Annex to Explanatory Notes Regarding Draft Federal Law “On Changes and Additions to the Patent Law of the Russian Federation”
| Proposed Changes and Additions (Article 1 of Draft Federal Law “On Changes and Additions to the Patent Law of the Russian Federation”) | Brief Explanations and Comments |
| Those portions which are to be deleted or replaced are struck through. | Those spots where new or replacement text, as appearing in this middle column, is to be inserted are indicated by * marks. | The portions indicated by * marks are to be inserted in the text appearing in the left-hand column in those spots which are indicated by identical * marks. |
| PATENT LAW
OF THE RUSSIAN FEDERATION
(currently effective wording) | | |
| SECTION 1 GENERAL PROVISIONS | | |
| Article 1. Relations Governed by This Law | | |
| This Law and legislative acts issued on its basis by constituent republics within the Russian Federation shall govern proprietary and related personal non‑proprietary relations arising in connection with the development, legal protection and use of inventions, utility models and industrial designs (hereinafter referred to as "industrial property assets"). | | Under the Russian Constitution (Article 71/n/), intellectual property regulation falls within the competence of the Russian Federation. |
| Article 2. Russian State Patent Office | | |
| * The Russian State Patent Office (hereinafter, the “Patent Office”) shall, in accordance with this Law, implement a uniform policy of protecting industrial property assets in the Russian Federation, accept for its consideration applications filed for inventions, utility models and industrial designs, carry out their examination and state registration, grant patents, publish official reports, issue patent rules and explanations regarding the application of this Law, and perform other functions in accordance with the Statute of the Patent Office as approved by the President of the Russian Federation. The sources of financing to fund the activities of the Patent Office shall include patent fees, appropriations out of the Russian federal budget, and payments for services and materials provided by the Patent Office. | * For the purposes of implementing a public policy in the field of legal relations associated with the legal protection of industrial property assets, an independent federal executive authority for patents and trademarks (the “Patent Office”) shall be set up within the system of state agencies of the Russian Federation. Acting independently and through specialized state institutions subordinate thereto, the Patent Office shall perform the functions stipulated by this Law: - to accept for its consideration applications filed for the grant of patents for inventions, utility models and industrial designs; - to perform their examination and issue office actions upon its outcome to grant or to refuse the grant of the patents sought; - to carry out the state registration of industrial property assets; - to issue letters patents; - to publish official reports; - to create and compile information products; - to pursue international cooperation in matters related to the legal protection of industrial property assets; - to carry out the qualification and registration of patent attorneys, - to issue patent rules and other regulatory legal acts on the application of this Law, including those governing applications filed pursuant to international agreements to which the Russian Federation is party and title documents effective on Russian territory under such agreements, in accordance with its competence; and - to deal with other issues involved in the grant of patents to protect industrial property assets. | This amendment conforms to the Russian Civil Code Article 1028.2 of which provides for the establishment of a federal executive authority for patents and trademarks, and also aims to define the functions of the Patent Office and its subordinate organizations more clearly. |
| Article 3. Legal Protection of Inventions, Utility Models and Industrial Designs | | |
| 1. Rights in inventions, utility models and industrial designs shall be protected by the law and certified by * invention patents, utility model certificates and industrial design patents (hereinafter, "patent"). | * patents. | It is inadvisable to use different names for title documents issued for different types of industrial property assets subject to protection under the Patent Law, since all of such documents in equal measure grant their owners exclusive rights in such assets. |
| 2. A patent shall evidence the priority date and authorship of an invention, utility model or industrial design and exclusive rights to use the same. | | |
| 3. An invention patent shall be valid for a term of twenty years as of the date on which the appropriate application is * received by the Patent Office. A utility model ** certificate shall be valid for a term of five years as of the date on which the appropriate application is *** received by the Patent Office. The term of a utility model **** certificate shall be extended by the Patent Office at its owner’s request, but by not more than for three years. An industrial design patent shall be valid for a term of ten years as of the date on which the appropriate application is ***** received by the Patent Office. The term of an industrial design patent shall be extended by the Patent Office at its owner’s request, but by not more than for five years. ****** | * filed with the Patent Office. Should the use of an asset incorporating an invention require an authorization from a duly empowered agency in accordance with applicable legislation of the Russian Federation, the term