 23, 2019 regarding trademark disputes

On April 23, 2019, the Plenum of the Russian Supreme Court issued the Ruling, highlighting the guidelines to the courts and practitioners on many IP issues, which needed clarification and harmonization. The Plenum consists of 184 clauses, featuring the most important issues in patent, trademark and copyright litigation, such as jurisdictional matters, the scope of IP rights, interrelations between invalidation and infringement trials, construction of license agreements by the courts, trademark infringements as unfair competition, and many others. Besides the issues mentioned in the WTR Daily publication by Irina Ozolina, senior partner of «A.Zalesov & Partners» Patent & Law Firm LLC it's also important to mention, that the Plenum allowed the courts to make a stay in infringement disputes due to pending invalidation trial before RU PTO, and that clause 184 of the Ruling directly cancels the iconic Joint Ruling of the Supreme Court and the Supreme Arbitration Court as of March 26, 2009 № 5/29. The referred article first appeared on WTR Daily, part of World Trademark Review. For further information, please go to www.worldtrademarkreview.com.



Published: June 1, 2019

A.Zalesov & Partners Patent & Law Firm team is listed by BestLawyers for Intellectual Property Law in Russia

On May 24th the BestLawyers published the results for 2019, and we are glad and proud to be listed in the edition. Aleksey Zalesov, managing partner, and Irina Ozolina, senior partner, sustained their position among the most renown professionals in the field. Sincere gratitude to our colleagues, who once more gave such a high estimation of our efforts.



Published: June 1, 2019

A.Zalesov & Partners Patent & Law Firm listed for Patent Contentious and Patent Prosecution for 2019 by IP Stars edition

We are glad to be listed for Patent Contentious and Patent Prosecution for 2019 by IP Stars edition, Dr. Aleksey Zalesov being among Trademark Stars and Patent Stars for Russia. Our hearty thanks to our colleagues and clients voting for us. The edition for 2019 was published on May 19, 2019.



Published: March 28, 2019

Aleksey Zalesov made a presentation before the Expert Council of the Russian Parliament

On March 27, 2019 Managing Partner of «A.Zalesov & Partners» Patent & Law Firm, Aleksey Zalesov, serving as the Vice-President of the Russian Chamber of Patent Attorneys, made a presentation before the Expert Council on Technological development and Intellectual Property of the State Duma (lower house of the Russian Parliament) on the amendments to the regulations on patent attorney's profession, earlier proposed by the Russian Chamber of Patent Attorneys.



Published: March 28, 2019

Aleksey Zalesov is listed in WWL: Trademarks 2019

Who is Who Legal: Trademarks 2019 edition included Dr. Aleksey Zalesov in its world's leading Trademarks lawyers list.



Published: March 20, 2019

Office of the Federal Antimonopoly Service in Mary-El ruled in favor of CJSC «Ferrero Russia», the client of «A.Zalesov & Partners» Patent & Law Firm, and recognized import of products «Nelly Kids Chocolate» as unfair competition

A famous Russian retailer imported confectionaries «Nelly Kids Chocolate» in packaging similar to products «Kinder Chocolate», manufactured by Ferrero group. The Office of the Federal Antimonopoly Service in Mary-El initiated administrative proceedings against the importer under part 1 of Article 14.6 of the Federal Law «On competition protection» (trademark infringement) and engaged CJSC «Ferrero Russia» to the case as a third party. Specialists of «A.Zalesov & Partners» Patent & Law Firm prepared legal submissions on behalf of CJSC «Ferrero Russia», and claimed, that the case should be qualified not only as trademark infringement, but also as a parasitic attitude, since the packagings of the infringing products on the whole were confusingly similar to the «Kinder Chocolate» packagings and trade dress. In other words, the specialists of «A.Zalesov & Partners» Patent & Law Firm stated, that actions of the importer should be classified as unfair competition both under part 1 and part 2 of Article 14.6 of the Federal Law «On competition protection». On February 11, 2019 the commission of Office of the Federal Antimonopoly Service in Mary-El rendered the decision. In particular, the commission agreed with the arguments stated in legal submissions of CJSC «Ferrero Russia». In particular, the commission classified actions of the importer of «Nelly Kids Chocolate» as unfair competition, both for the trademark infringement and for imitation of Ferrero's packagings and trade dress on the whole. The commission ordered the importer to cease the infringements and to transfer all income unlawfully earned by the importer to the federal budget. This case serves as an example of the practical implementation of the Fourth Antimonopoly Law Package introducing amendments to Russian competition law allowing to protect market players from parasitic attitude of competitors. CJSC «Ferrero Russia» was represented by partners Irina Ozolina, Zalesov Alexey and senior lawyer Ryabov Vladislav from «A.Zalesov & Partners» Patent & Law Firm.



Published: March 20, 2019

«A.Zalesov & Partners» Patent & Law Firm is recommended by famous Internet edition «PRAVO.RU»

Famous Russian Internet edition «PRAVO.RU» published its annual ranking of best law firms in Russia in 2018 «Pravo 300». «A.Zalesov & Partners» Patent & Law Firm was ranked as a leader in branch «Intellectual property» in the federal rating, alongside with other leading international and Russian law firms.



