Patent Litigation in the Russian Federation: Overview

National legislation relating to patents and patent litigation includes:

Patent rights protect all types of inventions, including those related to the pharmaceutical industry. Therefore, pharmaceutical patents are regulated by the same laws as other patents. However, there are certain exemptions that apply to pharmaceutical patents under Russian law.

As for software, while the legislator believes that software should be protected by copyright, the practice of the Russian Federal Service for Intellectual Property (Rospatent) confirms that patents can also be obtained for software.

The patent treaties ratified by Russia include the:

Patent litigation before the Russian courts is the only way to enforce in Russia IP rights arising from:

Under Russian procedural law, patent infringement actions must be brought before state commercial courts (arbitrazh), which are not specialised patent courts. Since 2013, there has been a specialised Russian IP court that considers:

The Russian courts cannot assess the validity of the patent themselves and are bound by the decision of Rospatent or the EAPO to grant the patent. Russian patent invalidity proceedings for both Russian patents and Eurasian patents are considered by the Chamber for Patent Disputes, an administrative institution under Rospatent. A patent invalidity action can stay patent infringement proceedings. Appeals against the decisions of the Chamber for Patent Disputes on patent invalidity cases are considered by the Russian IP court.

Russia participates in the EAPC. The Russian courts have jurisdiction over claims concerning the registration and infringement of any Russian part of a Eurasian patent .

If a claim involves an international or cross-border element, the jurisdiction of the arbitrazh courts is determined based on Articles 247 and 248 of the Arbitrazh Procedural Code. The arbitrazh courts have jurisdiction over:

Russian courts have exclusive jurisdiction over cases concerning the registration of Russian patents.

The judges considering patent cases usually do not have a technical background.

Russia has a bifurcated system. Patent infringement and patent invalidity actions must be brought in separate proceedings, as these disputes are considered by different courts and according to different procedural rules (see Question 2). A valid patent cannot be deemed unenforceable, except when a patent holder abuses an exclusive right.

While specialised Russian patent lawyers admitted to act before the Russian courts are the best choice for patent infringement proceedings, a representative in patent invalidity proceedings before the Chamber for Patent Disputes can be a registered patent attorney with relevant technical expertise. In the proceedings before the Russian courts, the judge must also check that the legal representative has a diploma in law.

The official language of proceedings before the Russian courts and Chamber for Patent Disputes is Russian or an official language of a member of the Russian Federation. Parties who do not speak Russian can file a motion to appoint a translator.

Russian courts are not bound by decisions of other courts (if there is no collateral estoppel, see Question 26) but in practice such decisions are taken into account. The opinions of foreign courts can also be taken into account if the applicable law is foreign and the court must establish the meaning of foreign law rules. The opinions of international bodies can be taken into account when a court applies the rules of an international treaty.

Patent infringement generally occurs when an infringing product has been introduced into civil circulation or a patented method was performed by a defendant. The use of the patent in the infringing product or in the patented method must be proven.

The following actions constitute the introduction of the patent into civil circulation:

The doctrine of equivalents is applied, but not sufficiently developed in Russian legislation and case law.

There is no legal definition of the concept of "equivalent feature" and no criteria for how to assess whether features are equivalent. The limited legislative provision is Article 1358, paragraph 3 of the Russian Civil Code, under which patent infringement occurs when a product contains, or a process involves, each feature of the invention stated in an independent claim contained in the patent claims, or a feature equivalent to it that has become known as such in the prior art before the patent priority date.

Courts based on the opinion of experts appointed by the courts decide on equivalence. Court practice regarding the doctrine of equivalents is not extensive and is still inconsistent. The doctrine is sometimes criticised as compensating for shortcomings of patent claims.

In patent infringement cases, the claimant bears the burden of proving that the infringement took place. Claimants are entitled to request statutory damages (of an amount not higher than set out by law) without having to prove the damage incurred.

The courts can request the parties to disclose evidence, provided that a party to the dispute files a motion to that end (that is, the judge acts as a fact finder).

