By: Lisa Mueller
In December 2011, Russia implemented legislative changes establishing a specialized intellectual property (IP) Court. The purpose of the IP Court is to ensure the proper adjudication of IP disputes which are notorious for their complexity. Although the IP Court was officially formed in February 2013, it has not yet begun hearing cases. On May 15, 2013, during the St. Petersburg International Legal Forum, Presiding Judge Ludmila Novoselova stated that she expects the IP Court to start hearing cases in approximately July 2013, although further delays are possible. Some of the reasons for the delay are: (1) infrastructure remains to be built; (2) professional and administrative staff positions remain vacant; and (3) proposed new legislative initiatives could expand the jurisdiction of the IP Court.
With respect to the proposed new legislative initiatives, these initiatives relate to whether the jurisdiction of the IP Court should be expanded in include trademark non-use cancellation actions. Presently, these actions fall within jurisdiction of the Arbitration Court of Moscow; however, technically, these cases are to be transferred to the IP Court once it begins hearing cases. Nonetheless, in April 2013, a bill was introduced to exclude non-use cancellation actions from the jurisdiction of the IP Court and to instead provide jurisdiction for these cases in the arbitration courts (based on the location of the defendant). The bill was introduced by Mr. Pavel Krasheninnikov, the chairman of the State Duma’s (lower house of the Russian Parliament) committee on civil, criminal, arbitration and procedural legislation. It is quite possible that the opening of the IP Court may be further delayed until this issue is resolved.
Jurisdiction of the IP Court
The IP Court has a dual role in the Russian court system acting as a first instance and second appeal (cassation) court. The IP Court will operate as a first instance court, hearing appeals of decisions of the Russian Patent Office, including its revocation tribunal, the Chamber for Patent Disputes. The decisions of the IP Court can be appealed to the Presidium of the IP Court. The IP court will also operate as a second appeal (cassation) court for IP infringement actions. Figure 1 outlines the types of cases that will fall within the jurisdiction of the IP Court. Figure 2 outlines the role the IP Court will play in IP infringement actions.
All cases in the IP Court will be heard by a panel of at least three judges. The decisions of the Presidium of the IP Court with respect to appeals against Patent Office decisions, and in IP infringement cases, can be appealed to the Supreme Arbitration Court. Figure 3 depicts the four-level (Levels I-Level IV) system for IP disputes.
Currently, appeals against Patent Office decisions are filed at the Arbitration Court of Moscow. These decisions can be appealed to the first (appellate) appeal court 9th Arbitration Appellate Court and then to the second (cassation) appeal court Federal Arbitration Court of the Moscow Circuit.
Once the IP Court begins hearing the cases, any pending appeals filed at the Arbitration Court of Moscow will remain in that court. However, any second (cassation) appeals may not be filed at the Federal Arbitration Court of the Moscow Circuit, but must instead be filed at the Presidium of the IP Court.
As mentioned above, the IP Court is expected to start hearing cases in July, at the earliest. Once the IP Court starts to hear cases, it is important to consider the implications of the “transition period.” The implications of the transition period with regard to challenging Patent Office decisions (for example, patent revocations) could unfold as follows:
- The Patent Office issues a decision to revoke a patent;
- Patentee appeals the decision to the Arbitration Court of Moscow as the first instance court (the case stays in this court even after the IP Court begins hearing cases);
- The Arbitration Court of Moscow renders a decision upholding or reversing the Patent Office Decision;
- The decision of the Arbitration Court of Moscow is appealed to the 9th Arbitration Appellate Court as the first appeal court;
- The 9th Arbitration Appellate Court renders its decision; and
- If, by the time of filing of the second (cassation) appeal the IP Court begins hearing cases, then the second appeal must be filed at the Presidium of the Supreme Court instead of the Federal Arbitration Court of the Moscow Circuit as is currently the case.
The IP Court is presided over by Ludmila A. Novoselova, an ex-judge of the Supreme Arbitration Court. Ms. Novoselova was an unexpected choice, as she is a corporate law specialist. A minimum number of 15 judges is required for the IP Court to operate. At the time of this post and according to the official website of the IP Court (http://ipc.arbitr.ru), 13 judges have been appointed. Most of the IP Court judges are former judges of the arbitration courts. Only two judges have technical backgrounds such as in physics (Judge Rogozhin) and mechanics (Judge Vasilieva). Specific details on the judges are provided below.
The IP Court is located in downtown Moscow (Mashkova St., 13), close to the Supreme Arbitration Court.
Please watch the BRIC Wall for future posts on the status of Russia’s specialized IP Court.
The above is from an original article prepared by Gowlings and edited by Lisa Mueller. Many thanks to Gowlings for providing their insights on Russia’s specialized IP Court.