Published: March 20, 2019

«A.Zalesov & Partners» Patent & Law Firm successfully represented Ferrero S.p.A. in a trademark infringement dispute against «Tic Tac» imitation

A Client of «A.Zalesov & Partners» Patent & Law Firm, Ferrero S.p.A., filed a lawsuit on trademark protection against LLC «Confitrade», a manufacturer of confectionaries similarly to the famous «Tic Tac» mints, with the Moscow City Arbitration Court. The Plaintiff claimed that the packagings of the Defendant's mints infringe Ferrero's trademarks. During negotiations the parties reached an agreement, meeting the interests of the Plaintiff. Namely, it was agreed that allegedly infringing packagings of the Defendants are to be amended in such a way not to be confused with «Tic Tac». On March 05, 2019 the Moscow City Arbitration Court approved the amicable agreement and closed the proceedings. Ferrero S.p.A. was represented before the court by Irina Ozolina, a senior partner of «A.Zalesov & Partners» Patent & Law Firm, and Vlad Ryabov, a senior lawyer. The case number is А40-107052/18.



Published: March 7, 2019

A.Zalesov&Partners is included in the short list of "Managing Intellectual Property — EMEA 2019 Awards"

«A.Zalesov & Partners» Patent & Law Firm is proud to be included in the short list of "Managing Intellectual Property — EMEA 2019 Awards" for Russia in "Patent contentious" and "Trademark contentious" practice areas. We are very thankful to our colleagues and clients for the kind words on our services.



Published: February 11, 2019

The Russian Supreme Court allowed adding new examples into the patent specification during invalidation trials

Recently the Russian Supreme Court took a very controversy Ruling, which entailed an intensive discussion among IP law professionals. This is a second cassation ruling in a row of controversial decisions of different instances in the case, which started in a routine way, and promised nothing interesting in the beginning.

Rospatent invalidated an invention patent RU 2588634 in full due to insufficiency of disclosure. In particular, Rospatent stated, that examples given in the patent specification did not confirm the possibility of achieving the claimed technical result.

Having disagreed with said Rospatent's decision, the patent owner filed an appeal with the IP court. The first instance court satisfied the patent owner's appeal and invalidated Rospatent's decision. The court pointed out, that obvious technical errors in the patent documentation shall not entail such consequences as a patent invalidation in full and may be corrected in the order stipulated by law. The first instance court referred to clause 2 of Article 10 of the Patent Law Treaty. The first instance court pointed out, that the rights and legitimate interest of the patent owner were infringed by Rospatent, since the patent owner did not have an opportunity to correct obvious errors of his patent application during a formal and substantive examination. The court clarified, that an applicant should have at least one possibility to amend the documentation of his patent application documents including specification, and the patent owner reserved such a right, since Rospatent had failed to send a respective request (office action) to him during a formal and substantive examination.

However, while considering the case in the cassation instance, the Presidium of the IP court reversed the judgement of the first instance court. The Presidium of the IP court stressed, that during consideration of invalidation actions in the Chamber for Patent Disputes only the claims can be amended, but not the patent specification.

The Presidium of the IP court also held, that amending the claims of invention by adding features from the specification would result in creation of a new object, which did not benefit initial protection by the patent in question. To Presidium's opinion, it would abuse rights and legitimate interest of the third parties, which properly used the object, previously not protected by the patent. The Presidium of IP court stated, that the rule stipulated by clause 2 of Article 10 of the Patent Law Treaty can not be applied directly in part of establishing the possibility to amend claims of an invention.

On January 22, 2019 the Russian Supreme Court ruled (Ruling № 300-КГ18-19429) to upheld the judgment of the first instance court and to reverse the Ruling of the Presidium of the IP court. The Supreme Court agreed with the arguments of the first instance court and pointed out, that during consideration of an invalidation action in the Chamber for Patent Disputes the patent owner may amend both the claims and the patent specification. The Supreme Court also stated, that clause 2 of Article 10 of the Patent Law Treaty is a legal rule for direct application. For more information please follow the link.

The specialists of «A.Zalesov & Partners» Patent & Law Firm as well as most of patent specialists in Russia are looking forward to see further development of the case before the Presidium of the Supreme Court as a supervisory instance, since the above Ruling overturns the current stable practice regarding possible patent amendments during invalidation procedure.



Published: February 11, 2019

Irina Ozolina contributed to the WTR's third edition of Trademark Litigation: A Global Guide 2019

The world renowned dedicated intelligence platform World Trademark Review published the third edition of the Trademark Litigation: A Global Guide 2019, which is available to the public without additional subscriptions.

This is a comparative guide to the critical points, which should be taken into account when taking a decision to litigate in one of the key jurisdictions, from Germany or United Kingdom, to Brazil and China. The Guide is structured in an easy-to-refer manner to reveal the key litigation points, such as legislative framework, available causes of actions, defences to trademark infringement, and so on.

