Rospatent has satisfied the objection to the grant of a patent for a sealed pump module used in the oil and gas industry. This patent was declared fully invalid due to non-compliance with the inventive step condition of patentability, and the patent holder was denied the opportunity to convert the patent into a utility model patent.
The client contacted «A.Zalesov & Partners» Patent & Law Firm after receiving Rospatent's decision to invalidate his patent. When challenging this decision in the Intellectual Property Rights Court, «A.Zalesov & Partners» Patent & Law Firm team managed not only to declare Rospatent's decision as illegal, but also to restore the patent without sending the specified decision for review to Rospatent.
Two cassation appeals were filed against the decision of the The Russian IP Court at once: one from Rospatent, the other from a third party.
«A.Zalesov & Partners» Patent & Law Firm team managed to defend the legality of the decision issued by The Russian IP Court and preserve the validity of the patent.
The Presidium upheld the decision of The IP Court and dismissed the cassation appeals of a third party and Rospatent. Taking into account the rules for assessing the «inventive step» patentability condition, «A.Zalesov & Partners» Patent & Law Firm team drew the court's attention to a number of technical features of the patented invention, namely, the complexity of the patented solution and the achievement of several technical results by overlapping sets of features, successfully proving their novelty and impact on the stated technical results.
This case is one of the few where The Russian IP Court overturned Rospatent's decision. The client was previously represented by other patent attorneys at Rospatent, and when challenging the decision in court, «A.Zalesov & Partners» Patent & Law Firm team had to take into account the arguments and conclusions that were already voiced on behalf of the client. The IP Court also ordered Rospatent to restore the patent without sending the case for a new review to Rospatent. Such decisions are extremely rare and contribute to the development of the case law on judicial review of Rospatent's decisions.
Moreover, the maintenance of the patent was extremely important for the client due to the value of its development for the oil and gas industry, as well as the existence of a dispute over infringement by competitors regarding the patented technical solution.
The client's interests in the dispute were represented by Aleksey Zalesov, Head of the Intellectual Property Practice, Maria Makhlina, Partner of the Intellectual Property Practice, and Ivan Istomin, Patent Attorney.