IP Court for Russia: Coming soon!

Why is Russia going to establish a specialist IP Court? Dr. Elena Solovyova at ARS PATENT provides some answers and explains how the court will function.

Despite Russia’s accession into the World Trade Organization (WTO) and Russia’s tremendous progress in modernizing its IP legislation in accordance with the provisions and mandates of the World Intellectual Property Organization (WIPO) and of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the actual practice of law enforcement by Russian state authorities has left much to be desired. As the number of IP disputes continued to increase exponentially in Russia and without the necessary knowledge and qualifications in science and technology in order to properly access and evaluate IP disputes, Russian state authorities such as the courts, investigative bodies, and antimonopoly authorities, often pronounced their decisions on a more formalized precedent approach.

On December 6, 2011, the President of the Russian Federation adopted Federal Constitutional Law No. 422-FKZ, which created a specialized IP Court within the state federal Arbitrazh Courts.

Intellectual property right disputes require state authorities, especially court judges, to have both immense legal knowledge and technological and scientific qualifications. Currently many judges in Russia possess a traditional higher legal education and do not have an extensive technical background. The creation of a specialized IP Court within the Arbitrazh Court will establish a principal group of judges who possess the understanding of the deep nuances and complexities of legal proceedings in intellectual property rights. The IP Court will also include a staff of off-site specialists and experts from various technological and scientific fields, which was impossible within the framework of ordinary courts before.

The main objective in the formation of the IP Court is to create a uniform court system and legal practice in protecting intellectual property rights for domestic and foreign businesses in Russia. The decisions of the IP Court will serve as a precedent for judges in other courts, including civil courts. The new IP Court will improve the quality of decisions in IP cases and provide greater unity to the Russian court practice in IP rights. The uniform approach to jurisprudence in intellectual property will also allow for the courts to become more transparent and predictable in various legal disputes, which will significantly improve the quality of services of patent and trademark attorneys. Overall, the introduction of the new IP Court should make the Russian IP sphere more stable and attractive to foreign investors and businesses.

Why within the system of Arbitrazh Courts?

The most complex and economically significant relationship in regard to the protection of intellectual property rights is between individual entrepreneurs/companies. Such disputes are traditionally considered by Russia’s state Arbitrazh Courts.

IP disputes were previously considered by state courts, particularly: civil (general jurisdiction) courts and Arbitrazh Courts. The parties involved in an IP dispute determined whether the lawsuit would be held in Civil or Arbitrazh Courts. Generally, civil courts handled disputes involving individuals whereas Arbitrazh Courts dealt with legal disputes between companies and individual entrepreneurs.

Therefore, the IP Court will be set up in Russia’s Arbitrazh Courts and will handle all disputes of intellectual property rights involving both individuals and companies.

What type of IP cases will the IP Court consider?

Firstly, as a court of first instance for intellectual property rights, the IP Court has jurisdiction over the following categories of disputes and will consider:

1) Cases challenging regulatory legal acts of federal executive authorities in the area of the protection of intellectual property rights, and concerning the rights and legal interests of the applicant in the protection of intellectual rights and means of individualization, including in the field of legal rights to patents and plant selection patents, topology of integrated microcircuits, corporate/legal secrets (know-how), the right to the means of individualization of businesses, the right to use the results of intellectual property activity in the composition of one technological object;

2) Cases concerning disputes on the grant, cancellation, or invalidation of the legal protection of intellectual property and similar means of individualization of goods, works, and/or services of legal entities (except for copyright and related neighboring rights, and topologies of integrated microcircuits), including:

challenges to non-normative legal acts, decisions and actions (including omissions and inaction) by the Federal Service for Intellectual Property (Rospatent), the federal executive body responsible for patenting selection achievements solutions in plants and animals, as well as the federal executive bodies authorized by the Russian government to consider applications for a patent for a secret invention;

challenges to the decisions of the federal antimonopoly authority on recognizing the acquisition of exclusive IP rights to commercial brands and means of individualization of a legal entity, trademarks or service marks, as an act of unfair competition;

the determination of patent holders;

the invalidation of a patent, utility model, industrial design or selection achievement solutions in plants and animals, a decision to grant legal protection to a trademark, appellation of origin and granting exclusive rights to this appellation; and

the cancellation of the legal protection of a trademark on the grounds of its non-use.

The cases indicated above of the current law are to be considered by the IP Court, regardless of whether the disputing parties are organizations (legal entities), individual entrepreneurs, or national citizens.

Secondly, the IP Court acts as a court of cassation and considers two categories of cases:

1) Cases reviewed by the same IP Court in the first instance;

2) Cases on the protection of intellectual property rights that were reviewed by

Arbitrazh courts of the Russian Federation in the first or the appellate instance.

Thirdly, the IP Court reviews new and newly discovered evidence that were accepted by them and judicial acts that have entered into legality.

The IP Court will only consider disputes which affect the interests of businesses or other economic spheres, aside from a few exceptions. And within this jurisdiction, all of the above cases can be divided into three categories:

1) Challenges to normative regulations in the field of IP protection.

