Patents, trade marks, copyright and designs in Russian Federation: overview
A guide to intellectual property law in the Russian Federation. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.
To compare answers across multiple jurisdictions, visit the Patents, trade marks and designs Country Q&A tool.
This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.
Rospatent grants patents for:
The application must meet minimum formalities and substantive requirements.
Formalities. Formalities differ depending on whether the application is an original application directly made in the Russian Federation, where the provisions are set out in Article 1374 (Part IV, Civil Code), or whether the application is made through the Patent Cooperation Treaty 1978 (PCT) or the WIPO Paris Convention for the Protection of Industrial Property 1883 (Paris Convention), claiming priority from earlier inventions. Formalities include, for example, the full name and address, copy of the abstract, specification drawings (if any) and claims.
Substantive requirements. The subject matter of a patent for an invention must be a technical solution in any area related to a product or a process (Article 1350, Part IV, Civil Code). A product includes a:
Culture of cells of plants or animals.
A process is a method of conducting actions on a material object with the help of material means.
An invention is patentable if it (Article 1350(1), Part IV, Civil Code):
Is new (that is, it is not known from the prior art (Article 150(2), Part IV, Civil Code).
Has an inventive level (that is, for a specialist, it does not obviously follow from the level of technology (Article 150(2), Part IV, Civil Code).
Is industrially applicable (that is, it can be used in industry, agriculture, health care, or other branches of the economy, or the social sphere (Article 150(4), Part IV, Civil Code).
In relation to patents for utility models, a utility model must be a technical solution relating to a device. It is patentable if it is (Article 1351, Part IV, Civil Code):
Unlike inventions, there is no separate requirement that it have an inventive level (that is, it is unobvious (see above)) but the novelty for utility models should be substantial, that is, related to the features actually participating in the technical result.
Patents for inventions (but not utility models) can also be granted by the Eurasian Patent Organisation (EAPO) (www.eapo.org) for coverage in its member states: Turkmenistan, Belarus, Tajikistan, Russian Federation, Kazakhstan, Azerbaijan, Kyrgyz Republic, Moldova, and Armenia. The procedural and substantive requirements strongly resemble applications filed directly in Russia, but are not identical. EAPO patents are not discussed further in this chapter.
The following subjects are not patentable as inventions or utility models (Article 1350(4), Part IV, Civil Code):
Solutions involving the external form of manufactures and directed at the satisfaction of aesthetic needs.
Rules and methods for games and for intellectual or economic activity.
Solutions consisting only of the presentation of information (this includes business processes).
Patents as inventions or utility models will not be granted in any circumstances for:
Plant varieties, breeds of animals and biological methods of obtaining them.
Integrated circuit layouts.
There is no official procedure to oppose a pending application for a patent for an invention or utility model. However, a letter can be written to the application examiner. The letter will be considered, but the examiner will not enter into substantive correspondence.
A third party can bring a request to cancel an existing patent. This request begins with an administrative procedure before the Board of Patent Disputes of Rospatent (Article 1248, Part IV, Civil Code). An appeal against the decision of the Chamber of the Board of Patent Disputes can be filed with the court.
An issued patent can be challenged on the following grounds (Article 1398, Part IV, Civil Code):
Overly broad or unsupported claims.
Lack of priority as against other co-pending applications.
Improper identification of inventors and failure to include proper inventors (this last ground is for the purposes of challenging the patent directly in a court action and not initially in the Patent Chamber).
The term of patent protection differs for patents for inventions and utility models:
Patents for inventions: 20 years from the filing date (Article 1363, Part IV, Civil Code). Protection starts from the date the patent is issued, that is, the date of a positive decision on the issuance of the patent and its entry onto the State Register of Inventions (Articles 1363 and 1393, Part IV, Civil Code). For an invention relating to a medicine, pesticide or agrochemical substance, there is a possibility of extension for not more than five years, depending on the time when permission for use was first obtained.
Patents for utility models: ten years, renewable for a further three years.
In the time period between the filing date and the date the patent is issued, the patent receives temporary legal protection (Article 1392, Part IV, Civil Code). This means that anyone using the invention in that patent must pay the patent holder monetary compensation once the patent is issued.
The owner of a patent has the exclusive right to use the invention or utility model by any means (Article 1358, Part IV, Civil Code). This means that the owner can bring proceedings against a party who "uses" the patent, including by:
Importation of the product into Russia.
Preparation of the product.
Proposal for sale of the product.
Sale or other introduction of the product into commerce for example as a component of a larger article such as a car.
Storage of a product for the above purposes.
Any of the acts set out above in respect of a product obtained directly by a patented method.
The operation of a device in accordance with a patented method.
Implementing the method in which the invention is used.