Russian legislation does not expressly refer to contributory infringement or inducement of infringement. However, in the last couple of years, there have been various attempts to develop unusual claim constructions, and the concepts of contributory infringement or inducement of infringement may also well be tested in the near future.

The most common defence is filing an invalidity action against the patent (see Question 9). Other defences include:

The courts generally apply the estoppel principle, which prevents a party from contradicting its own statements or actions, including in patent cases. Russian law does not explicitly recognise the principle of file wrapper estoppel (that is, a principle that stops the applicant from denying in litigation a construction they had asserted during prosecution). When considering patent infringement claims, the courts may take into account the changes made to a patent during the examination and invalidity proceedings.

There is no separate patent-ineligibility defence for abstract claims or claims to natural phenomena, but this can be used in an invalidity claim.

There are no specific defences regarding standard essential patents (SEPs).

A patent can be challenged at any time during its validity in full or in part based on the following grounds:

(Article 1398, Russian Civil Code.)

The burden of proof is on the party claiming invalidity.

Patent infringement and patent invalidity actions must be brought in separate proceedings. The Chamber for Patent Disputes under Rospatent decides on patent invalidity disputes (see Question 2).

A patent can be partially invalidated or transformed into a utility model (if the utility model patent protection period has not expired) (Article 1398, Russian Civil Code).

It is possible to amend patent claims during patent proceedings. In addition, a patent owner can apply to transform an invention patent into a utility model patent during patent invalidity proceedings (Article 1398, Russian Civil Code).

A valid patent can be deemed unenforceable on a motion by the patent owner or if annuity fees are not paid (Article 1399, Russian Civil Code).

An inventor or patent holder can sue an infringer (Article 1406.1, Russian Civil Code).

Generally, a co-owner is entitled to bring a patent infringement action (Article 1229, Russian Civil Code).

Transfers of rights under agreements on the use of registrable intellectual property (IP) (such as patents) must be registered for the transfer of rights to be valid (Article 1232, Russian Civil Code).

An exclusive licensee can protect the rights granted by its exclusive licence and obtain all remedies available to the patent holder (Article 1254, Russian Civil Code).

A non-exclusive licence is subject to state registration. However, a non-exclusive licensee does not have a right to bring a patent infringement action. In practice, a non-exclusive licensee can participate in court proceedings as a third party.

A distributor does not have a right to bring an infringement action for a patent covered by a distribution agreement. A distribution agreement is not subject to state registration. In practice, a distributor can participate in court proceedings as a third party.

Proceedings to obtain a declaratory judgment are not available. The invalidity of a patent is established following an invalidity action (see Question 2).

Any person, legal entity, individual entrepreneur or government body whose activities infringe patent rights can be sued for patent infringement.

A company itself is liable for patent infringement caused by the actions of its managers and employees. There are several statutory cases in corporate and bankruptcy legislation in which managers may be personally liable for the patent holder's damages.

A person who exercises actual control over a company, including the ability to determine its actions and to give instructions to the company's corporate bodies, is liable for any economic loss suffered as a result of a failure to act in the best interests of the company and to exercise actual control reasonably and in good faith (Article 53.1, Russian Civil Code).

There is also a special regime of personal liability under bankruptcy legislation and applicable to cases of malicious management resulting in the company's failure to perform its obligations (including the obligation to recover damages in patent infringement cases).

An interested party can join court proceedings as a co-defendant, co-claimant or third party. Defendants can be changed during proceedings where it is established that the claim was filed against the wrong defendant, or in the case of succession.

An arbitrazh court of first instance can, on its own initiative, add a person as a defendant if federal law provides for the mandatory participation of a person as a defendant, as well as in cases arising from administrative and other public legal relations. Third parties not claiming independent claims can intervene in the proceedings at the court's discretion (Articles 46 and 51, Russian Arbitrazh Procedural Code).

A patent holder can file a civil claim against a patent infringer for a remedy (see Question 31 to Question 35).

Criminal proceedings can be initiated by the criminal authorities (such as the police) in the case of patent infringement if the damage is considered significant.

