Trademark patent trolling as a challenge to intellectual property law

At present, a trademark as a recognized valuable asset is the subject of speculation by unscrupulous persons – patent trolls, who pose a threat to the competitive business landscape not only in Russia, but all over the world. Despite the existing mechanisms for combating patent trolling, business entities face the lack of clear criteria for assessing the actions of such entities, which actualizes the need to study them. At the same time, the Russian doctrine concerning the activities of patent trolls actively considers the peculiarities and some aspects of this phenomenon as a type of abuse of right. In this regard, the purpose of the study was to reveal a set of tactical approaches of patent trolls as legal barriers that can have a negative impact on business entities both with and without exclusive rights to trademarks. The study provides an overview of the logic of choosing one or another approach that can be used by patent trolls to «strike» an entrepreneur and includes the following: taking into account the presence or absence of a registered trademark; the choice of the actual designation to be registered as a trademark by a patent troll; monitoring the scope of actual use of the trademark by a person. Artificially created barriers that have a negative impact on business also include administrative speculation, manifested in the form of filing trademark applications without the intention to pay the fee for legally significant actions. The result of the research in this regard is a socially useful classification and review of tactical approaches of patent trolls, the publicity of which is a preventive measure to protect business against negative impact from unscrupulous persons. Changes in the Russian legal regulation are considered, and it is proposed to clarify the order of administrative procedure, which together will contribute to counteracting patent trolling. When systematizing the tactics of patent trolls’ behavior, such research methods as empirical and statistical, as well as the method of system analysis were used. These methods allowed us to qualify the studied approaches of patent trolls as abuse of right.

1. Vorozhevich, A. S. (2013), “Patent trolling: essence, history, legal mechanisms to combat it”, Zakon, no. 9, pp. 68–79.

2. Pankina, G. V., Sashina, L. A., Slyhov, A. A. and Tereshkina, T. M. (2011), “Patent raiding is coming to Russia”, Kompetentnost”, no. 4–5 (85–86), pp. 34–41.

3. Barabashev, A. G. and Ponomareva D. V. (2021), “Patent Trolling and the Legal Regulation of Artificial Intelligence (United States of America)”, Vestnik Universiteta imeni O. E. Kutafina (MGYUA), no 1 (77), рр. 39–46.

4. Vasijev, D. V. (2019), “Patent trolling: foreign experience and law enforcement practice in Russia”, Obrazovanie. Nauka. Nauchnye kadry, no. 4, рр. 97–101.

5. Vasiljev, D. V. and Laskin А. A. (2020), “Law Enforcement Practice and Foreign Experience in Combating “Patent Trolling”, Gumanitarnoe prostranstvo, vol. 9, no. 1, рр. 83–93.

6. Prohorov, V. A. (2024), “Abuse of the right when applying to the court with a claim for recovery of compensation for infringement of the exclusive right to a trademark”, Vestnik Udmurtskogo universiteta. Seriya Ekonomika i pravo, vol. 34, no. 4, рр. 709–715.

7. Dyatlova, A. V. (2021), “Countering Patent Trolling (US and Chinese Experience)”, Sovremennaya nauka: aktual’nye problemy teorii i praktiki. Seriya: Ekonomika i pravo, no. 6, рр. 106–110.

8. Mushavkina, P. (2024), “Criteria for determining abuse of right by “patent trolls”, Pravovaya zashchita intellektual’noj sobstvennosti: problemy teorii i praktiki: Sbornik materialov XII Mezhdunarodnogo yuridicheskogo foruma (IP Foruma), [Legal Protection of Intellectual Property: Problems of Theory and Practice: Proceedings of the XII International Legal Forum (IP Forum)], in 2 volumes, Kutafin Moscow State Law University (MSAL), Moscow, Russian Federation, February 16–17, 2024, рр. 249–252.

9. Vorozhevich, A. S. (2020), Zashchita isklyuchitel’nyh prav na patentoohranyaemye objekty [Protection of exclusive rights to patent-protected subject matter], monograph, Statut, Moscow, Russia.