The Chapter about trademark litigation in Russia was prepared by Irina Ozolina, Senior Partner of «A.Zalesov & Partners» Patent & Law Firm. (Download the pdf version.)



Published: January 31, 2019

The Moscow City Arbitration Court ruled in favor of Canon Inc., A.Zalesov&Partners' Client, in a long lasting patent infringement case

A Client of «A.Zalesov & Partners» Patent & Law Firm Canon Inc. filed a lawsuit with the Moscow City Arbitration Court on December 26, 2017 requesting that the defendants stop the infringement of the patent rights to the invention and pay monetary compensation.

The defendants: the largest supplier of consumables, components and spare parts for the maintenance of printing and computer equipment on the Russian market, and his largest retailer, were infringing the plaintiff's patent rights by importing and distributing certain models of cartridges, where Plaintiff's invention was illegally used.

The court ordered in-court technical examination, which witnessed the infringement.

In order to reduce the amount of compensation, the defendants raised the following argument. According to defendants' statements, a model number of the cartridge indicates only the compatible printer models, and does not obligatorily indicates that technical implementation of cartridges under such a model number is one and the same. Defendants stated, that they were not controlling, what exact devices were put into the packagings under certain model numbers and, therefore, what exact cartridges were in fact introduced into the Russian market, that is why it was impossible to establish the scale of the infringement. Basing on that, the defendants pleaded for payment of compensation only for 16 cartridge items, factually analyzed during the court examination.

The court dismissed said arguments of the defendants and awarded the compensation much greater of the amount, which the defendants insisted on. To strengthen the position, the plaintiff provided the confirmations of purchases all around Russia (from Moscow to Vladivostok), including the purchase certified by a notary. At the same time, a piece of evidence provided by the defendants was excluded from the case materials upon the plaintiff's statement on falsification of evidence.

As a result of consideration of the case, the court satisfied the claims of the plaintiff, forcing both defendants to stop offering for sale, sale, and, otherwise, introducing cartridges into civil circulation, in which the invention is used. One of the defendants was forced to publish the resolutive part of the judgement in the official RUPTO bulletin. The court also awarded monetary compensation to be paid to the plaintiff (for more information please follow the link). Company Canon Inc. was represented by Aleksey Zalesov, Irina Ozolina and Maria Makhlina, partners of «A.Zalesov & Partners» Patent & Law Firm.



Published: January 31, 2019

The Court ruled in favor of A.Zalesov & Partners' Client after a Customs' seizure of the trademark infringing goods

A Client of «A.Zalesov & Partners» Patent & Law Firm, company Ferrero S.p.A., filed a petition with the Customs to bring an importer of infringing goods to an administrative liability for a trademark infringement. Customs seized the goods in question and sued the importer basing on Ferrero's petition.

The Arbitration Court of Krasnodarskiy Region ruled to satisfy the claims in full, and brought the importer to an administrative liability under part 1 of Article 14.10 of the Russian Code of Administrative Offences. In particular, the court imposed an administrative fee on the importer with deprivation of imported goods.

Irina Ozolina, a senior partner at «A.Zalesov & Partners» Patent & Law Firm, and Vlad Ryabov, a senior lawyer, prepared and presented legal submissions with the Customs and the court. For more information please follow the link .



Published: January 31, 2019

The Russian Constitutional Court ruled concerning the recovery of legal costs incurred by the third parties in the case

A group of individuals filed a complaint with the Constitutional Court, seeking to recognize provisions of Article 112 of the Administrative Procedure Code as non-complying to the Constitution. The said article stipulates the right to recover attorneys' fees. The applicants claimed that the third parties engaged in the case shall not have the right to recover attorneys' fees.

On January 21, 2019 the Constitutional Court ruled, that the article in question complies with the Constitution. The Constitutional Court pointed out, that the third parties in an administrative case have the right to recover the incurred attorneys' fees, however, while deciding this issue the court shall establish the following:

  • the third party involved factually has borne the fees;
  • the third party's conduct during proceedings influenced the judgement;
  • incurred attorneys' fees were necessary and are recovered in reasonable frameworks;
  • the third party's participation in the case is a due and proper protection of his rights and interests;
  • the judgement in the case entails legal consequences for the third party;
  • attorneys' fees incurred by the third party do not only aim to prevent a plaintiff from protection of his rights and legitimate interests, or rights and legitimate interests of the others.
Obviously, if any of the circumstances mentioned above are not established, the court may reject a third party's claim to recover attorneys' fees, or seriously reduce the amount to be awarded.

The Constitutional Court also stated, that the right to recover attorneys' fees does not depend on, whether an interested person or a third party are engaged in the case at their own discretion, or under a motion of other participants, or by a court discretion.

The same approach to an issue of recovering attorneys' fees is applied in economic courts. The court also stated, that if the recovery of legal costs is not stipulated by law, a party is entitled to claim damages incurred during proceedings.

