Lidings Intellectual Property practice lawyers have set a precedent in a dispute concerning patent extension.
Our team represents a large manufacturer of pharmaceuticals, as a claimant seeking to declare unlawful a patent extension granted by the Russian Federal Service for Intellectual Property. After the complaint was heard by the Constitutional Court based on a special request filed following a petition from the Lidings lawyers, the Intellectual Property Court’s Presidium accepted Lidings arguments and introduced a new remedy for patent extension disputes.
In its Decision dated 18 October 2021, the Court stated (link) that from now on, patent extensions and SPCs medicines may be challenged not only under Art. 198 of the Russian Commercial Procedure Code, but also through general court proceedings.
The client in this case is represented by Boris Malakhov, Partner and Head of the Lidings Intellectual Property practice, and Anna Kuminova, Associate.
Boris Malakhov In its reasoning, the Presidium of the Intellectual Property Court identified a gap in the legislation and specifically noted that rectifying it would ensure the exercise of the right to judicial protection guaranteed by Article 46 of the Constitution. In support of this ruling, the Court relied, among other things, on international law provisions – namely, the Eurasian Patent Convention and the Patent Regulations.
Anna Kuminova Thanks to the new interpretation of the procedure for challenging patent extensions, the requirement to comply with a 3-month term before filing a lawsuit has been removed and the burden of proof has been reallocated. The Intellectual Property Court retains its jurisdiction over this category of disputes.The court practice formed by the Lidings team has opened up new opportunities in patent disputes and indicates that patent battles both in the pharmaceutical and in other markets have entered a new round.
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