The use of an invention, a utility model, or an industrial design without the consent of the inventor or applicant, before the official publication of information about them, and the illegal acquisition of inventorship or co-inventorship, if these acts have caused damage to a person, are subject to the following penalties:

(Article 147, Criminal Code of the Russian Federation.)

The same offences committed by a group of persons acting in concert or by an organised group are subject to the following penalties:

Patents cannot be included in a customs registry of IP objects. Patent border measures for patents are not available in Russia.

A notice must be sent before commencing patent infringement proceedings if damages or statutory damages will be claimed (Article 1252, Russian Civil Code).

The courts can issue decisions that are expected to be enforced abroad. In practice, the enforceability of these rulings is more problematic than for arbitral awards (since there is no all-round international treaty such as the UN Convention on the Recognition and Enforcement of Foreign Arbitral Awards 1958 (New York Convention)). A claimant will rarely rely on the prospect of enforceability when considering a case strategy.

The law applicable to patent infringement disputes is Russian law, since they are concerned with Russian or Eurasian patents. Russian law does not provide for a party's right to claim a declaratory ruling of non-infringement, and therefore the blocking effect of "torpedo" actions is not recognised.

Under Articles 33 and 27 of the Arbitrazh Procedural Code, patent invalidity disputes are non-arbitrable. If there is a valid arbitration agreement between the parties and the subject matter is not concerned with patent invalidity, the case can be considered in arbitration.

The parties are free to refer patent disputes to any arbitral institution. The WIPO Arbitration and Mediation Center is specialised in IP issues, and parties therefore often use this venue. In addition to international arbitration institutions, Russian parties use domestic arbitration institutions.

Other ADR methods can be used if there is a special agreement between the parties or a special clause included in the relevant contract. In addition, the parties to the court proceedings can agree to opt for ADR when the court proceedings do not appear to be efficient. In such a case the parties to the court proceedings ask the judge to stay the proceedings or to postpone the proceedings until the ADR proceedings are over.

There is no prohibition on claiming both patent infringement and unfair competition. To prove unfair competition, the competent bodies must prove the elements of unfair competition, as follows:

Therefore, the patent holder must prove additional facts compared to a civil patent infringement case.

Under Article 10 of the Federal Law on Protection of Competition, the rules prohibiting the abuse of dominant position are not currently applied to IP owners.

Anti-trust legislation does not contain specific provisions on SEPs.

Patent infringement disputes are considered by courts under standard rules. Patent infringement cases based on commercial relations are considered by the state commercial courts (arbitrazh), while cases involving individuals are heard by the courts of general jurisdiction.

Proceedings before the first instance court include a preliminary hearing, during which the court establishes whether the parties to the disputes have been properly notified of the matter. The first hearing on the merits is then scheduled. The number of hearings depends on the complexity of the case. First instance court hearings address the following matters:

Once all the necessary evidence is submitted, the evidence collection stage is completed. The parties present their oral pleadings one final time, and have a right of reply. Once this stage is completed, the court deliberates and issues a decision.

According to established practice, the courts accept the following written evidence:

All overseas evidence must be translated into Russian, notarised and legalised.

As current court practice shows, witness evidence can be accepted by the courts in a limited number of cases. For example, witness evidence suffices in work-for-hire cases. However, the courts reject witness evidence if it is not supported by other written evidence.

Witness statements can be provided in written form or given in person, in accordance with the procedural rules on conservation of evidence. Cross-examination of witnesses is generally not common in Russia, although it is formally possible.

To clarify issues that require special expertise, the court will appoint an expert on the motion of a person participating in the case or with the consent of the persons involved. If the report is prepared by a specialist outside the court proceedings, it is considered by the court as written evidence submitted by a party.

Experts are usually appointed by the courts in patent infringement cases, as judges usually lack a technical background.

Technical appraisals conducted by third-party appraisal institutions or experts appointed by the court play an important role in the determination of patent infringement. The parties can provide the court with a list of expert candidates (individuals and institutions) for consideration.

Cross-examination of experts is very common.

