The Rules broaden the scope of challenge of the tribunal’s members extending it to any situations where the member may be directly or indirectly interested in the outcome of the case or where there is evidence of lack of tribunal member’s impartiality.
The Rules set a timeline for cases’ consideration.
(a) The opposition or other IP case is registered by Rospatent within 5 business days. Within the same term Rospatent informs the applicant of any procedural defects of submission.
(b) Any procedural defects of opposition or other IP case can be cured by the applicant within 2 months.
(c) The first hearing on challenges of Rospatent’s rulings (e.g. on grant of patent, on refusal in trademark registration, etc.) is scheduled within 1 month from the date of acceptance of the case.
(d) The first hearing on oppositions against patents, trademarks etc. is scheduled within 2 months from the date of acceptance of the case. Defence brief is filed with Rospatent and circulated to the opponent no later than 10 days before the date of the hearing. In case of the late submission the hearing might be postponed.
The Rules provide for a hearing via video-conference upon a motion of a party filed no later than 15 days before the date of the hearing.
The tribunal may postpone the hearing:
(a) for no more than 1 month in the following cases:
(i) if there is a need to clarify the information on the party or IP right in dispute;
(ii) due to the volume of submission or due to new arguments or evidence presented by the party;
(iii) if it is impossible to consider the dispute due to illness of tribunal member, absence of tribunal member for reasons beyond his/her control, as well as the need to obtain from the parties to additional documents and information.
(b) for no more than 2 months upon a motivated motion of the party in the interest of full and objective case consideration
(c) for no more than 3 months if there is a need to seek independent expert opinion.
The hearing may be stayed at party’s request or at the tribunal’s discretion if there are parallel proceedings for another case the decision on which may be important for the outcome of the hearing. In this scenario, the stay may be granted until the decision in parallel proceedings enters into legal force. Equally, interim measures in place for IP right in dispute may lead to stay of proceedings until removal of the such interim measures.
One of the most important developments is the right of the party to provide additional arguments and evidence supporting opposition. Under the old rules the party was limited by the arguments and evidence presented in the opposition. Now new arguments may be presented by parties in any time before the tribunal moves to the deliberation room.
Another development is that the tribunal is now entitled to seek independent expert opinions. The tribunal may also involve into the proceedings examiner(s) of a particular patent or trademark application. The latter was earlier not covered by the rules but was actually used in practice.
The Head of Rospatent Mr. Grigory Ivliev noted that by virtue of the new rules the terms for consideration of disputes will be significantly reduced and electronic interaction with the parties will facilitate the work of Rospatent and reduce the COVID-19 related risks.
Authored by Vironika Pilyugina and Natalia Gulyaeva