New case-handling rules of Chamber of Patent Disputes go into effect
The new rules for handling of cases by Rospatent (the “Rules”) went into effect on 6 September 2020. They replaced the previous edition of Rules No. 56 from 22 April 2003.
One of the main novelties is the provision authorising the Chamber of Patent Disputes to suspend court disputes upon application by a party or decision of the Collegium if the outcome of administrative or court proceedings might have an impact on the case. Such suspensions are possible before the decision becomes effective or the interim measures regarding the intellectual property that is the subject matter of the dispute are cancelled.
Another important change is that the new Rules allow complainants to present additional arguments for the submitted objections and applications to confirm their documents and other materials in the course of the hearing. According to the old Rules, the complainant could only present additional information from dictionaries and handbooks.
Members of the Chamber of Patent Disputes Collegium are now authorised to identify grounds other than the ones mentioned by the complainant in disputes over the invalidity of legal protection of intellectual properties or obstructing the delivery of legal protection. The parties must be informed of such grounds within five working days of the Collegium’s meeting at which the grounds were identified. The parties have the right to express their opinion.
Moreover, the new Rules require that a review be provided at least 10 working days before the Collegium meets. Alternatively, the meeting can be rescheduled.
The global situation has caused changes in how objections, applications and other documents are submitted. In addition to submitting documents by post or at reception offices, all objections, applications and other documents can be submitted via Rospatent’s official website. This method of submission requires merely an electronic signature. The parties can also request that information about the dispute published on the official website be sent to them via email.
Furthermore, all documents are submitted in a single copy instead of two copies. If the documents are submitted in hard copy, an electronic secure storage device with PDF copies of the documents should be attached.
Any party to a dispute may ask to participate in the proceedings by videoconference at least 15 working days before the day the Collegium meets. The party can also request audio or video recordings within five working days of the meeting. Audio recordings must be stored at least four months from the day of the proceedings.
In conclusion, the new Rules cut the time for checking that documents comply with the requirements for acceptance and registration from one month to five working days from the date of receipt. They also set the date of the Collegium’s first meeting to review the application, which should be within two months of receipt.
Therefore, the Rules have undergone major changes compared to the previous edition. These changes simplify how parties engage with the Chamber of Patent Disputes by using electronic technologies at all stages of the administrative proceedings. They also allow the complainant to provide additional arguments and evidence, include the Collegium’s authority to establish new grounds for the invalidity of legal protection of intellectual properties, and allow for disputes to be suspended pending adjudication. Such changes will have a significant impact on the procedure and quality of administrative dispute resolution by the Collegium of the Chamber of Patent Disputes.