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«Philip Morris Products» S.A. filed an invalidation action against the grant of a patent for an invention «electronic inhaler» which belongs to our client, a company — part of «British American Tobacco» Group. As a result, the client's patent was deemed partially invalid. The said decision was disputed in the IP Court and the court of the first instance agreed with our opinion on the infringement of procedural and substantive law, canceled the decision of Rospatent, and obliged Rospatent to re-consider the invalidation action. Rospatent and «Philip Morris Products» filed cassation appeals against that decision to the Presidium of the Court, which, by its ruling, canceled the decision of the first instance court and sent the case for a new consideration to the IP Court.

During reconsideration, the IP Court studied the recordings of all the hearings of the Board of Chamber for Patent Disputes (some of them last for several hours) and on August 06, 2021, invalidated the Rospatent decision in our favor again and ruled to return the invalidation action for a new reconsideration.

The case is noteworthy from a procedural point of view since when considering the invalidation action Rospatent made several procedural infringements and incorrectly applied the norms of the current law. The court also spoke on new legislation in respect of which there is no judicial practice, for example, on the possibility of converting a patent for an invention into a patent for a utility model when filing an invalidation action to the grant of a patent, if the claims have already been changed. Moreover, the court had to define again, to what extent the administrative body should comply with the established procedure for considering invalidation action and what is considered to be an infringement of this procedure and may lead to incorrect conclusions.

The client was represented in court by the partners of «A.Zalesov & Partners» Patent & Law Firm — Aleksey Zalesov, Irina Ozolina and Maria Makhlina.

For more details about the case please refer to the link.

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