Specialists of «A.Zalesov & Partners» comment, that this approach of the Constitutional Court is also to be observed in appealing Rospatent decisions before the IP Court, where a party, in whose favour Rospatent took a decision in question, is not a co-defendant, but a third party. To learn more about the Ruling please follow the link.



Published: January 16, 2019

Dr. Aleksey Zalesov, Managing Partner, spoke at the meeting of the Scientific Committee of Rospatent

The Scientific Committee of the Federal Institute of Industrial Property and the Russian Patent and Trademark Office organized its regular meeting on December 25, 2018. Dr. Zhuravlev, Head of the International Cooperation Center of the Federal Institute of Industrial Property, made a presentation on the first results of the operation of the Hague System of registration of industrial designs in Russia, after it has been started earlier this year. Dr. Alexey Zalesov, Managing Partner of «A.Zalesov & Partners», member of the Committee, contributed to the topic as a co-speaker. To get more information on the meeting of the Committee follow the link link.



Published: December 16, 2018

Fashion industry is going to receive more effective tool for protection of designs in Russia

A new bill is now passing through the final stages of legislative procedure, which is going to introduce important amendments to the law regarding industrial designs protection. The referred amendments, if adopted, should introduce provisional protection for industrial designs similar to provisional protection of inventions. First, industrial designs applications can be now published on the applicant's request after formal examination is complete. Second, after the design is registered, the design owner can seek for monetary compensation from those, who infringed such a design from the date of the referred publication till the grant date. At the same time, after publication any person has a right to get access to the application documents. This step is done mostly in response to demands of the fashion industry, who needs more quick tools of protection of their IP, than they now have in Russia.




Published: December 16, 2018

Dr. Aleksey Zalesov, Managing Partner, contributed to Russian IP edition with an article «Application peculiarities of Russian patent system in the field of pharmaceuticals»

Dr. Aleksey Zalesov, Managing Partner of «A.Zalesov & Partners» Patent & Law Firm, contributed to the Russian IP magazine «Patents and licenses. Intellectual rights» (www.patentinfo.ru) with his article «Specific features of the Russian patent system in the field of pharmaceuticals», issue 9, 2018. Recent developments including issuance of a compulsory patent license in the pharmaceutical industry are discussed. There are almost no restrictions on obtaining a patent in the field of pharmaceuticals and methods of treatment in the current patent legislation of the Russian Federation. The level of requirements of patent examination on the disclosure of the invention, and patentability criteria of industrial applicability and inventive step as to pharmaceutical patent applications is still rather moderate. Meanwhile, a patent with a relatively broad scope of protection in the field of pharmaceuticals in Russia is quite easy to obtain.




Published: December 10, 2018

Significant amendments in procedural laws are to enter into force no later than by October 1, 2019

The procedural reform of 2018 introduced amendments into the Civil Procedural Code of the Russian Federation, Arbitration Procedural Code of the Russian Federation and Administrative Jurisdiction Procedural Code of the Russian Federation. Here are some of them.

  • Now, only persons "having a higher legal education or a degree in law" can represent parties in the court of law by power of attorney in a civil and arbitration litigation. An exception is provided for patent and trademark attorneys who are permitted to represent their clients in the court only in relation to IP disputes.
  • In civil and arbitration cases, order of enforcement will be issued only at the request of the party. Cases when order of enforcement is issued for the recovery of money to the budget will be an exception.
  • A decision was made to set up structurally independent cassation and appellate courts in the system of courts of general jurisdiction (where the disputes with participation of individuals are considered). In total, 9 cassation and 5 appellate courts of general jurisdiction will be established.
This Federal Law enters into force starting from the date of the opening of mentioned above cassation courts and appellate courts of general jurisdiction in accordance with part 3 of article 7 of Federal Constitutional Law No. 1-FKZ of July 29, 2018, but no later than by October 1, 2019.




Published: December 6, 2018

A.Zalesov&Partners' team attended EPO conference on patenting blockchain

Maria Makhlina, Partner, and Anastasia Miheicheva, patent attorney, attended EPO conference on patenting blockchain on December 5, 2019. Participants of this event discussed the issues of patentability of related technical solutions, shared experience on drafting of patent applications in this field, discussed possible implications, which blockchain patents could have on society in future, as well as many other issues. For more information refer to EPO web-site.




Published: December 4th, 2018

Annual Conference of the Chamber of the Russian Patent Attorneys

XХIV Annual Conference of the Chamber of the Russian Patent Attorneys (www.palatapp.ru) took place in the City of Kazan on November 28-30, 2018. Dr. Aleksey Zalesov, Managing Partner of «A.Zalesov & Partners» Patent & Law Firm acted as a moderator of the round table «Patent Litigation Issues» during said Conference, and spoke to the topic «Prosecution History Estoppel in the Russian Patent Disputes». Anastasia Kirukhina, Trademark Attorney of «A.Zalesov & Partners» Patent & Law Firm attended the trademark section of the conference.




