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Successful defence of utility model patent

¹ 128b (2018)

PSS Corporation (PPMTS Permsnabsbyt, JSC), Gorodissky client, has been carrying out research, design, full production cycle, supply and installation of electrochemical corrosion protection equipment since 1999. Corrosion destruction of downhole equipment is a serious problem for the oil industry, causing inconvenience in work and large financial losses. In this connection, PSS Corporation developed and patented a new technical solution (RU patent for utility model No. 137329), designed to protect expensive oil submersible equipment – electric submersible pumps and motors (ESP systems) in environments with a high content of carbon dioxide and hydrogen sulfide, where corrosion is particularly intense.

In 2016, PSS Corporation became aware that Geopromyslovye Novatsii Ltd., Tyumen (Geopron Ltd.), offers for sale and sells products with illegal use of the patented utility model to oil and gas companies. It also was found that RPA RosAnticor Ltd., Chelyabinsk, manufactures these goods.

A check purchase of the disputed products was carried out. Then Gorodissky and Partners specialists provided patent and technical analysis and made opinions on the existence the fact of the patent infringement. The infringers refused to stop illegal use of the patent and PSS Corporation instructed Gorodissky and Partners (Kazan) lawyers to file a lawsuit.

The lawsuit for prohibiting Geopron and RosAntikor from using the utility model, recovering compensation and publishing a court decision (case A70-2219/2017) was filed. During the consideration in the court of the first instance, the defendants denied the use of the utility model in their products, demanded the conduct of an independent patent-technical examination, and submitted nominations of experts. However, we identified circumstances that cast doubt on the impartiality of these experts, and all of them were excluded. As a result, the court ordered to examine the patent and disputed products with their drawings and technical specifications to the commission of two experts (one of them was proposed by Gorodissky, another one – selected by the court). Based on the results of the analysis, the expert commission made a conclusion about the presence of all the features of the independent claim of the patent in the disputed objects.

Attempts by the opponents to challenge the results of the independent patent-technical examination were completely broken, and in this connection, the defendants changed their strategy and filed a countersuit against PSS Corporation for recognizing the right of prior use for a technical solution, identical to the patented one.

However, taking into account our arguments, the filing of the countersuit 9 months after the start of the trial was qualified by the court as an abuse of rights. In this connection, the court refused to consider the countersuit.

In both cases it was established that there were no grounds for revocation the patent

During the case, we provided the court with information about the period of the infringement, the scheme of cooperation of the infringers, the volumes of production, the profitability of products; and we calculated the probable damages. The amount of compensation, jointly demanded from the infringers, amounted to 2,000,000 rubles (over $ 30,000). Defendants’ arguments about overstating the amount of compensation were rejected, and the court awarded our demands in full. Court of appeal and then IP Court left the decisions in force.

It also should be noted that, in parallel with the consideration of the case A70-2219/2017 by the commercial courts, Geopron twice initiated patent invalidation proceedings with the Russian PTO. However, in both cases it was established that there were no grounds for revocation the patent.

Thus, due to the comprehensive and thorough work of Gorodissky and Partners lawyers and patent attorneys, PSS Corporation has succeeded in prohibiting the illegal use of the utility model patent by competing companies, received fair monetary compensation, and reflected competitors’ unreasonable attempts to invalidate the patent.