of the patent for such invention shall be extended by the Patent Office at the patent owner’s request for the period of time it took to obtain such authorization after the filing of the respective application, but by not more than five years. The procedure for extending the term of a patent shall be prescribed by the Patent Office. ** patent *** filed with **** patent ***** filed with ****** The application filing date for the purposes of calculating the term of a patent granted under a divisional application with the priority determined in accordance with Article 19.5 of this Law shall be constituted by the date on which the original application was filed with the Patent Office. | Here and elsewhere in the text, the notion “filing” (of an application) replaces the notion “receipt” (of an application) so as to ensure the uniformity of the text in which these terms appear with those portions of the Law which use the notion “filing” within the meaning of the Paris Convention for the Protection of Industrial Property. The furnishing of a possibility to have the term of an invention patent extended will enable the patent owner to exercise his rights to a fuller extent, and is consistent with world patenting practice, including that in evidence in the EU with which the Russian Federation has a Partnership Agreement, obliging it to ensure legal protection for industrial property at a level at least as high as that available in the EU. Here (**) and elsewhere, the change of the title document for a utility model complies with the proposal to use the same name to denote title documents for all industrial property assets subject to protection under the Patent Law. This amendment will bring the Patent Law into line with Articles 4G(1) and 4G(2) of the Paris Convention for the Protection of Industrial Property. |
| 4. The scope of legal protection conferred by an invention patent and a utility model * certificate shall be determined by their respective claims, while the scope of legal protection conferred by an industrial design patent shall be determined by the combination of material features as ** shown on photographs of the product (mock-up, drawing). | * patent reflected in the product’s representations (mock-up, drawing) and enumerated in the list of the material features of such design. The claims of an invention and utility model may be interpreted with the help of their specifications and drawings. | Without this amendment, the list of the material features of an industrial design, which is provided for by the fifth paragraph of Article 18.2 of the Law and is an analog of what claims are in the case of an invention and a utility model, will not perform its function. The use of the list in accordance with its designated purpose will rule out the influence of subjective factors on the consideration of disputes over the use of industrial designs and infringements of patent owners’ rights. The words “shown on photographs” are replaced by “reflected in representations” with due regard for international practice which allows the use of not only photographic images. The additional sentence describing the role of specifications and drawings will make it possible, on the one hand, to stress that the scope of rights is determined not by the claims alone and, on the other, to allow for the use of specifications and drawings in cases where a feature, as expressed in the claims, is not defined clearly enough for the purpose of deciding whether particular features are equivalent (a similar provision is contained, for example, in Paragraph 14 of the German Patent Law and in Article 69 of the European Patent Convention). Negative consequences of the Law in its existing wording, which does not include the proposed pointer to the role of specifications and drawings, may also include an undue expansion of patent owners’ rights at the expense of third parties’ interests. |
| 5. * No legal protection shall be accorded hereunder for those inventions, utility models and industrial designs which have been classified by the State. The procedure for the treatment of classified inventions, utility models and industrial designs shall be governed by special legislation of the Russian Federation. | * The procedure for granting legal protection for duly classified inventions, utility models and industrial designs and for the treatment of classified inventions shall be governed by legislation of the Russian Federation on classified inventions. The provisions set out in Article 3 of this Law shall not apply to duly classified utility models and industrial designs. | The Bill “On Classified Inventions” refers to a number of provisions in the Patent Law and, therefore, it is more appropriate here to make emphasis on the specific features of legal protection for such inventions rather than on the denial of such protection. The proposed text provides for the enactment of special legislation on legal protection exclusively for classified inventions, as the lack of such protection tells most adversely on efforts to encourage technical progress and ensure information security. As far as utility models are concerned, legal protection is granted in their case without any substantive examination. This does not guarantee that a device protected as a utility model actually represents a “contribution” to technical progress. If, however, such device does constitute such a contribution, there is no obstacle to obtaining legal protection for the same technical asset as an invention. The legal protection of classified industrial designs is not topical from this point of view, since they serve basically aesthetic purposes and aim to improve a product’s appearance which, if kept secret, would contradict these purposes. |