Published: November 28, 2018

The Nagatinskiy District Court of Moscow ruled in favor of A.Zalesov&Partners' Client in a trademark infringement case

A Client of «A.Zalesov & Partners» Patent & Law Firm, the company fischerwerke GmbH & Co KG, filed a lawsuit with the Nagatinskiy District Court of Moscow, claiming to stop FISCHER trademark infringement on the defendant's website, and pay monetary compensation for the infringement occurred. The defendant being an individual administered the website, where he placed the designations identical and confusingly similar to the plaintiff's trademarks for advertisement of goods homogeneous to those ones the plaintiff's trademark was registered. The court satisfied the claims forcing the defendant to stop using the disputed designations on the Internet, in advertisement and offers for sale. The court also awarded monetary compensation to the plaintiff (please refer to the case 02-5565/2018 at https://www.mos-gorsud.ru). The plaintiff was represented before the court by Vlad Ryabov, Senior Lawyer of «A.Zalesov & Partners» Patent & Law Firm.




Published: November 16, 2018

General Assembly of the Chamber of the Russian Patent Attorneys elected Dr. Aleksey Zalesov Vice-President of the Organization

On November 15, 2018 General Assembly of the Chamber of the Russian Patent Attorneys (www.palatapp.ru) elected Dr. Aleksey Zalesov, Managing Partner of «A.Zalesov & Partners» Patent & Law Firm, Vice-President of the Organization. Dr. Aleksey Zalesov previously served as the President of the Chamber of the Russian Patent Attorneys during two consecutive terms which is maximum according the Charter. The Chamber of the Russian Patent Attorneys is a public organization of patent attorneys, which major activity is aimed on assistance and development of patent attorney's profession in the Russian Federation and representation of the interests of the patent attorney's community before the Russian governmental organizations.




Published: October 27, 2018

Dr. Aleksey Zalesov, Managing Partner, contributed to the Russian IP edition with an article regarding wrong priority claiming

Dr. Aleksey Zalesov, Managing Partner of A.Zalesov&Partners, contributed to the Forth Issue of the Russian specialized IP magazine «The Patent Attorney» with his article «Validity Of A Patent With Wrong Priority Claiming in Russia» (in Russian). Neither Russian, nor Eurasian Patent Law does not stipulate any legal consequences for wrong indication of priority: neither sanctions for intentional wrong indication, nor possibility to correct this error, which leads to the fact that patents issued with such defects are difficult to challenge by third parties in some cases leads to ungrounded broadened patent rights in view of prior art. Due to this lacuna in the law, even in case RU PTO or the court afterwards considering patent validity agree, that the priority was wrongly claimed, does not have possibility to heal this omission of the expertise and to set up the right priority, or to include a prior art reference in the interval between the date of filing and the date of convention priority into consideration of the patent validity. The article discusses different possibilities of healing this lacuna in the law.




Published: October 15, 2018

A.Zalesov&Partners welcomes new team members

We are glad to welcome Anastasia Miheicheva, a patent attorney in the field of electronic engineering, and a lawyer Inna Oleynikova as our new team members.




Published: October 12, 2018

Dr. Aleksey Zalesov attended the conference «The role of a patent attorney in a knowledge-based economy» in Warsaw

Dr. Aleksey Zalesov, Managing Partner to A.Zalesov&Partners attended the International one-day conference «The role of a patent attorney in a knowledge-based economy» organized with participation of the Chamber of Polish Patent Attorneys taking place on October 12, 2018 in the Ministry of Enterprise and Technology. The participants discussed a role of a patent attorney being a bridge between business and technology and the challenges patent attorneys face in this role. We heartily thank our Polish colleagues for their kind invitation.




Published: October 10, 2018

A.Zalesov&Partners team attended 2018 AIPPI World Congress in Cancun

Irina Ozolina, Senior Partner, as a Secretary of the Russian Group and Dr. Natalia Samsonova, Partner, as one of the delegates attended 2018 AIPPI Wold Congress in Cancun to take part in the work of Study Committees and Plenary Sessions on preparation and adopting of AIPPI resolutions 2018. This year ended up in the resolutions regarding Registrability of 3D trademarks, Partial designs, Joint liability for IP infringement and Conflicting patent applications. We were glad to meet our friends and colleagues and to have a fruitful and interesting Congress as usual.




Published: September 19, 2018

A.Zalesov&Partners contribute to WTR Daily regarding an updated Recommendations of the Eurasian Economic Commission on inclusion of licence fees in customs value of imported goods

Irina Ozolina, Senior Partner to A.Zalesov&Partners, contributed to the September edition of WTR Daily regarding the latest updates in the Eurasian Economic Union customs legislation related to IP licensing. The article highlights the rules due to which trademark license fees should be included into the customs price of the goods imported into the countries of the Eurasian Economic Union, such as Armenia, Belarus, Kazakhstan, Kirghizia and Russia. Since the matter of adding trademark license fees to the factually paid price of the goods is often the matter of dispute between importers and the customs authorities, the referred Recommendations are of much help, since they contain some clear examples, when the fees should be included. The article in full can be read on WTR Daily, part of World Trademark Review, in September, 2018 at www.worldtrademarkreview.com.




