No Longer Pipe
INTELLECT-S protects "invalid" patent holder’s rights.
INTELLECT-S's attorney Maxim Labzin represented Zavod AND Gaztrubplast seeking a judgment of cease a desist against Polymer Pipe Works which manufactured and distributed plastic pipes using the design copying a utility model that belonged to the plaintiff, a member the Polyplastic Group, CIS's biggest producer of plastic pipes and plastic utility products (Case No. A41-5626/2012).
Forensic examination demonstrated that Polymer Pipe Works used indeed the plaintiff's registered utility model. After the service of process, the defendant filed with the Russian patent office (Rospatent) a claim challenging the patent, which resulted in its partial invalidity by the day on which the court entered the judgment. The plaintiff had not yet taken out a new patent to replace the previous one.
Technically, the law does not protect the patent holder's rights in this situation. But the plaintiff decided to proceed with the prosecution of the claim without waiting for the new patent to be issued. The trial and appellate court granted the relief the plaintiff sought.
The defendant filed for cassation review, asserting that the strict, literal interpretation of statutory law and Moscow Arbitrazh Court's case law did not permit relief to be granted where a patent underlying the action was partially invalid. The plaintiff should have first taken out a new patent, then file a new action and gather new evidence, for relief becomes available only upon the issuance of the (new) patent.
For the plaintiff, this meant a new action with an uncertain outcome.
The Moscow Federal District Arbitrazh Court which held the cassation review, accepted the decisive argument of the plaintiff's counsel, INTELLECT-S attorney Maxim Labzin, creating a new precedent in the protection of patent holders' rights: all protectable patent rights — and remedies — are available to the patent holder retroactively, starting the date of filing of the original patent claim, in fact, since the date of the application for the previous patent (even held partially invalid subsequently), which date remains the same for the new patent, and cover the entire history of the patent.