Generally, the Russian commercial courts (known as Arbitration Courts) deal with patent infringement actions. When one or more private individuals not registered as entrepreneurs are involved, the matter might be heard by the courts of general jurisdiction. A new IP court is expected in February 2013 but the scope of its jurisdiction and powers has not yet been finalised.
The commercial courts can decide that the defendant's conduct does not infringe on one or more of the following grounds:
The method or product used by the defendant does not fall within the scope of the patent claims.
The acts complained of are the subject of a licence.
The defendant has rights of prior use (Article 1361, Part IV, Civil Code).
The government uses the invention (Article 1360, Part IV, Civil Code).
The patent is used under a compulsory licence obtained by reason of failure to use or by reason of an overlapping invention (Article 1362, Part IV, Civil Code).
The claimant is not the owner of the patent by reason of assignment.
Exhaustion of rights.
The patent was previously revoked for non-payment of maintenance fees.
A limitation date within which to bring proceedings has expired.
The defendant's conduct was exempt because it constituted (Article 1359, Part IV, Civil Code):
use in extraordinary circumstances, such as natural disasters;
personal non-commercial use;
one-time preparation of pharmaceutical preparations; and
importation with the consent of the patent holder.
Invalidity is not a direct defence to an infringement action in the commercial courts. A separate claim for invalidity must be brought before the Board of Patent Disputes (see Question 4).
The available remedies for patent infringement are primarily set out under Article 1252:
Recognition, that is, affirmation of the patent right.
A permanent injunction terminating the activities infringing the right.
Seizure of the infringing articles and devices used to manufacture them.
Publication of the decision concerning infringement identifying the parties.
A trade mark right can be obtained by:
Protection under international registration, under the WIPO Madrid Agreement and Protocol.
Official recognition of a trade mark as well-known.
A trade mark is a designation that serves to individualise goods of legal entities or individual entrepreneurs (Article 1477, Part IV, Civil Code). Therefore, a Russian or foreign owner of the trade mark can only be a legal entity or individual entrepreneur.
A trade mark can be:
A word, image, a three-dimensional object and other forms or combinations of these forms.
Registered in any colour or in any colour-combination.
Service marks (that is indications serving to individualise work performed or services rendered) are protected in the same way as trade marks.
Rospatent can refuse to register a trade mark on a wide number of grounds set out in Article 1483 of the Civil Code. They are divided into three main categories:
Absolute grounds concerning, among others, lack of distinctiveness, for example, the designations are not distinctive or have come into general usage as designations for goods of a certain kind.
Absolute grounds concerning, among others, trade marks which are distinctive but, for example, are false or capable of misleading a consumer concerning goods or the manufacturer of goods.
Conflict with prior rights that are subject to another owner's consent, for example, designations that are identical or confusingly similar to another person's trade marks applied for or registered for similar goods.
The owner of a patent has the exclusive right to use the trade mark to individualise goods, works or services for which the trade mark has been registered, for example by placing the trade mark (Article 1484, Part IV, Civil Code):
On the goods.
When works are performed or services are provided.
In offers for the sale of goods, performance of works, and so on.
On the internet, including in a domain name or in other address methods.
No other party has the right, without permission, to use designations which are similar to another party's trade mark over goods, designed to mark the goods out as individual, or of uniform goods, if this use might result in confusion.
The commercial courts currently try trade mark cases (see Question 7). However, a new IP Court is planned for February 2013. Under the proposed new scheme, infringement actions and appeals at the first instance would still be heard in the commercial courts but a further appeal would be heard by the IP Court. A final appeal would be heard in the Supreme Commercial Court.
The commercial courts can decide that the defendant's conduct does not infringe on one or more of the following grounds:
Non-similarity of the marks.
Non-similarity of the goods.
The claimant is not the owner of the mark by reason of assignment.
Exhaustion of rights.
An expired limitation date.
Invalidity is not a direct defence to an infringement action in the commercial courts. A separate claim for invalidity must be brought before the Board of Patent Disputes (see Question 4). A trade mark can be revoked on any of the grounds set out in Question 14.
The following remedies are available in the case of counterfeits (Article 1515, Part IV, Civil Code):
Removal from circulation and destruction of any counterfeit goods, labels, packages of goods on which the illegally used trademark or a confusingly similar designation has been placed.
If allowing the goods to remain in circulation is in the public interest, the right holder is entitled to demand removal of the illegally used trademark or a confusingly similar designation that has been placed on the counterfeit goods, labels and packages of goods.
In all other cases, a person who has infringed an exclusive right to a trademark that is not a counterfeit can be required to remove the trademark or a confusingly similar designation from products or services, including documents, advertisements and billboards.
The trade mark owner is also entitled to claim actual damages or, alternatively statutory damages either in an amount ranging from RUB10, 000 to RUB5, 000,000 at the discretion of the Court (as at 1 March 2012, US$1 was about RUB29.5). Alternatively, statutory damages of double the value of the goods, or double the value of a reasonable royalty, can be claimed.