Published: September 15, 2018

Vlad Ryabov, Senior Lawyer, contributed to the Russian civil law edition with an article on actions limitation

The Russian specialized edition «Civil Law» published an article of Vlad Ryabov the senior lawyer of A.Zalesov&Partners «Actions Limitation in Intellectual Property Disputes» (in Russian). The article covers some issues arising from situations when courts apply law provisions regarding limitation of actions in cases concerning IP rights infringement. In particular, the article sheds light on certain loopholes in provisions of Russian civil law concerning limitation of actions and how such problem are settled in court practice.




Published: September 4, 2018

The IP Court ruled in favor of A.Zalesov&Partners' Client in a trademark infringement case

The Court for intellectual property upheld the decision of the first instance court and the ruling of the court of appeal rendered in favor of our Client. The Court for intellectual property rights agreed with agreed with arguments raised by Plaintiff's representatives. In particular, the court agreed that the designation «ЦИМИЦИКЛИМ» (TSIMITSIKLIM) was confusingly similar to trademark «ЦИ-КЛИМ» (TSI-KLIM) (RU510846). The Plaintiff was represented before the court by Irina Ozolina, Senior Partner, and Vlad Ryabov, Senior Lawyer of A.Zalesov&Partners. The court case No. is А41-73714/2017.




Published: September 3, 2018

The IP Court ruled in favor of A.Zalesov&Partners' Client in a domain name dispute

The Court for intellectual property rights upheld the ruling of court of appeal rendered in favor of A.Zalesov&Partners' Client, although the defendant pleaded for his improper notification by the first instance court. Previously our lawyers represented interests of the claimant Arthrex Inc. in a trademark infringement action. Moscow City Arbitration Court ruled in favor of our Client and forced the defendant to stop use trademarks «arthrex» of our Client in a domain name arthrex.ru and to pay monetary compensation. The defendant filed an appeal against the decision of the Moscow City Arbitration Court asking to reinstate the term for filing the appeal. The defendant claimed that he was not served properly since he received neither a copy of claim nor court's rulings. However the court of appeal refused to reinstated the missed deadline and rejected the appeal. Having disagreed with the rendered ruling of the court of appeal the defendant filed a cassation appeal which was heard by the Court for intellectual property rights.

In the hearings regarding the cassation appeal of the defendant, our lawyers managed to prove that the defendant misbehaved, since he was duly notified about the court case under applicable laws and court practice. The court case number is A40-224389/17, the claimant was represented by the senior lawyer of A.Zalesov&Partners Vlad Ryabov.




Published: September 2, 2018

Dr. Aleksey Zalesov, Managing partner, participated as a speaker at the 9th China Annual Patent Conference (CPAC)

Dr. Aleksey Zalesov, Managing partner, participated as a speaker at the 9th China Annual Patent Conference (CPAC) which took place on August, 30-31 in Beijing, China. Dr. Aleksey Zalesov made a presentation on a topic: «Russian national patent or Eurasian patent procedure: pros and cons» on the session dedicated to effective foreign patenting organized under the auspices of the AIPPI.




Published: June 17, 2018

A.Zalesov&Partners team attended ECTA 37th Annual Conference in Athens

Maria Makhlina and Irina Ozolina attended ECTA 37th Annual Conference on June 13 — 15th to know more about current trends and changes in the European IP Law, meet old and new friends and colleagues and share knowledge and views regarding current IP laws and practice in Russia and Eurasian region. Fascinating networking and educational experience in the cradle of our civilization.




Published: May 29, 2018

A.Zalesov&Partners contributes to the new IP edition Global IP Matrix regarding patent litigation tips in Russia

The contribution highlights main issues that should be kept in mind while being involved in patent litigation in Russia. The article points out pros and cons of starting a multinational dispute in this jurisdiction, and brings forward some strategical thoughts to be considered before filing an action. The article discusses deadlines and contest of a warning letter, preliminary injunctions, in-court examination, and damages. The full version of edition can be found at www.gipmatrix.com.




Published: May 22, 2018

The Court ruled in favour of A.Zalesov&Partners' Client, although the counterpart pleaded for not being properly served

The Ninth Arbitration Court of Appeal upheld the first instance court's decision rendered in favor of A.Zalesov&Partners' Client, although the defendant pleaded for his improper notification by the first instance. Previously our lawyers represented interests of the claimant Arthrex Inc. in a trademark infringement action. Moscow City Arbitration Court ruled in favor of our Client and forced the defendant to stop use trademarks «arthrex» of our Client in a domain name arthrex.ru and to pay monetary compensation. The defendant filed an appeal against the decision of the Moscow City Arbitration Court asking to reinstate the term for filing the appeal. The defendant claimed that he was not served properly since he received neither a copy of claim nor court's rulings. In the hearings regarding the issue, whether to accept or to reject the motion to reinstate the term for an appeal, our lawyers managed to prove that the defendant misbehaved, since he was duly notified about the court case under applicable laws and court practice. The court case number is F40-224389/17, the claimant was represented by the lawyer of A.Zalesov&Partners Vlad Ryabov.




