Maxima Legal has obtained an invalidation of a utility model patent protecting a type of the USA military equipment

Maxim Ali - Partner

In 2018 one of the manufacturers in the tactical equipment market patented the technology of laser cutting for unloading vests of the MOLLE system. This technology was developed and patented earlier for the USA Armed Forces; the patentee is First Spear company. In Russia such system is well-known and already widely used by manufacturers in several regions. The vests with the system are used both by the military and the police, as well as by tourists and sportsmen who can freely buy such vests in retail stores.

The Russian manufacturer of equipment for the military, Alfa Company, appealed to Maxima Legal to defend its right to use the system well-known in the military sphere. According to Alfa found out, its competitor received a patent for this system. The presence of the patent allowed the competitor to monopolize the market of equipment using the MOLLE laser cutting and threatened Alfa and other market participants with potential legal proceedings, penalties, as well as risks of administrative or criminal liability.

As part of the dispute, Maxima Legal provided evidence that this useful model has long been used by many companies in the industry and cannot be patented in the interests of a particular manufacturer. In fact, the patented model limits the use of a system known in the military field and protected by the USA patents.

“Even if someone in the market managed to patent a previously known solution, it does not mean that other players cannot challenge the patent, referring to the lack of novelty in the solution,” – commented Maxim Ali, Head of Intellectual property and Information technologies (IP/IT) practice at Maxima Legal.

In order to strengthen the client’s position, Maxima Legal experts collected materials confirming the popularity of the MOLLE laser cutting system from independent equipment manufacturers from different regions of Russia, including Moscow, St Petersburg and Yekaterinburg.  The IP/IT practice team collected evidence that the patentee itself had used a useful model long before filing the application. In particular, samples of military equipment of various years, archive copies of sites containing catalogs and descriptions of equipment, the USA patent database and other documents were examined. Moreover, an interview with the General Director of the opponent company, confirming that the patented utility model protecting the well-known system, was found.

The collected evidence base allowed Maxima Legal to appeal to Rospatent (a Russian Federal Service for Intellectual Property) with an objection on invalidation of the Russian Federation utility model patent. The objections were considered by the   Chamber for Patent Disputes, as a result of which Rospatent made a decision to recognise the patent completely invalid.

Maxima Legal involved a patent attorney Boris Gerasin to defend the client in this case too. Boris noted: “The case is interesting because the opponent, having patented a well-known technology, by his actions jeopardised other active market players who had already produced products according to the specified useful model and since the moment the patent was granted were actually infringers”.

Maxim Tsegelnik, General Director of Alfa said: “Winning this patent dispute gives us confidence that the sale products with the MOLLE laser cutting will not turn into a claim against us by another Russian player in the future. We hope that healthy competition will be developed with the help of market instruments, without patent trolling and similar tricks».