Maxim Ali has commented on the position of the Supreme Court in a dispute over exclusive rights

The Supreme Court of the Russian Federation overturned the decisions of three lower courts and sent for re-hearing a case an intellectual property case. The court ruled that the previous decisions were based on an erroneous understanding of the findings of an expert’s report regarding a patent and the contents of the formula. The higher court ruled that the use of only certain features of the utility model without the consent of the patent holder did not violate the patent holder’s exclusive right.

Commenting on the findings of the Supreme Court for Advokatskaya Gazeta, Maxim Ali, Head of the IP/IT Practice at Maxima Legal noted that patent disputes are not as common as copyright or trademark disputes, largely because the effective management of such disputes requires a sufficiently serious evidence base, including expert reports, and this affects the cost of such proceedings. “In addition, the use of patented solutions until 2015 did not lead to damages but only allowed for the recovery of losses. This can explain the recent increase in patent disputes; when it became easier for claimants to formulate and justify their claims for damages”, Maxim explained.

“The scope of legal protection of a utility model is determined by the formula. For a breach to be recognised by a court, each feature of the patent formula must be used by the defendant – it is not sufficient for just one attribute to be used” Maxim noted. He pointed out that the courts, for some reason, ignored the fact that the utility model formula significantly changed after an out-of-court examination, therefore the conclusion submitted by the claimant became irrelevant (and at least, no judicial examination was carried out). “In such a situation, sending the case for re-examination seems to be a well-founded decision”, concluded Maxim Ali.

To read the full article (in Russian), please see the Advokatskaya Gazeta website >>>