FTO assessments: what rights holders need to consider
Patent rights are vigorously protected in Russia – it is therefore advisable that those interested in commercialising a product or process perform vital risk-management analysis in order to gauge their freedom to operate (FTO). An FTO assessment is an inquiry into whether marketing a product or applying a process infringes patents in the desired marketing territory. In other words, it is the crucial prerequisite in the process of ascertaining whether something can be commercialised without the risk of infringing third parties’ IP rights.
In this article, some of the main features of an FTO assessment in the context of Russian law are highlighted. From the outset, a key point to emphasise is that an FTO inquiry must examine both Russian and Eurasian patents. Further, it is important to consider the differences in analytical approaches to inventions and utility model patents, explore how the doctrine of equivalents is understood in Russia and outline the types of infringement that exist under Russian law.
The FTO assessment
A standard FTO assessment comprises three main steps:
- determining the scope of the subject matter to be assessed;
- conducting the patent search; and
- providing the infringement risk analysis with conclusions.
FTO analysis invariably begins by determining the scope of the subject matter to be assessed (ie, the scope of constituent parts or a combination of parts of a device, product or a process intended for commercialisation). In the case of a complex product or service, any part or combination of parts could lead to an infringement, which expands the scope of potential relevance. The subject matter must be disassembled into all of its constituent elements (ie, the specific units, materials and processes involved in the item’s manufacturing or implementation). In most cases, some of these elements are clearly within the public domain and carry no infringement risks, while others require more research and risk analysis.
There are two kinds of patents in Russia – national and regional. Regional patents are granted by the Eurasian Patent Organisation under the Eurasian Convention. A single Eurasian patent covers the eight countries that are members of the Commonwealth of Independent States, which includes Russia. Both Russian and Eurasian patents can be obtained to protect an invention, while utility models are not covered by the Eurasian Convention and protected under Russian law only.
It is therefore critical to conduct patent searches within both Russian and Eurasian databases. The FTO search should delve into Russian patents (inventions, utility models and industrial designs) that are currently in force and published; it should also examine Eurasian patents currently in force within Russia. Both processes should also consider pending applications.
Language plays a complicating role – an FTO search is primarily about claims, but a full text analysis is also important. Patent authors use different terminology and concepts for defining the scope of inventions. Moreover, language errors in foreign applications that have been translated into Russian may cause relevant patents to be overlooked in a search. There may also be additional problems with regard to the interpretation of a translation by non-native speakers while searching for and analysing patents. Although electronic translation services work well for some types of searches, they are not a reliable tool for FTO-assessment purposes, where a comprehensive understanding of every feature – individually and in the full scope – is essential.
If an FTO-assessment search uncovers a relevant, valid patent, the next step is to perform a comparative analysis of its independent claim and the features of the product or service in question itself. The claim’s language must be evaluated, as well as any specifications and drawings.
If the subject matter (ie, the product or process that is the subject of FTO assessment) lacks or does not use one or more features of the independent claim of the flagged patent or if one of its technical features is not the same or equivalent of the independent claim, then it is safe to conclude that no infringement will occur.
‘Literal infringement’ is established when all of the features recited in a claim are represented in the accused subject matter. However, if there are some differences, the question of equivalency is raised. Russian law does not define the doctrine of equivalents, nor does it provide a procedure for evaluating equivalency. The Civil Code merely states that a feature is equivalent if it “became known as such in the state of the art before the priority date of the invention”. Generally, a feature is considered as equivalent if it results in the same effect as the feature of the invention presented in the independent claim.
If the matter goes to court, equivalence is typically established by an expert appointed by the court and at the court’s request – they answer questions to establish whether equivalence exists.
Utility model – no equivalence evaluation
In Russia, only a device can be protected as a utility model. The term for a utility model patent is 10 years from the filing date and no extension is allowed. The exclusive rights for a utility model are the same as those for an invention; the sole difference is that in the infringement analysis, the equivalence of the features is not applied. In other words, the accused subject matter must use every feature presented in the independent claim of the utility model patent in order for there to be a conclusion of infringement (ie, literal infringement).
Types of infringement in Russia
Russian law does not exhaustively define the actions that qualify as infringement. However, the code specifies that infringement occurs with the import, manufacture, use, offer of sale, sale or commercialisation of the patented item (invention, utility model or industrial design). The same applies to a product manufactured by a patented process and to a device in which a patented process is inherently implemented. Under Russian and Eurasian law, the person or entity that directly commits these actions is deemed to infringe the patent.
There are currently no provisions that offer definitions for the concepts of ‘indirect infringement’ or ‘contributory infringement’.
Avoiding the infringement risk
An FTO assessment is strongly recommended before a product or process is launched on the Russian market; it should be carried out by a qualified patent attorney. If done correctly, an FTO assessment manages and eliminates potential infringement risks – it can identify existing patents and in many cases enable businesses to find ways to redesign a product or to acquire the appropriate licences. Patent attorneys can also help to navigate and analyse both the Russian and the Eurasian patent databases – an absolute must when working in the Russian market. Further, should a future defence strategy becomes necessary in a Russian court with regard to a potential patent infringement, a thorough FTO assessment will have already laid excellent groundwork for this.
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