| SECTION II CRITERIA OF PATENTABILITY | | |
| Article 4. Criteria of Invention Patentability | | |
| 1. An invention shall be granted legal protection it if is new, constitutes an inventive step and is industrially applicable. An invention shall be deemed new if it is not known from the state of the art. An invention shall be deemed to constitute an inventive step if, having regard to the state of the art, it is not obvious to a party skilled in the art. The state of the art shall comprise any information which entered the public domain in the world before the priority date of the invention. During the novelty testing of an invention, the state of the art shall * be held to include all applications for inventions and utility models of an earlier priority ** (if not subsequently withdrawn) which were filed in the Russian Federation by other applicants, as well as inventions and utility models already patented in the Russian Federation. An invention shall be deemed to be industrially applicable if it can be used in industry, agriculture, public health services and other fields of human endeavor. The patentability of an invention shall not be prejudiced by the disclosure of information relating to such invention by its author, the applicant or by any other party who received such information, directly or indirectly, from them, as a result of which the substance of the invention entered the public domain, if the application for such invention is filed with the Patent Office within six months of the date of such disclosure. The burden of proof in such case shall rest with the applicant. | * also ** , which were filed in the Russian Federation by other applicants and the materials comprising which may be inspected by any party in accordance with Article 21.6 or the second paragraph of Article 26 of this Law, | This amendment (*) underscores that applications are included in the state of the art in addition to data in public domain. Compared with the existing Law, this amendment (**) rules out a situation where an invention ruled to be unpatentable quite “lawfully” for the lack of novelty due to the existence at the time of the ruling of an application having an earlier priority becomes patentable if this application is withdrawn or deemed to have been withdrawn. In order to prevent this, the Law in its existing wording makes it necessary for wait for the final determination on the “fate” of the opposed application in order to make an unequivocal decision. Meanwhile, laws of foreign countries, which provide for the publication of applications, make an extra condition to be met by earlier applications for their inclusion among the state of the art in respect of later applications by requiring that the contents of such applications should enter public domain. Paragraph 3 of the German Patent Law, for instance, stipulates as follows: “(2) The state of the art shall also be held to include the contents of the following patent applications filed earlier, which entered public domain only on or after the date used as the determinant for the filing of a subsequent application: “(1) national applications as originally filed with the German Patent Office; “(2) European patent applications…; and “(3) international applications filed under the Patent Cooperation Treaty… if the German Patent Office is the agency named in the application.” The same approach is taken by the British [sic] Patent Act (Section 2/2/) and the Japanese Patent Law (Article 29-2). International and Eurasian patents are not mentioned because the proposed Article 39 spells out conditions for their equal treatment with Russian applications. |
| 2. * The subject matter of an invention may include a device, a process, a substance, a microorganism strain or a culture of plant or animal cells, and also the use of a known device, process, substance or strain for a new purpose. | * The subject matter that shall not be deemed to constitute inventions within the meaning of Article 4.1 of this Law shall include, but not be limited to: - discoveries, as well as scientific theories and mathematical methods; - proposals concerning solely a product’s appearance and aiming to meet aesthetic requirements; - plans, rules and methods for performing mental acts, playing games or doing business, as well as programs for computers; and - simple presentations of information. The provisions of this Article 4.2 shall exclude the possibility of including the above assets and activities among inventions only to the extent to an application for the grant of an invention patent relates exclusively to the said assets and activities as such. | The proposed wordings of this and the following clauses are based on Article 27 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), compliance with which is a condition precedent for Russia’s accession to the World Trade Organization (WTO), and are consistent with standard wordings already approved by the WTO (see, for instance, Articles 52 and 53 of the European Patent Convention). |
| 3. * The following shall not be recognized as patentable inventions: - scientific theories and mathematical methods;
- methods of economic organization and management;
- symbols, schedules and rules;
- methods for performing mental acts;
- algorithms and software for computers;
- projects and lay-out plans for structures, buildings and land sites;
- proposals concerning solely a product’s appearance and aiming to meet aesthetic requirements;
- lay-out designs of integrated circuits;
- plant varieties and animal breeds; and
- proposals contradicting the public interest, the principles of humanity and morals.