Published: May 11, 2018

The Court ruled in favour of A.Zalesov&Partners' Client in spite of the in-court examination results

A Client of A.Zalesov&Partners, a local manufacturer of municipal machinery, was sued by a local patent owner seeking for injunction, destroying of vehicles in dispute, and demanding monetary compensation for patent infringement in amount equal to full price of the vehicles sold out. The suit was based on the doctrine of equivalents, since both parties agreed that there was no direct patent infringement. A nominated by court expert found equivalency; thus, declared that the patent was infringed. A.Zalesov&Partners provided a bulk of evidence to prove that the expert's conclusions were erroneous and contradicting to the facts of the case. A cross-examination of the expert revealed discrepancies in the expert's position. At the same time, A.Zalesov&Partners declared that claims limitation period expired, and besides, the patent owner abused his patent rights by filing these claims. After more than one year consideration in the first instance, the Moscow City Arbitration Court ruled to reject the patent owner's claims in full.




Published: April 24, 2018

A court of appeal put an injunction against a food supplement infringing a trademark of a Client of A.Zalesov&Partners

A client of A.Zalesov&Partners filed a lawsuit with the Moscow Region Arbitration Court requesting that the defendant is forced to stop selling the food supplement «ЦИМИЦИКЛИМ» (TSIMITSIKLIM) as infringing the trademark «ЦИ-КЛИМ» (TSI-KLIM) (RU510846) and to publish the court's decision. Doubts in confusing similarity were raised by the fact, that both names are the derivatives from the word «Cycle» (TSIKL) in the Russian language; meanwhile, the original and infringing food supplements are providing modulating activity over women in the menopause.

The Court of First Instance and the Court of Appeal agreed with arguments raised by Plaintiff's representatives. In particular, both courts upheld the Plaintiff's arguments that the designation under dispute was confusingly similar to the aforementioned trademark. The court confirmed that the designations compared are similar to each other phonetically and graphically. The courts also pointed out that food supplement «ЦИМИЦИКЛИМ» (TSIMITSIKLIM) and «ЦИ-КЛИМ» (TSI-KLIM) (RU510846) provides similar biological activity and relate to the same price bracket so that consumers would likely associate the designations with each other despite the fact that their names differ semantically.

The court agreed with the Plaintiff's representatives that expert opinion provided by the Defendant does not prove the absence of the designations' similarity. The courts upheld the Plaintiff's argument that said expert opinion was based on non-applicable rules, and and that the opinion ignored the phonetic and graphic similarity of the designations compared. The client was represented before the court by Aleksey Zalesov, the managing partner, and Vlad Ryabov, a senior lawyer of A.Zalesov&Partners.




Published: April 24, 2018

IP Days in Russia: A-Z IP Contributes

Managing Partner Aleksey Zalesov presented the panel topic: "Enforcement of patents in Pharmaceuticals in Russia: Problems and Prospects" at a conference organised by the Russian Academy of Science's Institute of State and Law as a part of their «Intellectual Property XXI Century» International Forum.




Published: April 4, 2018

The Court ruled in favour of A.Zalesov&Partners' Client to stop trademark infringement and imitation of «Raffaello»

The Tverskaya Region Arbitration Court ruled to prohibit the manufacturing, selling, and marketing of «Mona Liza» pralines, which had been infringing trademarks protecting "Raffaello" packaging and thus causing confusion on the market. The Court also ruled to seizure and destroy the infringing goods at the defendant's expense. The decision followed a suit filed in the name of Soremartec S.A., a company that is part of the Ferrero Group. Irina Ozolina, a senior partner at A.Zalesov&Partners, and Vlad Ryabov, a senior lawyer, represented Soremartec S.A. in the case, court file number is А66-20963/2017.




Published: March 8, 2018

A.Zalesov&Partners retains MIP Patent rating in 2018

A.Zalesov&Partners confirmed its strong position in patent contentious work in Russia for 2018 due to Managing IP study «IP Stars Firm Survey 2018. Patent» published on March 4th. Managing IP ratings are based on scrupulous study of recent cases held by patent firms, interviews with peers and clients, and is considered one of the highly regarded and reliable source of information about professionals in intellectual property field. For more information please follow the link.




Published: March 6, 2018

Patent for method for improving the survivability of cast parts for freight wagon trucks is announced invalid by the Chamber for Patent Disputes on an action filed by A.Zalesov&Partners

A.Zalesov&Partners filed an invalidation action against patent RU 2412073 basing on three grounds: lack of industrial applicability, lack of novelty and lack on inventive step. Although the grounds may seem to be controversial, this controversy was caused by highly unclear terms in patent claims. Therefore depending on claims construction, A.Zalesov&Partners claimed that the patent should either lack industrial applicability, or novelty, or inventive step. During the hearings on March 6th the Chamber for Patent Disputes announced the patent fully invalid due to the lack of industrial applicability.