2) Disputes about the granting or cancellation of the legal protection of IP rights (copyright and related rights and topology of integrated microcircuits are outside of the scope of the new court’s jurisdiction).

3) Cases on the protection of IP rights from violations, which were reviewed by the Arbitrazh courts of the Russian Federation at the first or the appellate instance, including disputes arising from contracts on assignment of exclusive rights and license agreements, as well as cases that bring into account administrative responsibility.

Cases within the first and second category above are considered by the IP Court in the first and cassation instance, regardless of the type of participants in the dispute and the nature of the dispute. Appellation is not envisioned and therefore the decisions come into legal force immediately. Cases which fall into the third category above are considered by the IP Court only in the cassation instance. Prior to cassation appeals, the cases of the third category are reviewed by the Arbitrazh courts of the Russian Federation in accordance to the general rules of court jurisdictions.

Cases of administrative violations in the field of intellectual property are now in the jurisdiction of Arbitrazh courts and will be considered in the first and appellation instance on the basis of earlier regulations. However, they will be re-evaluated in accordance with the procedure of the cassation instance in the IP Court.

Who will the judges be?

A candidate for a judge in IP Court must meet the requirements established by law on the status of judges. A judge in the specialized Arbitrazh Court may be a Russian citizen over the age of 30 and have professional legal experience of at least 7 years.

Thus far, there have been 11 judges appointed to the IP Court. In order for the IP Court to start operating, at least 15 of the 30 judges must be appointed. According to the list of appointed judges and nominated candidates who have been approved by the Higher Qualification Board of Judges, we can conclude that many of the judges will come from regional Arbitrazh Courts.

Even though the judges will have special knowledge in the field of intellectual property, such knowledge does not exclude the possibility of the judges needing to consult experts and professionals in various IP spheres. Due to the rapid development of modern science and technology, a very high degree of specialization has been reached in some of the IP disputes and issues that arise in reviewing and ruling on specific cases, which fall within the competence of the IP Court. The judges will be supported by a staff of off-site specialists and advisors, who are not lawyers but instead, have all of the necessary qualifications and can be considered as experts in the various relevant fields, such as biologists, engineers, chemists, etc.

Off-site specialists and experts are a new figure in the process of the Arbitrazh Court. According to Article 55.1 of the Arbitration Procedural Code of the Russian Federation, a specialist in the Arbitrazh court is an individual who has the necessary expertise in the relevant field to consult on issues related to the case. Upon the request of the court, a specialist must appear in court, answer the presented questions, and give an oral explanation and clarification in the relevant field. The specialist can familiarize themselves with the necessary materials of the case. A specialist’s testimony is considered as evidence and quote distinctive from the expert opinion. Unlike the latter, court specialists are independent and provide oral advice and consultations without conducting prior extensive research and investigation into the matter of the case. It is important to note that it is not necessary for the Arbitrazh court to suspend legal proceedings in order to consult with a specialist in the court.

A specialist may also be requested to provide their expertise and resolve specific concerns not only by the IP Court. Any Arbitrazh court that needs to seek advice and to ascertain the professional opinion of specialists who have all of the necessary theoretical and practical skills and expertise in the relevant field, may request such an off-site specialist and expert.

Where and when?

The IP Court will be located in the center of Moscow. There is no plan in progress to create regional specialized courts. Cases that relate to the protection of intellectual property rights (other than those dealt with by the IP Court at first instance) are considered by the regional Arbitrazh courts. Appellation instance is also considered by the regional Arbitrazh courts. However, all of the cassation reviews, as already mentioned, will be considered by the IP Court. The Supreme Arbitrazh court of the Russian Federation will be responsible for the supervision of the IP Court and its functions.

The Russian IP community believes that the IP Court will commence its operation soon. It was announced earlier that the IP Court will start operating in February 2013. However, in accordance to the latest information, the IP Court will start work no earlier than April-May 2013. There are several categories of legal proceedings that are currently in the Arbitrazh courts, the Civil Court or in the Chamber of Patent Disputes that can be considered in the IP Court on the basis of the stipulations outlined in the newly enacted Federal Law. Bearing this in mind, rights holders, specialists, and practitioners in the IP sphere should consider creating a legal strategy to use the new legal opportunities of the IP Court.

Résumé

Dr. Elena Solovyova is a senior partner of IP Law Firm “ARS-Patent” since 1993. She has extensive experience in IP areas in Russia and CIS countries including prosecution as well as litigation. She is recognized for successfully representing the Clients’ interests before the Chamber of Patent Disputes of the Russian PTO, the Arbitration Court, the Antimonopoly Committee, Customs authorities. Mrs. Solovyova has been listed as one of the world’s leading practitioners in the legal field, in “The International Who’s Who of the trademark Lawyers 2010″. Also she has been repeatedly included into “Russia’s Best Lawyers” edition by Best Lawyers, USA, in 2009-2012.

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