IP protection in Russia explained by Shelly Pritchard, International Market Platforms and Intellectual Property specialist at International Trade Matters
It is essential as a business to do all you can to secure your IP.
To safeguard intellectual property against infringement by other businesses and to protect it in the courts your sole right to use, make, sell or import it stop others using, making, selling or importing it without your authorisation, earn royalties by licensing it, exploit it through strategic alliances and potentially making money by selling it in the future.
Design law in Russia is integrated in Part IV of the Civil Code. Further provisions regarding the application procedures are described in the Rules for Design Patent Applications and the Guide to Patent Application Documents.
The generally known codes and standards of international law and treaties are a fundamental part of the Russian judicial system. International treaties are applied, and when a treaty of this type is contrary to Russian civil law, the international treaty will override. Russia is signing the following international treaties regarding design problems:
- Locarno Agreement 1
- The agreement on aspects of intellectual property in trade.
- Paris Convention on the Protection of Industrial Property
- Hague Agreement concerning the International registration of industrial designs
In Russia, sole rights to design are recognised by registration in the State Register of Industrial Design and are certified by design patents published by the Russian Patent and Trademark Office (Rospatent).
When an employee creates a design in the performance of his duties or in a particular task assigned to the employer, the employer has the right to request a design patent, unless otherwise specified in the contract. (for example, employment contract) between the employee and the employer.
If a design is produced on the basis of a contract, the customer has the right to request a design patent (unless the contract stipulates otherwise). In that case, the contractor may apply the design for its sole purpose under the terms of a free and non-exclusive license.
The outer form of a handmade creation or industrially produced product can be registered as a design. A design can be three-dimensional, two-dimensional or a combination of these.
What CAN’T be protected by a patent?
The protection of patents such as design cannot be guaranteed for:
- Solutions whose properties are solely determined by the technical function of the article
- Designs that may mislead customers with regard to the manufacturer or the place of manufacture of the item or to the goods for which the goods serve as a container, label or packaging
- Designs that mimic or replicate symbols, names or other official features or;
- Designs that violate public interest or the principles of humanity and morality
What CAN be patented?
In order to benefit from patent protection, a design is required to be ‘new and original’. The design is new if it is not known from information available globally before the priority date. A trial period of 12 months is scheduled for preliminary publication of the design by the author, the applicant or a person who has received information about the author or the applicant’s design.
A design is original if its essential characteristics are determined by the creative nature of the various visual aspects of the article, namely, if all the known designs produce the same general impression on the consumer of that design.
In determining the design’s novelty and originality, (on condition of earlier priority) all applications for patents, utility models and designs that are available to the public as well as applications for trade and service marks registration, which have previously been deposited with Rospatent and which are open to reviewing by any person will also be considered.
What does it cost?
The registration fee for a single design is Rb 1,700 (£20*) (For design groups (e.g. variants of a product or a group of products interconnected with one concept idea) Rb 1,700 (£20*) + Rb 700 (£8*) for each additional design within one application. Official fees for substantive examination are Rb 3,000 (£36*) (plus Rb 2,500 (£30*) for each design over 1 within the same application). Design patent registration fee is Rb 3,000 (£36*) and issuance fee is Rb 1,500 (£18*). The average cost associated with filing and patent assignments and applications is Rb 1,600 (£19*), including official attorneys ‘fees and patent attorneys’ fees.
For all design applications filed after January 1, 2015 the annuities for design patents are not charged – instead the design patent are to be renewed every 5 years (maximum 25 years). However, the official fees for this renewal procedure have not been established yet. As for the applications filed before January 1, 2015 the annual maintenance costs are Rb 1,700(£20*) for 3rd year and 4th year, Rb 2,500 (£30*) for 5th and 6th years, and up to Rb 24,000 (£286*) for 21 to 25 years.
The appeal fee for a rejection or grant decision is Rb 2,500 (£30*). The fee for objection against decision on recognition of a design application withdrawn is Rb 2,000 (£24*).
*GBP approx. Exchange rate as of 12-05-2018 at xe.com
It may be possible in certain cases to demonstrate a design is subject to copyright law, copyright protection might be used regardless of the protection of registered design. Copyright protection of an unregistered design begins with the start of work and lasts no more than 70 years.