| * The following shall not be recognized as patentable inventions in accordance with this Law: - plant varieties and animal breeds; - lay-out designs of integrated circuits; and - inventions the use of or the publication of data regarding which goes against public order or morals, endangers human lives and health, animals or plants, or damages the environment contrary to the public interest. This notwithstanding, no use may be deemed to be of such nature solely because of being prohibited by the law or administration injunction. | The exclusion of lay-out designs of integrated circuits from the range of patentable inventions is likewise in line with TRIPS (this type of asset is dealt with by the Agreement’s special Section 6 according to Article 35 of which legal protection in this case is to be granted pursuant to the Intellectual Property Agreement for Integrated Circuits, which does not require that they necessarily be protected by invention patents). |
| Article 5. Criteria of Utility Model Patentability | | |
| 1. Utility models shall * be structural versions of producer goods, consumer goods and their components. ** A utility model shall be granted legal protection if it is new and industrially applicable. A utility model shall be deemed new if the combination of its material features is not known from the state of the art. The state of the art shall be held to include that information about devices having the same designated purposes as the utility model filed and about their use in the Russian Federation which entered the public domain in the world before the priority date of such utility model. The state of the art shall *** be held to include all applications for inventions and utility models of an earlier priority **** (if not subsequently withdrawn) which were filed in the Russian Federation by other applicants, as well as inventions and utility models already patented in the Russian Federation. A utility model shall be deemed industrially applicable if it can be used in industry, agriculture, public health services and other fields of human endeavor. The patentability of a utility model shall not be prejudiced by the disclosure of information relating to such model by its author, the applicant or by any other party who received such information, directly or indirectly, from them, as a result of which the substance of the utility model entered the public domain, if the application for such industrial design is filed with the Patent Office within six months of the date of such disclosure. The burden of proof in such case shall rest with the applicant. | * include devices. ** A utility model shall be deemed to meet the applicable criteria of patentability *** also **** , which were filed in the Russian Federation by other applicants and the materials comprising which may be inspected by any party in accordance with Article 21.6 or the second paragraph of Article 26 of this Law, | This amendment (*) is consistent with the Russian practice of according legal protection to utility models, and more accurately reflects the substance of the given asset than the existing formulation which relies on the all-embracing notion “producer goods and consumer goods”. This amendment (**) rules out a conflict with Article 23.1 of the Patent Law, which provides for the grant of legal protection to utility models without testing them for patentability. As to this amendment (****), see the explanations regarding Article 4.1 of the Patent Law. |
| 2. The following shall not be protected as utility models: * - processes, substances, microorganism strains, cultures of plant and animal cells, and their use for a new purpose; and - subject matter referred to in Article 4.3 of this Law.
| * - proposals concerning solely a product’s appearance and aiming to meet aesthetic requirements as such; - lay-out designs of integrated circuits; and - devices the use of or the publication of data regarding which goes against public order or morals, endangers human lives and health, animals or plants, or damages the environment contrary to the public interest. This notwithstanding, no use may be deemed to be of such nature solely because of being prohibited by the law or administration injunction. | Considering that Article 5.1 of the Patent Law, as proposed to be amended, will say that utility models include devices, the contents of the second paragraph of Article 5.2 of the existing Law will become redundant. The added text imposes restrictions similar to those included in accordance with Article 27 of the TRIPS Agreement in Article 4.3 of the Patent Law. |
| Article 6. Criteria of Industrial Design Patentability | | |
| 1. Industrial designs shall be the distinctive artistic and structural aspects of a product defining its appearance.* An industrial design shall be granted legal protection if it is new, ** original and industrially applicable. An industrial design shall be deemed new if the combination of its material features *** determining the aesthetic and/or ergonomic identity of the product was not known from information in the public domain in the world before the priority date of such industrial design. During the novelty testing of an industrial design, the state of the art shall **** be held to include all applications for industrial designs of an earlier priority ***** (if not subsequently withdrawn) which were filed in the Russian Federation by other applicants, as well as industrial designs already patented in the Russian Federation. An industrial design shall be deemed original if its material features predetermine the innovative nature of the product’s aesthetic identity. ****** An industrial design shall be deemed industrially applicable if it can be reproduced in quantity by the manufacture of the corresponding products.
