Restoration of an illegally invalidated patent – a rare case in the practice

Novline, a manufacturer of accessories and components for cars and trucks, has an exclusive right to the utility model per patent No. 122342 – Removable floor mat of a vehicle driver’s seat. When the company found out that one of its competitors was illegally using the patented technical solution in its product, Novline turned to YUS for the protection of its rights.

YUS’s lawyers from Legal Department together with the patent attorneys from Patent Department prepared evidentiary basis and filed a lawsuit, but the consideration of the case was suspended several times. The competitors filed revocation requests with the Chamber for Patent Disputes in respect to this patent, claiming that the utility model allegedly didn’t meet the novelty patentability requirement. Therefore, the patent was invalidated by the Russian PTO twice.

YUS’s specialists Alexander Vilesov, Elena Khromushina and Kirill Borisov successfully contested these decisions in the Intellectual Property Rights Court. Moreover, the results of the last proceedings were a rare case in the IP practice when the court didn’t return the objection to the Russian PTO for the third consideration, but enforced the federal agency to restore the patent.

This decision makes it possible for the client to proceed with the case on the violation of the exclusive right to the utility model and to claim the recovery of damages for the period of the illegal use of the patented technical solution by the competitor.