Before a patent owner seeks an order stopping a competitor’s sales in Iran, three files should be ready: evidence of infringement, a plan for urgent relief and a defensible account of the patent’s validity. A weakness in any one can change the value of the other two.
Shahnoosh Haeri and Sadegh Shamshiri contributed HENGAM’s chapter on Iranian patent litigation to Legal 500’s Country Comparative Guides. This companion examines the preparation behind a claim. Our general patent guide explains obtaining and maintaining protection; here the question is how to turn a registered right into a case that can be proved.
Build the evidence around the Iranian claims
The statutory starting point. Article 18 makes the claims central to the scope of protection. Article 70 addresses acts occurring after registration and preserves the exceptions in Article 38. The initial comparison should therefore use the Iranian granted claims, the relevant dates and the particular acts alleged. A foreign grant or a product’s visual resemblance cannot replace that analysis. Read Article 18 and Article 70.
Our practical recommendation. Prepare a claim-by-claim evidence schedule before drafting the pleading. For each technical feature, identify the document, sample, test or observation supporting its presence in the accused product. Record who obtained the evidence, when it was obtained and which version or batch it concerns. Mark gaps expressly: an inference from a brochure and a result from testing a purchased sample are different kinds of support.
Keep the Iranian registration, granted specification and claims, renewal records and relevant ownership documents together. Supply foreign counsel’s technical analysis alongside the Iranian documents, with terminology reconciled for the Persian pleading. The purpose is to let counsel identify both what can be alleged now and what further investigation is necessary.
Prepare for the expert’s questions
Reported practice. In our Legal 500 chapter, we describe the central role court-appointed experts play in interpreting claims and comparing them with the accused product or process. That is a practice observation, not a promise about the evidence a particular judge will order.
The Code of Civil Procedure permits expert referral under Article 257. Article 260 provides a one-week period after notification for the parties to submit written observations on the opinion. Articles 263 and 265 address clarification and opinions inconsistent with established circumstances. Counsel should organise a technical review team before an opinion arrives, rather than assemble it during the response period. Civil Procedure Code, Articles 257–265.
A useful response identifies the precise step in the reasoning that needs attention: a claim term construed without its context, an untested assumption about a product, or a comparison that omits a feature. Explain how the point could affect the conclusion and identify the evidence needed to resolve it. General disagreement gives the court less to work with.
For a process patent, Article 71 provides a conditional reversal of the burden in civil proceedings: convincing evidence must indicate possible use of the patented process, and reasonable efforts must have failed to establish the process actually used. Preserve a record of those efforts. The provision also protects production and trade secrets submitted in the circumstances it describes; agree how sensitive material will be presented before circulating it. Read Article 71.
Plan urgent relief as an operation
Article 73 permits applications for seizure and interim restraints on manufacture, sale or importation, with execution by customs or judicial officers where the products are at customs. Its note refers the procedure to the Civil Procedure Code. An application should identify the conduct to be restrained and the products and locations to which the requested order would apply. Read Article 73.
Urgency requires an explanation grounded in dates and events. Prepare the imminent shipment, launch or other threatened harm, supporting documents and the requested relief as one coherent account. Counsel must also plan security, service and implementation. The existence of an infringement allegation does not itself settle those procedural questions.
| Point | Consequence for preparation |
|---|---|
| Urgency and hearing | Articles 310, 314 and 315 govern urgency and consideration without inviting the parties where urgency warrants it. Provide evidence supporting the requested timing. |
| Security | Article 319 requires appropriate security for potential loss. Arrange authority and funding; do not assume a universal deposit amount. |
| Proceedings on the merits | If no action has already been filed, Article 318 requires filing within 20 days of issuance and submitting proof to the issuing court. Failure permits discharge on the opponent’s request. |
| Execution and exposure | Article 320 permits execution before service where urgency warrants it. Article 323 addresses liability where the required action is not filed or the claim is rejected. |
These provisions should be read together in the Civil Procedure Code. Our recommendation is to prepare the merits claim and the urgent application together. A successful early application creates immediate work: funding security, identifying the goods, coordinating execution and meeting the follow-on deadline.
Test validity before asking the court to act
Article 67 includes grounds concerning excluded subject matter, substantive patentability, disclosure, entitlement, non-use and unjustified enlargement of protection. Review the likely attack on each asserted claim before choosing the scope of the action. A grant is the starting document for this exercise, not the end of the enquiry. Read Article 67.
For international portfolios, collect the relevant priority and prosecution documents, earlier publications and material amendments. Explain which documents concern the Iranian right and which merely provide technical or historical context. A favourable outcome elsewhere may assist the analysis, but the Iranian claim and applicable law still need their own assessment.
Non-use needs a separate chronology. Article 67(5) addresses the absence, without justified excuse, of effective measures to make or use the invention in Iran after four years from filing or three years from registration, whichever period is longer. Record both dates and the evidence of activity in Iran. Manufacturing steps, use records, licensing arrangements and obstacles may be relevant to investigate, but no item should be treated as sufficient merely because it appears on a checklist.
The difficult question is what the facts establish about effective measures and justified excuse. Avoid assuming that an intention to enter the market, a licence on paper or a particular commercial obstacle resolves it. Those are matters for a documented, case-specific assessment.
The date from which invalidation operates also matters. Article 67, Note 2 distinguishes non-use invalidation, effective from the final judgment, from the general filing-date rule; Note 3 gives a separate rule for unjustified alteration. Identify the pleaded ground before assessing its implications for past conduct. These distinctions can affect the litigation strategy even when the immediate commercial objective is to stop future sales.
The first instruction to local counsel
Send a compact brief explaining the commercial objective, the Iranian patent and claims relied on, the suspected acts and their dates, the evidence already held, and any immediate deadline. Add the principal validity concerns and the non-use chronology. Identify a technical contact who can respond quickly to questions from counsel or an expert.
That preparation allows the legal and technical teams to assess whether to seek urgent relief, gather further evidence or narrow the proposed claim. HENGAM’s patent practice and litigation team can assist with that assessment. Contact us about an Iranian patent dispute.
Sources and scope
This analysis draws on the 2024 Industrial Property Protection Act (WIPO Lex, Persian text), the Civil Procedure Code (WIPO Lex, Persian text) and HENGAM’s Legal 500 chapter. Links to individual Act provisions lead to HENGAM’s English rendering. Statutory propositions, the chapter’s reported practice and our preparation recommendations are distinguished above. Application to a particular patent, procedural changes and current court arrangements require review when instructions are received.