The patentability of an industrial design shall not be prejudiced by the disclosure of information relating to such design by its author, the applicant or by any other party who received such information, directly or indirectly, from them, as a result of which the substance of the industrial design entered the public domain, if the application for such industrial design is filed with the Patent Office within six months of the date of such disclosure. The burden of proof in such case shall rest with the applicant. | * For the purposes hereof, “product” shall be understood to mean both industrial and handicraft products. * and *** as reflected in the product’s representations (mock-up, drawing) and enumerated in the list of the material features of such design **** also ***** which were filed in the Russian Federation by other applicants and the materials comprising which may be inspected by any party in accordance with the second paragraph of Article 26 of this Law, ****** The material features of an industrial design shall include those which determine the aesthetic and/or ergonomic identity of the product’s appearance, its forms and configurations, ornaments and combination of colors. | The exclusion of industrial applicability as an independent criterion of patentability for industrial designs is consistent with the relevant provisions of TRIPS. As to this amendment (***), see the explanations regarding Article 4.3 of the Patent Law. The clarification specifying which features are material applies not only to the novelty criterion, which is why it is to be moved to constitute a separate paragraph (*****) to be added to Article 6.1 after the fifth paragraph. As to this amendment (*****), see the explanations regarding Article 4.1 of the Patent Law and the above reason for excluding the industrial applicability criterion. |
| 2. The following shall not be deemed patentable as industrial designs: - solutions determined solely by the technical functionality of a product; - solutions for architectural projects (other than minor architectural forms) and industrial, hydraulic, and other stationary structures; - solutions that relate to printed matter as such; - solutions that relate to objects of an unstable form made of liquid, gaseous, free-flowing or similar substances; and - products * contradicting the public interest, the principles of humanity and morals. | * the use of or the publication of data regarding which goes against public order or morals, endangers human lives and health, animals or plants, or damages the environment contrary to the public interest; provided that no use may be deemed to be of such nature solely because of being prohibited by the law or administration injunction. | The wording is similar to the text in Articles 4.3 and 5.2 of the Patent Law and does not contradict Article 25.2 of the TRIPS Agreement, which authorizes countries to provide for exceptions from protection. |
| SECTION III AUTHORS AND PATENT OWNERS | | |
| Article 7. Authors of Inventions, Utility Models and Industrial Designs | | |
| 1. The individual whose creative efforts resulted in an invention, utility model or industrial design shall be deemed its author. | | |
| 2. Where an industrial property asset is the result of creative efforts by several individuals, all of them shall be deemed to be the co-authors of such asset. The procedure for the exercise of their related rights shall be determined by a contract between such co-authors. Individuals shall not be deemed to be co-authors if they did not make a personal creative contribution to the development of an industrial property asset or only provided the author(s) with technical, organizational or material assistance or with help in securing the registration of rights in such asset and in its use. | | |
| 3. The right of authorship shall be an inalienable personal right and shall be protected for an indefinite period of time. | | |
| Article 8. Patent owners | | |
| 1. A patent shall be granted to: - author(s) of an invention, utility model or industrial design; - individuals and/or legal entities (subject to their consent) named by the author(s) or by the latter’s successors in the application for the patent or in an appropriate request filed with the Patent Office prior to the registration of the invention, utility model or industrial design; or - employer in cases stipulated by Article 8.2 of this Law. | | |
| 2. The right to obtain a patent for an invention, utility model or industrial design created by an employee in the line of employment duty or on the basis of a specific assignment given by the employer shall belong to the employer, unless otherwise provided for in their contract. In the event that the employer obtained a patent, or assigned the right to obtain the same to another party, or decided to keep secret the industrial property asset concerned, or failed to obtain a patent on a filed application through his own fault, the author * shall be entitled to remuneration commensurable with the gain that the employer derived or could have derived from the proper use of the industrial property asset concerned. Such remuneration shall be paid in that amount and on those terms and conditions which may be set out in a contract between the parties. In the event that the employer fails, for four months after being notified of an invention, utility model or industrial design by its author, to file an appropriate application with the Patent Office or to assign the right to *** file the same to another party, or to notify the author of the employer’s decision to keep secret the industrial property asset concerned, the author shall have the right to **** file such application and obtain a patent in his own name. The employer shall then have the right to use the industrial