Published: March 2, 2018

Irina Ozolina contributes to WTR Daily regarding parallel importation court practice changes in Russia

The contribution highlighted issues raised by the Constitutional Court of the Russian Federation in its Ruling as of February 13th, 2018 No 8-P. In this Ruling, the Constitutional Court set up new limitations on the scope of claims that trademark owners can make against parallel importers. The Constitutional Court checked whether clause 4 article 1252 (the right to destroy infringing goods), article 1487 (the principle of national exhaustion of trademark rights) and clauses 1, 2 and 4 of article 1515 (the right of a trademark owner to demand to destroy trademark infringing goods and require compensation) of the Civil Code comply with the Constitution. Whether these legal rules should be equally applied to initially counterfeit goods and to parallel goods was also subject to the Constitutional Court's consideration. In practice, the new ruling enlarges trademark owners' burden of proof in parallel importation cases: they now must prove good faith in challenging parallel importation and prove that they suffered real damages from parallel importation. To seek for destroying goods, trademark owners must now prove that parallel goods do not comply with internal market requirements or safety requirements, thereby endangering public health and safety.




Published: February 27, 2018

The Court ruled to demand 2 000 000 RUR of compensation for trademark infringement and imitation of Raffaello

The Moscow City Arbitration Court ruled to prohibit manufacturing, selling and marketing of «Delice» pralines infringing trademarks protecting «Raffaello» packagings and causing confusion on the market. The decision was takes as a result of consideration of the suit filed in the name of Soremartec S.A, a company of Ferrero Group. The Court also ordered that manufacturer paid compensation for infringement in amount of RUR 2 000 000 to the trademark owner. Irina Ozolina, senior partner to A.Zalesov&Partners, represented Soremartec S.A. in the case, court file number is А40-217842/17.




Published: February 23, 2018

Senior Partner of A.Zalesov&Partners Irina Ozolina attended the VI International Networking Congress for Lawyers in New York handled by the European Organisation for Cooperation of Lawyers (CECJ).

During the Congress participants from Italy, Russia, Ukraine and USA discussed current trends in international cooperation among lawyers, exchanged their views on practice development in their respective countries. Guests also visited the New York Supreme Court, where they could know more regarding court system in USA, federal and state criminal law, attended the hearings on pre-trial measures and heard an inspiring closing speech of Attorney General in the hearings on the merits on a criminal case. Also interesting was a guided tour to the United Nations Organisation. Additionally a seminar on US commercial law was of great value for participants, since it gave them better understanding on significant differences in state laws, which parties of transnational agreements on technologies exchange tend to choose.




Published: February 14, 2018

Patent relating to a weighing device has been announced invalid by the Chamber for Patent Disputes on an action filed by A.Zalesov&Partners

The Chamber for Patent Disputes has satisfied the opposition filed by A.Zalesov&Partners on behalf of a Japanese company relating to a weighing device. The patent as granted has been deemed invalid and a new set of restricted claims has been filed by the patent holder. Said new set of claims was sent to an additional search and examination. Final decision is to follow.




Published: February 12, 2018

IP Court reinstated an invalidated trademark because the parties settlement the dispute amicably

On February 7th 2018, the Intellectual Property Court agreed to cancel Rospatent decision due to settlement agreement of the parties, although confirmed that decision itself is not illegal. The Decision if Rospatent in question satisfied an invalidation action filed by Golden Lady Company, Italian manufacturer of tights, widely known on the Russian market. Rospatent cancelled ATTIVA trademark, registered for tights and underwear in the name of a company, that has nothing to do with Golden Lady Group, because Rospatent agreed that such registration would cause confusion among consumers who know ATTIVA tights manufactured by Golden Lady for quite a long time before the trademark was registered. The counterparty appealed this decision in early 2016, the disputed was reconsidered by the Presidium of IP Court twice and returned back to the first instance. In the end, when the case was being considered by the first instance for the third time, the parties managed to come to a mutually beneficial agreement, due to which if the trademark in dispute is reinstated, it is to be assigned to Golden Lady as initial and proper proprietor of the brand. The IP Court agreed to promote amicable settlement and send the case back to Rospatent to finalise the assignment. Golden Lady Company was represented as advised on the case by partners of A.Zalesov&Partners, Alexey Zalesov, Maria Makhlina and Irina Ozolina.




Published: February 7, 2018

Alexey Zalesov was re-elected as a President of AIPPI Russian National Group

On February 7th the regular members meeting of the Russian national group AIPPI took place. During the meeting members of the Group discussed current development of the group, approved reports of the President, Secretary and Revision Commission of the Group, and also approved the suggestion of the Council to enlarge the quantity of Council members from 7 to 9. Alexey Zalesov was re-elected as a President of the Group for the next two years term. We thank our colleagues for support.