Divisional Applications Put a Notch on Their Belt

The issue of the dormancy of divisional applications has recently cropped up on the IP scene in Russia. Ever since the adoption of Russian IP laws in the 1990s, hundreds of divisional applications have been filed and patents granted.

Article 1381(4) of the Civil Code provides that priority of an invention under a divisional application filed by the same applicant shall be established by the filing date of the initial application disclosing the invention. At the date of filing of the divisional application, the initial application should not be withdrawn and the initial application should not mature into the patent.

Over the years since the 1990s, patent applications have been divided and patents were granted claiming priority of the parent application. In 2022, Russian IP practitioners asked themselves a question about the meaning of the word “initial” when a divisional application is filed.

There is no such question if there are two applications: initial and divisional. The problem begins when a divisional application spawns from the application divided from the initial application and thus becomes a third application. The wording of Article 1381 includes the word “initial”. That word has a double understanding: it is clear that the original application is initial in relation to the divisional application. But if an application is divided from the said divisional application it may well be understood that the said divisional application is initial in relation to the second divisional. At least the law does not exclude such understanding.

KRKA Co., a Slovenian pharmaceutical company, initiated a court action (Case No СИП-552.2022) against the grant of patent No. 2746132. The patent belonged to global pharma company AstraZeneca, which obtained it as a result of assignment from another company. KRKA’s reason for going to court was that the filing and the priority dates, in its opinion, were established incorrectly. Patent No. 2746132 was granted on application No. 2020135467 which had been divided from No. 2017131447 which in its turn had been divided from No. 2013115635. Application No. 2013115635 was divided from No. 2008122558 (patent No. 2489151 dated August 10, 2013) which is divisional from No. 2004137489 with priority from May 20, 2002.

KRKA went to IP court. As can be seen, there was a chain of patent applications emanating from each other. The IP court listed all the applications and stated that there was a chain of patent applications and each application was initial in relation to the subsequent application. The law does not contain any limitations for dividing an application from another divisional application, nor does it limit the number of divisional applications. The issue of cancelled patents was raised but dismissed, and KRKA’s claims were not satisfied.

KRKA appealed the judgment at the appellate (cassation) level (Presidium) of the IP court and focused its attention on breaking the chain of applications, arguing that only one of them could be regarded as initial.

The cassation court interpreted Article 1381(4) of the Civil Code mentioned above in differently than the previous court. It explained that the article provides that only the first application should be regarded as initial instead of a prior application. The court added that there was no special explanation in the law about the difference between “initial” and “prior” applications. Further discussion of the court proceeded from the understanding that “initial” application and “prior” application are different. Since a patent on the initial application was granted in 2008, all subsequent divisional applications cannot rely on the filing date and priority of the very first one (see the text in bold above). Since the patent office incorrectly(?) established the priority date of the chain of applications, it incorrectly cited the prior art to evaluate novelty.

As a result, the cassation court accepted KRKA’s claims and obliged the patent office to reconsider its decision and satisfy the appeal of KRKA.

This time, AstraZeneca and the patent office jointly appealed the judgment at the Supreme Court. The Collegium of the Supreme Court reviewed and repeated arguments of both sides in previous judgments and cancelled the judgment of the cassation court in June 2024. The court interpreted the provision of Article 1381(4) in the same way as the patent office and the first instance of the IP court, i.e. for any divisional application its parent application will be “initial”. All divisional applications are linked by one parent application, and they will all have the same priority date. Should interpretation of the above provision be different, it would not be possible to file several divisional applications at all because they will never meet the novelty criteria and the first patent application and the patent issued upon it will make it impossible to grant patents on subsequent divisional applications.

The Supreme Court upheld the judgment of the first instance of the IP court rejecting KRKA’s claims. It would seem that the saga of divisional applications is over, but representatives of KRKA filed a supervisory complaint to the Supreme Court which is still pending.

The bottom-line ensuing from this story is that it should recognized that the relevant provision of the Civil Code may be differently understood by the patent office, several court instances and IP practitioners. The judgment of the Supreme Court certainly brings clarity to further divisional cases but in the long run it would be useful to initiate amendments to the Civil Code and avoid double understanding of the law by different persons.