property asset concerned in his own production operations, subject to compensation payable to the author in an amount to be determined on a contractual basis. ***** Should the parties fail to reach agreement on the amount and procedure for payment of remuneration or compensation, the dispute shall be referred to court. The employer shall be liable pursuant to civil legislation of the Russian Federation for failure to pay the remuneration or compensation he contracted to pay on time. Other relations arising in connection with an invention, utility model or industrial design created by an employee shall be governed by Russian legislation on inventions, utility models and industrial designs made for hire. | , who shall not have the right to obtain a patent, *** obtain a patent **** obtain such patent ***** Unless otherwise provided for by a contract between an employee and the employer, the employee shall have the right to obtain a patent for an industrial property asset created thereby with the use of the experience, as well as material, technical and other resources, of the employer, but other than in the line of employment duty or on the basis of a specific assignment given by the employer. In such case, the employer shall be entitled to use the industrial property asset concerned in his own production operations, subject to compensation payable to the author in an amount to be determined on a contractual basis. | This addition prevents any ambiguous interpretation of the existing Law’s wording. This amendment (****) defines the legal consequences more accurately. This addition will facilitate the settlement of disputes in situations not previously regulated by legislation. |
| Article 9. * Russian Federal Invention Foundation | * Rights to Obtain Patents for Inventions, Utility Models and Industrial Designs Created With the Use of Public Resources | The practice of applying and enforcing the Patent Law since 1992 demonstrates the inexpedience of the requirement to establish such a foundation. Its creation would infringe the rights and lawful interests of other foundations acting in accordance with the Russian Civil Code. |
| * The Russian Federal Invention Foundation shall select inventions, utility models and industrial designs, obtain the patent owners' rights therein on a contractual basis, and assist in their use in the interest of the State. The sources of financing to fund the Russian Federal Invention Foundation shall include proceeds from the sale of licenses for industrial property assets patents for which are owned by the Foundation, donations from enterprises and individuals, appropriations out of the Russian federal budget, and other incomings.
The Russian Federal Invention Foundation shall pursue its activities in accordance with its Statute as approved by the Government of the Russian Federation.
| * 1. The right to obtain patents for inventions, utility models and industrial designs created in the process of work performed to meet federal needs and the state needs of territorial subjects of the Russian Federation under public contracts shall belong to the following: - Russian Federation or, respectively, its territorial subject acting in the name of and on instructions from which are a public customer or those parties designated by acts issued by the Government of the Russian Federation or by territorial subjects of the Russian Federation; or - party performing the work under the public contract; or - another party designated in the public contract. Unless otherwise provided for by a public contract, the right to obtain patents for the said industrial property assets shall belong to the Russian Federation or, respectively, to its territorial subjects acting in the name of and on instructions from which are a public customer or those parties designated by acts issued by the Government of the Russian Federation or by territorial subjects of the Russian Federation. In the event that a patent is granted to the party performing work under a public contract or to another party designated in the public contract, the patent owner or his successor shall be obliged, if requested to do so by a party acting in the name of the Russian Federation or its territorial subject, to grant a non-exclusive royalty-free license to use the industrial property asset concerned for the purpose of manufacturing products to meet federal needs or the state needs of territorial subjects of the Russian Federation. | The existing Patent Law does not require any special regulation for industrial property assets created in the process of work financed out of public funds. |
| * | * 2. The right to obtain patents for inventions, utility models and industrial designs created in the process of performing work at an organization financed fully or partially out of public resources shall belong to such organization or the author(s) in accordance with Article 8.2 of this Law. For national security reasons, a patent owner or his successor shall be obliged, if requested to do so by a party acting in the name of the Russian Federation, to grant a non-exclusive royalty-free license to use the industrial property asset concerned | In the absence of government financing to bring the results of R&D, experimental design and like other efforts to practical fruition, rights to obtain patents for industrial property assets created through such efforts should be granted to the organization pursuing them so as to enable it to attract investments. |
| * | * 3. The right to obtain patents for inventions, utility models and utility models created in the process of performing contract, R&D, experimental designing, technological or other work undertaken on the basis of an agreement shall belong to the customer, unless otherwise provided for in the agreement between the customer and the contractor. | |