Evidence obtained during a criminal procedure is admissible in a civil patent infringement case derived from the criminal case. Under the collateral estoppel principle, the court is bound by a valid decision of the court that first examined the case on questions of evidence and fact.

The collateral estoppel principle is also applied in criminal cases, with an exception in relation to the presumption of innocence. For example, a criminal court cannot consider as proven the guilt of a person who has not previously participated in a criminal procedure.

The admissibility of evidence from other civil proceedings depends on the merits of the case. The collateral estoppel principle (see Question 26) is only applied in cases where the parties and the legal arguments are similar.

A party must provide evidence of the facts on which it relies. Before the beginning of a trial, the claimant must indicate all the evidence in a claim forwarded to the court and defendant.

There are no discovery proceedings before the Russian courts. The evidence of patent infringement must be provided by the claimant.

Courts can require parties to submit evidence on request of a party involved in a case (for example, if the evidence cannot be obtained independently by that party).

Exceptionally, the court can assist the claimant in the collection of evidence, where the claimant proves that the legal routes for obtaining the evidence have been exhausted.

For claimants in infringement or invalidity cases, the level of proof required is a "high probability of invalidity or infringement".

There are no official statistics on the amount of cases resolved at a pre-trial stage. The Russian courts always encourage the parties to settle the case once the claim is filed. In accordance with Russian law, the potential claimant usually serves a potential defendant with a warning letter a month before the claim is filed.

There is no fast-track procedure in patent infringement or patent invalidity cases (Article 227, Arbitrazh Procedural Code).

Russian law does not contain any rules on the parties' right to agree on a binding timetable.

Civil proceedings can be delayed under the conditions envisaged in the procedural legislation or by a motion to delay proceedings filed by one or both parties.

Proceedings can be delayed for a period not exceeding ten days in the following situations:

The courts will delay proceedings for up to 60 days on application from both parties if they are seeking assistance from an intermediary (for example, a mediator) in an attempt to settle the dispute.

The court can delay the trial on application from one party where the court recognises the reasons for non-attendance by the party or their representative to be valid, or if it is required to submit additional evidence.

Court proceedings can also be delayed up to a month to eliminate circumstances that provide the basis for the delay (for example, when an expert is involved for the purpose of providing explanations).

If a claim or petition is accepted by the court and is not considered for a long time, the interested parties can apply to the presiding judge of the court to accelerate the case.

An application to accelerate civil proceedings is considered by the presiding judge of the court within five days from receipt. After consideration, the court establishes the term of the case and/or indicates the actions that must be taken to expedite it.

Under the Arbitrazh Procedural Code, the courts can order a person to pay all procedural costs for abusing procedural rights or not complying with procedural duties. This also applies in cases of abuse leading to delays in a trial.

In addition, the courts can refuse to grant a petition if it is not promptly and diligently filed and is clearly aimed at delaying the trial.

During court proceedings, a party can file a motion asking for interim measures. These are urgent measures to secure a claim or property interests of the applicant. These measures are taken by the court if failure to take the measures may make it difficult or impossible to enforce the court's decision. In addition, a motion on preliminary interim measures can be filed outside a trial to secure the property interests of an applicant before the claim is filed with the court. If the injunction is granted, the claimant has up to 15 days to file a claim, otherwise the injunction is recalled. The preliminary injunction is only available in the Russian state arbitrazh courts (that is, in disputes between legal entities and/or entrepreneurs).

Search and preservation/search and seize orders are not available in civil proceedings in Russia. The only method of discovery is to ask the court to obtain evidence from the defendant.

Under Article 99 of the Arbitrazh Procedural Code, preliminary injunctions can be requested by a party that plans to file a claim with the court.

It is however extremely difficult in practice to obtain preliminary injunctions in patent disputes, partly due to the lack of clear criteria for to guide the court on when to grant them.

Ex parte injunctions are not available. If a motion for a preliminary injunction is granted, the claimant must send a cease and desist letter to the defendant within 15 days of grant of the preliminary injunction (if circulation of a cease and desist letter is required). The claimant must then file a claim within five days from when the term for answering the cease and desist letter expires.

