Recently the Russian Supreme Court has taken a very controversy Ruling, which entailed an intensive discussion among IP law professionals. This is a second cassation ruling in a row of controversial decisions of different instances in the case, which started in a routine way, and promised nothing interesting in the beginning.
Rospatent invalidated an invention patent RU 2588634 in full due to insufficiency of disclosure. In particular, Rospatent stated, that examples given in the patent specification did not confirm the possibility of achieving the claimed technical result.
Having disagreed with said Rospatent's decision, the patent owner filed an appeal with the IP court. The first instance court satisfied the patent owner's appeal and invalidated Rospatent's decision. The court pointed out, that obvious technical errors in the patent documentation shall not entail such consequences as a patent invalidation in full and may be corrected in the order stipulated by law. The first instance court referred to clause 2 of Article 10 of the Patent Law Treaty. The first instance court pointed out, that the rights and legitimate interest of the patent owner were infringed by Rospatent, since the patent owner did not have an opportunity to correct obvious errors of his patent application during a formal and substantive examination. The court clarified, that an applicant should have at least one possibility to amend the documentation of his patent application documents including specification, and the patent owner reserved such a right, since Rospatent had failed to send a respective request (office action) to him during a formal and substantive examination.
However, while considering the case in the cassation instance, the Presidium of the IP Court reversed the judgement of the first instance court. The Presidium of the IP Court stressed, that during consideration of invalidation actions in the Chamber for Patent Disputes only the claims can be amended, but not the patent specification.
The Presidium of the IP Court also held, that amending the claims of invention by adding features from the specification would result in creation of a new object, which did not benefit initial protection by the patent in question. To Presidium's opinion, it would abuse rights and legitimate interest of the third parties, which properly used the object, previously not protected by the patent. The Presidium of IP court stated, that the rule stipulated by clause 2 of Article 10 of the Patent Law Treaty can not be applied directly in part of establishing the possibility to amend claims of an invention.
On January 22, 2019 the Russian Supreme Court ruled (Ruling № 300-КГ18-19429) to upheld the judgment of the first instance court and to reverse the Ruling of the Presidium of the IP Court. The Supreme Court agreed with the arguments of the first instance court and pointed out, that during consideration of an invalidation action in the Chamber for Patent Disputes the patent owner may amend both the claims and the patent specification. The Supreme Court also stated, that clause 2 of Article 10 of the Patent Law Treaty is a legal rule for direct application. For more information please follow the link.
The specialists of «A.Zalesov & Partners» Patent & Law Firm as well as most of patent specialists in Russia are looking forward to see further development of the case before the Presidium of the Supreme Court as a supervisory instance, since the above Ruling overturns the current stable practice regarding possible patent amendments during invalidation procedure.