On February 15, 2022, a foreign company «AstraZeneca AB» filed an invalidation action against grant of its own RU patent No. 2262507 which had already expired, referring to the fact that the invention contains features that had been missing in the original application materials, which is the legal basis for invalidating the patent. Since an expired patent can only be challenged by an interested party, «AstraZeneca AB» in support of its interest cited the burden of paying the purchase price for a statutory invalid patent purchased from another company in 2014.
On June 10, 2022, Rospatent rejected the patent owner’s claim. The company tried to challenge this decision in the Russian IP Court.
Although formally patent validity dispute is against Rospatent, in fact, it is a dispute between two different parties, one of which is on the side of Rospatent in court. When considering this case in Rospatent, the patent owner argued with himself, therefore, in fact, none of the parties to the dispute acted on the side of Rospatent in court. Due to the fact that the patent owner (which is also the party who filed the claim) filed an application for interlocutory injunctions having asked the court to prohibit Rospatent from considering the invalidation action of «KRKA, d. d., Novo mesto» company against grant of another patent, «KRKA, d. d., Novo mesto» entered the case as a third party, despite the fact that the Court usually does not involve into the consideration of disputes regarding invalidation of the decision of Rospatent parties who did not participate in its consideration in Rospatent.
The interests of «KRKA, d. d., Novo mesto» were represented by the «A.Zalesov & Partners» team led by Managing Partner Aleksey Zalesov and Partner Maria Makhlina.
Our principal insisted, among other things, that challenging the validity of one’s own patent after its expiration cannot be considered as fair play, and therefore «AstraZeneca AB» is not an interested party, as required by the provisions of Article 1398 of the Civil Code of the Russian Federation. Intervention of «KRKA, d. d., Novo mesto» into the dispute as a third party brought to the attention of the court the existence of possible ulterior motives on the part of the patent owner for filing such an invalidation action.
The Court of the First Instance dismissed the application and indicated that, given the lack of information in the case about the existence of disagreements between the initial and subsequent patent owners regarding the payment of the purchase price for the acquired patent, the real motive for challenging the patent is the desire of «AstraZeneca AB» to avoid invalidation of another company’s RU patent No. 2746132. «AstraZeneca AB» filed a cassation appeal with the Presidium of the IP Court, in which it asked to cancel the decision of the court of first instance and send the case for a new consideration to the Court of the First Instance.
During the consideration of a cassation appeal, «KRKA, d. d., Novo mesto» reiterated that the disputed decision of Rospatent is legal at least due to the lack of a legitimate interest on the part of the patent owner in challenging his own expired patent. That is, the party which filed an invalidation action and the patent holder are the parties to the dispute, which in this case coincide. If the parties coincide, there is no dispute.
On August 21, 2023, the IP Court upheld the decision of the court of first instance and rejected the cassation appeal of «AstraZeneca AB».