When circulation of a cease and desist letter is not required, the claimant must file a claim within 15 days of grant of the preliminary injunction.

Russian judges are currently reluctant to grant preliminary injunctions, deeming them to be an unsatisfactory substitute for permanent injunctions.

An arbitrazh court can grant interim measures in support of main proceedings in another jurisdiction if it has effective jurisdiction based on the:

When deciding on interim measures, the arbitrazh court must verify that the foreign court has jurisdiction to consider the dispute on the merits and that the exclusive competence of Russian arbitrazh courts is not violated (Resolution of the Plenum of the Russian Supreme Court No, 23 of 27 June 2017 "On consideration by arbitrazh courts of economic disputes cases arising from relations complicated by a foreign element").

Protective writs are not available in Russia.

A party to a court procedure or any person that suffers damages can file a motion asking for a preliminary injunction. The motion must indicate the subject matter of the case, the reason for seeking the preliminary injunction and the type of injunction sought.

The motion must be based on strong evidence demonstrating:

The court considers motions for preliminary injunction without a hearing. No oral arguments, witnesses, or expert witnesses are admitted in these proceedings. Therefore, it is advisable to supplement the motion for preliminary injunction with strong written evidence.

A defendant can argue that the relevant patent is vulnerable for invalidation as an argument that the motion was filed in bad faith and should not be granted.

A motion for a preliminary injunction is considered by the court within one to two days.

A defendant can claim damages arising in connection with an unjustified preliminary injunction (Article 98, Arbitrazh Procedural Code). If there are difficulties with proving damages, the defendant can choose statutory damages determined at between RUB10,000 and RUB5 million.

Since in practice preliminary injunctions are not granted in patent disputes in Russia (see Question 31), there is no established court practice on recovering damages arising out of such an injunction.

As in all other disputes before the Russian courts, the claimant seeking a preliminary injunction can provide financial security or a bank guarantee to compensate the defendant in the event the preliminary injunction is later held to have been wrongly imposed.

In practice, however, providing security does not increase an applicant's chance of being granted a preliminary injunction in a patent dispute.

Because preliminary injunctions are practically unavailable in patent disputes in Russia (see Question 31), the permanent injunction is an important final remedy.

A permanent injunction can only be granted at the end of court proceedings and, therefore, to minimise damage related to patent infringement, it is in the claimant's best interests to approach the opponent with the claim at the earliest stage possible.

For this purpose, the claim should be structured as both a patent infringement claim and a threat of patent infringement claim seeking to restrain infringing actions that violate or threaten an inventor's or patent owner's rights.

Both patent infringement and the threat of patent infringement based permanent injunctions are regularly granted by Russian courts. The threat of patent infringement claims have been successfully used in pharma patent litigation in Russia during the last five years. The Russian courts take a very cautious approach in disputes involving non-practising entities and only few such claims have been granted by Russian courts to date which have been regularly overruled by higher courts.

A permanent injunction will relate to a particular product or a number of products and applies in relation to such products only and is directed against the specific defendant(s).

Based on the court practice of 2020 to 2021, it is simpler to start proceedings against a third party (for example, a distributor) and rely in these proceedings on the court ruling issued earlier against (for example) the producer than to try and extend enforcement of the permanent injunction to third parties which have not been named in the court ruling.

The courts can issue rulings to be enforced abroad. In practice, the enforceability of these rulings is problematic and claimants rarely rely on the prospect of enforceability when considering a case strategy. However, such rulings can be presented to foreign courts (particularly in Eurasian Economic Union countries) in parallel proceedings as secondary evidence.

There are two types of monetary remedies:

In both cases, damages must be awarded on a compensatory basis. However, as patent owners are exempted from the obligation to prove the exact amount of monetary compensation, this may be seen as an exception to the compensatory principle.

Punitive damages for patent infringement are not awarded in Russia. Damages are generally awarded to restore the position of a patent owner that existed before the infringement.

Damages include:

If the person who violated a right received income as a result of the violation, the injured party can claim compensation for an amount not less than such income, in addition to compensation for other losses and lost profits.

