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Extension of the Eurasian patent became available for patentees for not so long but already created some legal challenges for patent lawyers. For example, the problem of the impossibility of challenging the legality of the extension of Eurasian patents in national courts has recently become particularly acute and attracted the attention of experts (Aleksey Zalesov in the Russian local blog).

And finally, at the end of 2021 the Presidium of the Intellectual Property Rights Court by its Ruling as of November 22, 2021 explained the procedure for challenging by third parties the decision of the Eurasian Patent Office about Eurasian patents extension for Russia.

One of the Russian pharmaceutical companies was seeking for invalidation of a Eurasian patent extension for a pharmaceutical. The first instance terminated the proceedings on the case, considering that the Eurasian Patent Instruction set up an out-of-court procedure for settling disputes on the validity of the extension of Eurasian patents, while Russian courts have no jurisdiction over the decisions of the Eurasian Patent Office unless otherwise is stipulated by the Eurasian Patent Convention.

The Presidium of the Intellectual Property Court as a cassation overturned the ruling of the first instance and issued a very important precedent ruling, applying a systematic interpretation of the norms of patent, international and constitutional law.

The most important conclusions made by the Presidium:

1) The findings of the first instance court on the lack of competence of national courts to consider these disputes are based on the incorrect establishment of the hierarchy of legal norms.

The Eurasian Patent Convention is an international treaty, therefore its norms may prevail over the rules of national law. But the Eurasian Patent Instruction is not an international treaty, therefore its provisions do not have priority over the Constitution. The Eurasian Convention does not require, that an act of the Administrative Council of the EPO may exclude the possibility of challenging the validity of a Eurasian patent in a member-state. At the same time, the Presidium noted that the absence of judicial verification of the legality of the patent right would violate the public interests, which is unacceptable.

2) The administrative procedure established by the Instruction for challenging the extension of a patent in the territory of a particular state is not a mandatory pre-trial procedure, which means that the interested person can apply directly to the court.

3) The Eurasian Patent Office may not be a defendant or a third party in cases related to the validity of Eurasian patents, as well as in cases about their extension.

The Presidium noted that the Eurasian Patent Office, being an international intergovernmental organization, has rights, privileges, and immunities on the territory of the Russian Federation based on the Convention. And accordingly, having judicial immunity, it cannot be a defendant in this case. The courts have been applying this approach to the status of the Eurasian Patent Office for a long time, and it is considered well-established.

But proceeding from this, the Presidium pointed out that if it is impossible to challenge the decision of the Eurasian Patent Office in a Russian court, while judicial control over the legality of the patent extension is necessary, an appeal against an extension of a Eurasian patent should be filed as a suit against the patent holder.

The last year was rich on precedent decisions of the IP Court on patent extension: please refer to our blog.