"JURIDICAL PRACTICE IN DISPUTES RELATED TO INFRINGEMENT OF IPRs AND LICENSING AGREEMENTS"

Joint LES Russia - AIPPI Russia Seminar

June 3, 2003, Moscow

Professor Natalia Karpova, President of LES Russia, and Dr. Vladimir Kuryshev, President of AIPPI Russia, addressed the seminar with opening speeches.

The Presidents noted that such of joint seminars had become a good tradition. A pretty number of participants (57 persons) from many countries (Russia, Ukraine, Belorussia, Kazakhstan, Kyrgizia and Armenia) demonstrated the increased interest in the seminar issues. The seminar was held in the Conference room of "Gorodissky & Partners" offices in Moscow.

The first report devoted to "IP Rights Proceedings in Common Law Court" was delivered by Vladimir Gorshkov, Deputy Chairman of the Moscow City Court. The speaker underlie the special attention currently given by the Russia Government to the IP law enforcement practice, and reported on the ever-increasing number of such cases in courts.

Attention of the seminar attendees was directed to current trends in law enforcement practice in this field. The reporter noted the growing number of criminal cases concerning infringement of IP rights that were brought to court, discussed the problems with interpretations of "prior use" and "material damage" concepts by courts, mentioned the increased number of lawsuits related to service inventions, the points of appointing experts and conduction of expertise, the increased number of copyright-related lawsuits, the importance of proper definition of the subject matter in statement of claim, etc.

Mr.Gorshkov complained that some judges (especially in provinces) lacked adequate knowledge in the IP field, this resulting in misjudgments. Mr. Gorshkov's personal view was that establishment of Patent Court in Russia with patent attorneys actively involved in court proceedings would be of benefit for the law enforcement practice. The reporter was asked numerous questions.

Ms. Ya. Larina, Chairwoman of IP Section at the Moscow Arbitration (Commercial) Court, delivered a report on "Industrial Property Right Proceedings in Arbitration".

The reporter discussed in details the most frequent errors in drafting the IP-related petitions, elucidated proper approaches when the parties participated in the preliminary court session and the main trial.

Mrs. Larina noted that the number of cases related to IP rights infringement in Internet substantially increased, and that such cases were rather complicated when the rights to domains and trademarks collided. It was important to attract ROSNIIROS, State authority involved in registration of domains, as a third party to such suits.

Mr. Gorshkov, as did Mrs. Larina, noted in the report the problems with appointment of experts and conduction of expertise, and the importance of proper definition of the subject matter in statement of claim.

As regards the cases related to infringements of licensing agreement conditions, the majority of such cases at present are quite formal in nature and relate to nullity actions against licensing agreements due to non-observance of the registration rules in the Russian PTO, failure to include some essential conditions into licensing agreements, etc.

Ms. Larina also pointed out the complications experienced by courts in their work without participation of patent attorneys. The report was met with keen interest.

Both the reporters mentioned that conduction of such meetings with the audience including mainly patent attorneys and IP lawyers was useful because they also got valuable practical information out of the feedback.

A report "Juridical Practice in Disputes Related to Violation of IP Licensing Agreements" delivered by Natalia Mesyashnaya, Patent Attorney, "Recherche" Patent Bureau, Moscow, was of great success.

On two practical examples taken from lawsuits on invalidation of licensing agreements, Mrs. Mesyashnaya demonstrated the complicated and unpredictable nature of court decisions in this field. It was demonstrated how a word or phrase in the licensing agreement could play important role in making judgment.

At the closing cocktail the participants continued a discussion of reports and business networking.