When determining the amount of lost profit, the court must take into account the measures taken by the injured party to obtain such profit (Resolution of the Plenum of the Supreme Court of the Russian Federation No. 7 of 24 March 2016). The injured party can submit evidence of measures and preparations for making profit, as well as any other evidence of the possibility of making profit.

The courts do not award interest on damages. The courts do not usually address apportioning damages to infringing features.

Similarly to other countries, an invention for which a patent application is filed is granted temporary legal protection. This protection is granted for the period between the date of publication of the application and the date of publication of the patent (Article 1392, Russian Civil Code). Once the patent is granted, the owner is entitled to obtain monetary compensation for use of the invention by third parties during this period.

There are no provisions on patent marking and springboard injunctions.

A patent owner can request the seizure and destruction of counterfeit goods. The remedy can be enforced against manufacturers, importers, custodians, carriers, sellers, unscrupulous purchasers and other persons who distribute goods in which the patent is used.

The publication of a court decision indicating the actual patent owner is available against an infringer of IP rights.

Recall orders are not available, but a similar procedure may be applied if infringing goods were sold under a state contract.

A declaration of infringement can be used in claims for termination of patent use. Such a claim must be filed against the person who denies or otherwise does not recognise the right and thereby violates the interests of the patent owner. No declaration of validity is available.

The list of possible remedies provided in the Russian Civil Code is open, and therefore other remedies are also available.

An appeal against a first instance court decision must be brought before the appeal court within one month after the date of issue of the decision by the court of first instance.

The appeal procedure is available in the event of violation or misuse of procedural rules. Violation or misuse of procedural rules is a ground for changing or cancelling the decision of the arbitrazh court of first instance if this violation led or could lead to a wrong decision.

The court of appeal must sometimes consider the case under the rules provided for the court of the first instance (finding absolute reasons for the reversal of court decisions). Therefore, the timeline of the appeal hearing depends on the complexity of the case and the need to consider the case under the procedure for the courts of first instance. On average, an appeal procedure lasts two to six months.

If only part of the decision is appealed, the arbitrazh court of appeal must verify the legality and validity of the appealed part of the decision only.

The parties can file a cassation appeal against the decision of the arbitrazh court of appeal with the IP court, where cases are considered by a panel consisting of three judges. The case may then be considered by the Supreme Court of the Russian Federation as a court of second cassation if disputed judicial acts contain significant violations of substantive law and/or procedural law rules that affected the outcome of the trial and led to the violation of a party's rights and legal interests. Finally, a supervisory appeal may be filed with the Supreme Court of the Russian Federation in certain defined situations.

Court fees are negligible compared to other jurisdictions and legal costs are generally lower due to less protracted court proceedings.

The winning party can recover costs from the other party in total or in part, at the court's discretion.

If the claim is granted in part, the defendant normally covers the claimant's costs proportionally. Where there is a settlement agreement, the parties may reach an agreement on the amount of costs recovered.

The court can take the parties' conduct into account when deciding on the allocation of litigation costs. If a dispute has arisen as a result of a violation by a party of a pre-trial procedure for the settlement of a dispute under federal law or an agreement, the arbitrazh court will order that party to pay the litigation costs, regardless of the outcome of the proceedings. A party may be ordered to pay litigation costs if it abused procedural rights or failed to comply with procedural obligations, if such conduct led to the disruption of a court hearing, delay, obstruction of proceedings or to the adoption of a lawful and justified judicial act.

There is currently no established legal framework and court practice for FRAND cases in Russia. While the Russian anti-trust authorities proactively participate in legislative initiatives focusing on balancing monopoly of IP right holders, the more complex patent related issues such as FRAND are yet to be addressed.

In absence of legal framework and court practice for FRAND cases in Russia, the potential strategy for negotiating a FRAND (RAND) undertaking would be to address relevant issues at this stage within multijurisdictional agreements based on law and practice existing in other regions.

See Question 38 The Russian courts have not yet considered FRAND licences and/or SEPs..]

See Question 38

See Question 38