Copyright exists in any qualifying work on its creation. Qualifying works include:
Intellectual rights to works of scholarship, literature and art (Article 1255, Part IV, Civil Code).
Numerous types of work, including literary works, computer programs and so on (Article 1259, Part IV, Civil Code).
Databases (Article 1334, Part IV, Civil Code).
Copyright is only registrable, on an optional basis, for computer programs and databases (see Question 22). However, it is advisable as registration offers proof of authorship and date of creation for subsequent works.
Registration is made with Rospatent for details of the procedure see www.fips.ru and www.rupto.ru. It is entered on the register of computer programs and databases and published in an official gazette. Assignments must also be registered.
Copyright lasts for 70 years. The start of the term depends on the circumstances, for example (Article 1281, Part IV, Civil Code):
70 years from the author's (or the last co-author's) death.
For anonymous or pseudonymous works, 70 years from the date of publication.
For a work published after the author's death, 70 years from the date of first publication.
Infringement proceedings can be brought for unauthorised (Article 1270, Part IV, Civil Code):
Reproduction in any material form.
Public display at a place open for free attendance, and so on.
Importation for the purpose of distribution.
Renting out of the work.
Broadcasting of a work.
Communication of a work through cable transmission.
Translation or reworking of a work.
Implementing of an architectural plan.
Availability of work for general knowledge so that any person may obtain access to it (for example, web sharing).
There are also certain moral rights accorded to authors which might be violated.
The following are defences to a copyright infringement action:
The claimant is not the owner of the work.
There was no copying.
There is a licence.
The term expired.
A limitation period applies.
Fair use, including (Articles 1273, 1275 to 1278, and 1280, Part IV, Civil Code):
citation for scientific, critical or similar purposes;
use of an educational nature;
reproduction relating to current economic, political social and religious matters;
reproduction of political speeches, addresses and so on, in an amount justifiable for information purposes.
Article 1252 sets out remedies for the copyright owner, which are the same as for patent infringement (see Question 9). In addition, the copyright owner is entitled to (Article 1301, Part IV, Civil Code):
Actual damages or statutory damages.
Double the value of the goods.
Double the value of the licence right.
There is no specific opposition procedure for design applications, although a letter can be written to the examiner (see Question 4).
The Board of Patent Disputes can revoke a registered design on the following grounds (Articles 1363, 1398 and 1399, Part IV, Civil Code):
Inappropriate subject matter.
Lack of novelty and originality.
Further, registered designs can be revoked in the Arbitration Courts for improper identification of inventors and failure to include proper inventors.
The same grounds apply under Article 1358 as for patents (see Question 6).
See Question 7.
Defences for non-infringement include that, on a construction of the design illustrations and in the list of essential characteristics, the complained-of article does not use all of the essential characteristics. Otherwise, the same non-infringement defences available for patents also apply (see Question 8).
Invalidity is not a direct defence to an infringement action in the commercial courts. A separate claim for invalidity must be brought before the Board of Patent Disputes (see Question 4). A registered design can be revoked on any of the grounds set out in Question 32.
See Question 9.
There is no specific protection for unregistered designs, although they may be protectable under copyright (see Questions 22 to 28).
Confidential information can be protected as a production secret (Chapter 75 Right to a Secret of Production (Know How), Part IV, Civil Code).
A production secret can be information of any nature (for example production, technological, economic, organisational information) without restriction as to subject-matter. The information must have actual or potential value, and in addition:
There must not have been free access by others to the information.
The holder of the information must have imposed a regime of commercial security.
The right in confidential information survives for as long as confidentiality is maintained (Article 1467, Part IV, Civil Code).
Others who have independently developed similar information acquire contemporaneous rights to that information (Article 1466, Part IV, Civil Code).
There is an exclusive right to a result of intellectual activity and others cannot use this right without permission (Article 1229). Know-how is such a right (Article 1465, Part IV, Civil Code).
Unauthorised use can include either (Article 1472, Part IV, Civil Code):
Unlawfully receiving information and then disclosing or using it.
Receiving information under an obligation of confidentiality and then misusing or disclosing it.
The following defences are available to claims for unauthorised use of confidential information:
The know-how was not received or used, or know-how was developed independently and in good faith (Article 1466).
The know-how was no longer confidential (Article 1467, Part IV, Civil Code).
The know-how was conveyed without an adequate regime of secrecy (Article 1465, Part IV, Civil Code).
When the know-how was accidentally received, the defendant was unaware the use was unlawful (Article 1472, Part IV, Civil Code).
See Question 9.
The regulatory authority
Federal Service for Intellectual Property, Patents and Trade marks (Rospatent)
Main areas of responsibility. Patents, design, trade marks, and limited issues of copyright.
Guidance on application procedure. See website above.