An unregistered commercial image can also enjoy protection from copying and imitation under the rules of unfair competition.
Design applications are filed with Rospatent. Applicants who are not residents or do not have a registered office in Russia must appoint as their representative a patent attorney registered with Rospatent.
The application for design should include:
- an application for a patent for a design, indicating the name and address of the applicant and the author
- a set of demonstrations that fully reflect the features of the aesthetic aspects
- perspective drawing, ergonomic diagram and similar demonstrations, in which it is necessary to transfer the core of design and
- description of design.
The application should refer to a single design or a group of associated designs that constitute a single idea.
The application must be submitted in the Russian language. It must specify the name and address of the applicant, name and surname, citizenship and address of the author.
Design presentations (for example, photographs, drawings, computer works) should contain complete and detailed pictures of the product.
The description should contain:
- Locarno 2 and the title of the design;
- Projected use of the design;
- The nearest prior art;
- List illustrations and;
- The core of the project.
Design applications have official and factual research. A formal investigation is conducted to determine:
- The application contains all necessary documents
- Documents meet formal requirements and
- All necessary fees are paid.
The examination essentially checks the conformity of the patentability project (i.e. novelty and originality) and begins after a successful examination.
Changes in the design can be made at the request of the Examiner or under the Applicant’s initiative. However, changes must not essentially amend the design. The Examiner would have final say concerning this.
Once examined the design will be granted. The fee for contributions must be paid within four months after the grant. After payment of the fee, Rospatent leaves the design in the State Register of the Design and issues a patent for the project. Directly after registration, material on the design is published in the bulletin of Rospatent.
Publication includes depiction of the design. Rospatent registered projects can also be obtained through the Design view search engine for the EU Land Management Commission. All documents are available in public after the release of the patent.
If the applicant opposes the decision of the examiner, they may file an appeal to the Chamber of patent disputes established under Rospatent within seven months. Further complaints against the Rospatent can be filed with the IP Tribunal, general jurisdiction court or commercial court.
The design patent may be overthrown generally or partially at any time for the following valid reasons:
- Patent design is not suitable for legal requirements
- Patent adds or removes the essential characteristics of the structure (as indicated in the submission)
- Patents have been systematically compromised, when the number of applications on the same day is used in the same design
- The patent was granted with an incorrect creator or owner
The holder of a design is entitled to use the protected design. The range of protection covers products that give the informed consumer an identical impression as the patented design.
The manufacture, usage, importation, trade, offering for selling or any other form of marketing or storage of a registered design without the consent of the holder constitutes a breach. The product is considered patented if it incorporates all the essential features of the product patented design or a combination of features that gives the informed consumer the same general impression as the patented industrial design, provided that the products have a similar purpose.
Civil action for infringement of the design is filed with the commercial court in the location of the infringer. The IP Rights Court hears design infringement cases on appeal from the first-instance commercial courts and commercial appeal courts.
Available design solutions for patent infringement include:
- Compensation and reasonable legal fees
- Confiscation and destruction of counterfeit goods and
- Publication of the court order
The rights holder is entitled to claim the following compensation:
- From Rb10,000 (£120*) to Rb5 million (£60k*), determined on the basis of the assessment of the kind of the infringement by the Court or
- double royalty, which is normally required under similar circumstances for the legal use of the patented model
These remedies are also available for copyright infringement. However, the compensation that the right holder can claim instead of damage can also be twice the price of counterfeit copies of the work that contains the design.
Legal procedures for breach of registered or unregistered designs generally take between three and four months. Complex situations are able to postpone the procedure for one or two more months. If the case is challenged and all courts go through, the trial may take in excess of two years.
The administrative responsibility for the illegal usage of designs is established in the Code of Administrative Offences, which sets fines of Rb1,500 (£18) to Rb40,000 (£477*). The Code also provides for fines of between Rb12,000 (£143*) to Rb20,000 (£239*) for natural persons and Rb150,000 (£1.8k*) to Rb500,000 (£6k*) in the case of unfair competition in the form of a copy or imitation of an unregistered design.
*GBP approx. Exchange rate as of 12-05-2018 at xe.com
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Shelly Pritchard is International Market Platforms and Intellectual Property specialist at International Trade Matters.