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The cassation instance ruled in favor of «A.Zalesov & Partners» having cancelled a judicial act contrary to the interests of the client and having forwarded an invalidation action against grant of a patent for reconsideration.

The second complex and long dispute on the legality of issuing a patent for an antidiabetic medication completed in favor of our client - KRKA, d.d., Novo mesto.

On October 23, 2023, the Presidium of the Intellectual Rights Court adopted an extremely important decision regarding case No. SIP-552/2022, which recognized Rospatent’s long-term approach to the rules for filing divisional applications as erroneous, and also pointed out the inadmissibility of double patenting.

The validity of RU Patent No. 2746132 and the legality of its extension were also disputed by such companies as Akrikhin, Geropharm, Severnaya Zvezda, Kanonpharma and some others.

In 2021, «A.Zalesov & Partners», on behalf of the client, were one of the first parties to file an invalidation action against grant of RU Patent No. 2746132. Since the patent application was filed after issuance of the patent for the initial application in 2008, the client legally considered that priority could not be established based on the filing date of the initial application (2002), and, therefore, the invention does not meet the «novelty» patentability term. Moreover, the issuance of RU Patent No. 2746132 became a double patenting of an invention for which RU Patent No. 2337916 had previously been issued.

Despite this, Rospatent refused to invalidate a patent issued as a result of a «cascade» of applications with sequential division of one application from another, citing the fact that priority for a divisional application is established by the filing date of the initial application, but the possibility of filing a divisional application depends on the issuance of the patent not on the initial, but on the previous application. That is, in the opinion of the patent owner and the Patent Office, a divisional application may have two initial applications.

The department also considered it legal to register two patents for identical inventions subject to early termination of the first of them, thereby confirming the admissibility of such double patenting.

Thus, a situation arose in which two identical inventions were registered in the State Register of Inventions of the Russian Federation: under a RU patent, which had passed into the public domain, and under a RU patent, which is currently valid and validity of which has been extended.

This led to the fact that for a number of pharmaceutical companies, including our client’s company, the ability to produce and put into circulation generic medications using the pharmaceutically active ingredient dapagliflozin was limited, since the illegal issuance and extension of a patent delayed the expiration of the patent from 2023 to 2028.

The court of first instance agreed with Rospatent and left the client's demands unsatisfied.

However, the Presidium of the IP Court overturned the decision of the court of first instance, having given an important judicial interpretation to both the concept of «initial application» and the provisions of Article 1383 of the Civil Code of the Russian Federation, and sent the case for reconsideration to Rospatent, taking into account the position expressed in the court decision and the correct priority date established for RU Patent No. 2746132 - according to the date of filing this application with Rospatent in 2010.

Thus, the cassation court in the case under consideration upheld the position of our client and, referring to the norms of the Civil Code of the Russian Federation, the Paris Convention for the Protection of Industrial Property, and the Patent Cooperation Treaty, confirmed that there can be only one initial application, which is the application from which primary division has been made. It is against this application that the filing date is established and priority is claimed over the divisional application.

The court also indicated that in cases not provided for by law, inventions that have passed into the public domain cannot resume their legal protection.

The client was represented in this dispute by partners Aleksey Zalesov, Maria Makhlina, Irina Ozolina, as well as a team of associates, including Darya Kushnarenko.

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