Divisional Applications – The Story Continues?

On June 04, 2024 the Supreme Court of the Russian Federation issued a decision which put the final point in litigation between KRKA, d.d., Novo mesto (Slovenia) and AstraZeneka AB (Sweden) on invention patent 2643764.

About half a year earlier, on 2 January 2024, the Italian Civil Supreme Court by its also final decision confirmed that Pfizer has to pay over €13.4 million compensation to the Italian Health Ministry and Finance Ministry for abusing dominant position in drug market.

These two litigations were about different matters and happened in two different jurisdictions while nevertheless had one common issue - in both the practice of filing divisional applications from early filed divisional applications was reconsidered returning professional discussions again to this very disputed issue. And, while Russian Supreme Court decision indeed ended the local discussions regarding divisional-from-divisional practice confirming its admissibility, the Italian Supreme court looked at such practice from another perspective and suggested "to be continued" ellipsis.

The Italian Supreme Court decision confirmed the previous Appeal Court decision that Pfizer had abused its dominant position through its overall conduct, which included among other actions, filing patent application and getting for it a divisional patent and corresponding supplementary protection certificate. By such decision, the Italian Supreme Court in fact included Pfizer's action aimed on obtaining legal monopoly provided by a lawfully obtained patent, into the scope of anticompetitive behavior, in the best possible interpretation - as a prerequisite for further unlawful action.

Almost at the same time when Italian Supreme Court issued its decision, the Presidium of the Russian IP Court, having considered a cassation appeal of KRKA, had decided that the practice of filing divisional applications from divisional applications was initially wrong and even not corresponding to the Paris Convention. The Presidium of IP Court ruled that Russian law being interpreted together with the provisions of Article 4G of the Paris Convention should be understood as allowing to file divisional applications only from the very first application (initial application) that was filed with the Russian Patent Office, and that initial application can be only one.

This decision was the last decision that might be taken within the jurisdiction of the Russian IP court, and could be appealed with the Supreme Court, provided the Supreme Court considers it as having significant nature.

The decision of the IP court was appealed not only by AstraZeneka AB but also by the Russian Patent Office and was accepted by the Supreme Court that agreed on its significance.

Commenting briefly the sequence of actions that preceded the Supreme Court decision:

- in year 2021 KRKA filed with the Russian PTO and appeal against grant an invention patent 2643764 to AstraZeneka. This patent was issued in 2018 for an application filed in 2013 (hereinafter "Application 2013") as a divisional application from an application filed in 2008 (hereinafter "Application 2008"), which in its turn was filed as a divisional application from an application filed in 2004 (hereinafter "Application 2004"), which was the first application in this chain being nationalized in Russia PCT/US2003/015591.

According to the Russian Civil Code, a priority of divisional application can be claimed from the initial application, which discloses the invention of the divisional application under the condition that on the date of filing a divisional application the initial application is not withdrawn, patent for it has not been registered or a possibility to appeal against rejection of the initial application has not been exhausted.

However, KRKA insisted that Application 2013 could not benefit from the earliest priority of Application 2004, because the patent for it had already been granted on the date when Application 2013 was filed. The fact that AstraZeneka claimed for Application 2013 the priority of Application 2008 that had been pending at the time Application 2013 was filed, should, in KRKA opinion, not be taken into consideration because only Application 2004 was relevant basis to claim the priority from. Further, KRKA argued that since Application 2013 can only benefit from the priority of its filing date, then patent granted on Application 2013 is as such invalid in the view of available prior art (Application 2004).

The Russian PTO rejected the appeal and retained patent granted from Application 2013 in force.

Being dissatisfied with such decision of the Russian PTO, KRKA appealed it with the IP Court, almost completely repeating the arguments previously used in the appeal with the Russian PTO.

The IP court having considered in the first instance the submitted appeal agreed with the Russian PTO decision and explained that although the law mentions application from which a divisional can claim a priority as "initial", it does not understand the initial application as being the only one and does not restrict the number of cascade or chain divisional applications to be filed. Clearly, an application becomes "initial" not due to its special time of filing or status, but only when another, later application mentions it as the priority giving naming itself as a divisional and that previously filed application as "initial" or "parent". In other words any pending application may become "initial" for another application if conditions for such pairing are met, namely, according to Russian law - the initial application shall disclose invention of a divisional application, shall be filed by same applicant or successor of latter as of the divisional, and shall be pending or eligible for appeal against rejection when divisional is filed. Therefore, according to decision of the Russian PTO confirmed by the first instance of the IP court, patent for application 2013 was validly granted and the priority for Application 2013 properly claimed because on the date of filing Application 2013 Application 2008 was pending, and Application 2004 was pending on the date of filing Application 2008.

KRKA did not agree with the decision again and submitted cassation appeal to the Presidium of IP Court - the last instance in the IP Court which decision can be reviewed by the Supreme Court only.

And the decision of the Presidium of IP Court was surprising - it reverted the previous decisions stating that both Russian PTO and the first instance court were wrong and that Art.1381 setting forth the provisions on priority right being interpreted together with Art.4G of the Paris Convention should be understood as allowing to claim priority for a divisional application only from the very first application in the chain, in this particular case - Application 2004, which only can be regarded as "initial".

This decision surprised practitioners much, both because of its focusing on attempt to properly interpret the word "initial" in the Paris Convention, and because of potential reverting the 30 years practice of the Russian PTO on applying divisional application provisions of the law. Attempt to understand the word "initial" as used in the Paris Convention, without the context, solely literally can hardly be successful - this word is used not unanimously even across the Convention text itself, and also across various language versions of the Convention: it is used 3 times in Spanish and French versions in two contexts, 4 times in English version in 3 contexts and 5 times in Russian version in four contexts. Logical analysis of Paris Convention provisions setting forth capability of the applicant to divide the application into a certain number of divisional applications tells that there is no restriction as to which application contains more than one invention - it can well be a divisional one that in its turn can be "divided". And the consequences of potential placing numerous of patents granted on divisional-from-divisional could not be estimated even approximately.

Therefore, no one was surprised that the Presidium decision was appealed by AstraZeneka AB and the Russian Patent Office, and these appeals were scheduled by the Supreme Court for hearing as separate cases, although one after another on the same day.

On June 04, 2024 the Russian Supreme Court ended this intriguing story by cancelling the Presidium of IP Court decision and retaining in force the first instance IP court decision that confirmed lawfulness of divisional application chaining - capability of the applicant to file as many applications as desired dividing them from divisional applications regardless of how many previously filed divisional applications exist in such chain.

Summarizing, finally the Russian law provisions on divisional applications got judiciary interpretation of the highest instance and can be understood and interpreted unanimously. Does that mean the end of the story? In the scope of the patent procedure and regulations - likely yes. Can the story continue in another branch of the law, as it happened in Italy especially with pharma inventions? It may well be so ...

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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