Eurasian invention patent revoked in Kazakhstan

In August 2023, a one and a half year court proceeding has come to an end, where Bolotov & Partners represented Abdi Ibrahim Global Pharm, a pharmaceutical company against a major international pharmaceutical corporation. The claim was filed in relation to a Eurasian patent for an invention on a medicinal composition, which, according to Abdi Ibrahim Global Pharm did not meet the patentability criteria “inventive step”. It should be underlined that this patentability criteria is probably the most subjective and complicated to prove. This criteria largely depends on the opinion of specialists in a particular field of science and technology. The specialist must determine whether the invention is “obvious” or not.

The court proceeding went all the stages and instances until the Supreme Court and was sent back to the City Court of Astana for a new trial. At the end, we managed to defend our client’s position (the courts of first and second instance, as well as the retrial court supported our position) and the disputed patent was completely terminated in the territory of the Republic of Kazakhstan. This decision allowed our client to make all the necessary preparations for launching at the market its own medicine, without infringing the third party’s patent rights.

It should be noted that during last court proceeding parties attracted a number of independent specialists/experts, including one from abroad. Three specialists from each of the parties and one specialist were attracted by the court itself.

We also emphasize the participation of the Eurasian Patent Organization (EAPO) in this court proceeding as a precedent. The EAPO acted as a third party and it was on its cassation appeal that the court case was returned by the Supreme Court for review. Previously, in similar cases concerning Eurasian patents, the EAPO, for various reasons did not participate in any of the procedural statuses in the Kazakhstanie courts. Neither as a defendant, nor as a third party. We hope that from now on the Eurasian Patent Organization will permanently participate in the court proceedings in Kazakhstan in the court proceedings related to the Eurasian patents. The participation of the EAPO will contribute to a full-fledged and comprehensive consideration of disputes and the formation of a single court practice.