On 29 May 2024 the Supreme Court of Russia adopted a large overview of the court practice clarifying many practical aspects of the substantive law and those of the procedure, of the different areas of law. Among those, there is a specific issue that should be interesting to IP practitioners and IP owners, especially to those who participate at the quasi-trial IP prosecution related disputes, normally heard at the PTO in Russia.
Based on the paragraph 2 of Article 1248 of the Civil Code, expenses for dispute incurred by the winning party in a prosecution-related PTO dispute are subject to compensation by the other party to the dispute. This rule also defines the composition of these expenses. This rule of the Civil Code is as new as January 2024.
PTO decisions in these prosecution related cases might be further appealed at the specialized IP Court.
This new overview of the court practice clarifies that if there is a separate dispute regarding the reimbursement of the related expenses incurred at the PTO hearings level, including their composition and amount, i.e. if this expenses related dispute is arisen before the PTO decision is appealed, or if it is not appealed at all, the new overview of the court practice clarifies that the party's claim for reimbursement of relevant expenses is subject to consideration by an Commercial court in compliance with the general territorial jurisdiction rules. This means that, according to the general procedural rules, these claims should be brought at the venue of the defendant. If the defendant is not located in Russia, relevant claim might be brought at the venue where the property of the defendant is located. If it is not possible to establish the venue according to the general rules, e.g. if neither the defendant or its representative office, nor the property of the defendant is located in Russia, the claim might be brought at the Commercial Court of the Moscow Region.
It is also clarified that relevant expenses-related judgments, if any, can be appealed at the IP Court as the court of the third instance (cassation instance).
The party making a claim for reimbursement of expenses must prove the fact of their incurrence, as well as the connection between the expenses incurred and the dispute heard by the PTO with its participation. If the PTO decides that the parties are supported in part, the court makes a decision on compensation expenses in proportion to the volume of the satisfied claims. Wherein the court takes into account the extent to which patent claims are retained in a new patent in comparison with the challenged patent (how many claims of the patent claims are retained) and in relation to what quantity of goods (services) legal protection of the trademark has been preserved
If a Commercial court becomes aware of the PTO decision being challenged at the specialized IP Court, then the separate proceedings for reimbursement of expenses are subject to suspension until entry into force of the judicial act of the IP Court.
If the IP Court recognizes the PTO decision unlawful and delivers relevant ruling, the dispute over the protection of intellectual rights is considered as resolved in favor of the party that challenged this PTO decision at court. A judgment on reimbursement of expenses that has come into effect and adopted before the PTO decision was recognized unlawful by the IP court, may be revised on the basis of the review of a judicial act on new or newly opened circumstances.
Before this new overview was adopted, practically, these quasi-trial expenses issues could only be arisen within the PTO decision appellate proceedings heard at the IP Court. Both practice and legislation have been remaining vague as to the possibility of claiming these expenses without appealing against the PTO decision. Thus, this new overview clarification is aimed at mitigating the lack of both legislative and practical solutions in this area.
In the absence of practice, it is not yet clear, how exactly several expenses-related different proceedings regarding same substantial disputes will be coordinated at different stages. We will monitor relevant practice and we will address the development of this in our further publications.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.