The decision of the Russian IP Court of November 30, 2022, on the case SIP-535/2021 is a significant step towards establishing the rules for filing divisional applications, given that the legislation does not contain a definition of what a divisional application is.
For several years now, a series of mutual patent disputes has been taking place between our principal, a large Russian manufacturing company, and a foreign manufacturer of similar equipment in different countries, including Russia. In order to strengthen his position in the Russian market, the director and owner of a foreign company, Mr. Pascal Impero, in 2018, applied with Rospatent to restore his «neglected» application for a patent for the invention «Road barrier fence», but, as a result of a long examination and a dispute over inventive step of his device, in 2019, he filed an application for a utility model for the same one, calling this application «divisional» and claiming the priority of an earlier filed application for an invention. As a result of this «division», the combination of independent and dependent claims of the application for a «divisional» utility model and the original application for inventions turned out to be exactly the same. Moreover, the independent claim of the «divisional» utility model turned out to be wider than in the original application. Taking into account gaps in legal regulation, Rospatent agreed with the applicant, established the claimed priority on an earlier application and issued a patent for a utility model.
We disputed grant of such a patent for a utility model, pointing out that the priority of the utility model application had been set incorrectly, and, therefore, the utility model did not meet the «novelty» patentability term. Rospatent refused to satisfy the objection, with which we did not agree and applied for the protection of the rights of our principal to the IP Court.
On November 30, 2022, the Court satisfied our claims, ruled to invalidate the decision of Rospatent and ordered Rospatent to re-examine the objection.
Aleksey Zalesov, Managing Partner of «A.Zalesov & Partners», Irina Ozolina, Senior Partner, and Julia Kolomytseva, Assosiate, represented the client in the court.