Patent Extensions May Now Be Challenged Under Administrative Procedure

Federal law No. 386-FZ “On amendments to Article 1363 of the Russian Civil Code” under which Article1363 (5) of the Russian Civil Code is amended, was signed by the President on 7 October 2022 and will enter into force on 18 October 2022.

The amendments provide for the possibility to challenge extension of a patent related to a medicine, pesticide, or agrochemical (granting SPCs) by filing an opposition with Rospatent according to procedure set out in Article 1398 (2) of the Russian Civil Code if conditions for such patent extension, stipulated in Article 1363 (2) of the Russian Civil Code, have been violated.

Should such an extension be found invalid, the patent for the invention would expire at the end of a general term of an exclusive right (20 years).

As stated in the explanatory note to the draft law, these amendments are prompted by a legislative gap with respect to the grounds for challenging SPCs for inventions related to a medicine, pesticide, or agrochemical.

Provisions of Article 1398 (1) and Article 1363 (5) of the current version of the Russian Civil Code are not interconnected in relation to the possibility of challenging SPCs.

Clarifying the procedure for challenging patent extensions (granting SPCs) performed with violations would allow third parties to use invention after it has passed into the public domain, thus contributing to the stability of civil circulation.

The law logically continue the thinking line established by the Decision of 18 October 2021 in case No. SIP-461/2021 where the Presidium of the IP Court pointed out to this legislative gap. The company in this case was represented by lawyers of the Lidings Intellectual Property Practice.