| * | * 4. Remuneration owing to the authors of inventions, utility models and industrial designs patents for which were granted to any of the parties listed in Article 9.1 of this Law shall be payable in accordance with the procedure prescribed by the Government of the Russian Federation. | |
| SECTION IV EXCLUSIVE RIGHTS TO USE INVENTIONS, UTILITY MODELS AND INDUSTRIAL DESIGNS | | |
| Article 10. Rights and Obligations of Patent Owners | | |
| 1. A patent owner shall have exclusive rights to use the patented invention, utility model or industrial design at his own discretion to the extent that such use does not infringe the rights of other * patent owners, including the right to prohibit ** other parties from using the industrial property asset concerned other than where such use does not constitute an infringement of the patent owner's rights in accordance with this Law. Where the patent for an industrial property asset is owned by several parties, their relations regarding its use shall be governed by a contract between such parties. In the absence of such contract, each of ** such parties may use the patented industrial property asset at his own discretion, but may not grant a license or assign the patent for such asset to another party other than upon the other *** owners’ consent. | * right owners ** other parties from: - using, exploiting, offering for sale, selling, importing or keeping for such purposes a product incorporating such patented invention, utility model or industrial design (for the purposes of this Law, an account of the substance of an industrial property asset, whether in writing or in any other objective form, shall not be deemed to constitute a product); - performing any actions listed in the second paragraph of this Article 10.1 with respect to a product obtained directly by the patented process (in which case, if such product obtained using the patented process is new, any identical product shall be deemed, unless proved otherwise, to have been obtained using the same process); - performing any actions listed in the second paragraph of this Article 10.1 with respect to an asset the functioning or operation of which in accordance with its designated purpose automatically involves the use of the patented process; and - using the process protected by the invention patent. Exclusive rights to use a patented invention, utility model or industrial design shall be exercised by the patent owner during the term of the patent as of the date on which the appropriate patent grant report is published in the official newsletter of the Patent Office. ** the patent owners *** patent | The list includes all actions which may be prohibited by the patent owner in accordance with Article 28 of the TRIPS Agreement. Without this addition, possible infringers of this type of process would include only the parties using such hardware in which the process is realized regardless of their will. Thanks to the addition, the patent owner may bring claims against the producer of hardware if it involves the use of his process, as well as in some other cases, as if the patent had been granted for a device. This addition accords with Article 1 of TRIPS, which allows granting broader protection to an invention than is required by that Agreement. The guilt of a party using an industrial property asset in violation of a patent cannot be proved earlier than the stated date. |
| * 2. A product (article) shall be deemed manufactured by using a patented invention or utility model and a process protected by an invention patent shall be deemed used should it incorporate every feature of such invention or utility model included in an independent claim or an equivalent feature. A product shall be deemed manufactured by using a patented industrial design should it incorporate all of the latter’s material features.
| * 2. A product shall be deemed incorporating a patented invention or utility model and a process protected by an invention patent shall be deemed used should the product incorporate and the process use every feature of such invention or utility model included in its independent claim or an equivalent feature, which became known as such in the given area of technology, respectively, prior to the performance date of any actions listed in Article 10.1 of this law with respect to such product or prior to the process use date. A product shall be deemed incorporating a patented industrial design should it incorporate all of the latter’s material features as reflected in the product’s representations (mock-up, drawing) and enumerated in the list of its material features. | The changes to the first and second paragraphs are consistent with the proposed amendment of Article 10.1 of the Patent Law. |
| 3. Any unauthorized manufacture, exploitation, importation, offer for sale, sale, other commercial use or keeping for such purpose of a product incorporating a patented invention, utility model or industrial design, any use of a process protected by an invention patent, and any commercial use or keeping for such purpose of a product manufactured directly by using a process protected by an invention patent shall be deemed an infringement of the patent owner's exclusive rights. A new product shall be deemed manufactured using a patented process unless proved otherwise.
| | The contents of this clause were moved to Article 10.1 of the Patent Law in a form corresponding to the general heading of Article 10, with the wordings brought closer to those found in the TRIPS Agreement. |
| * 4. In the event that an invention or industrial design remains unused or insufficiently used by the patent owner for four years or that a utility model remains unused or insufficiently used by the patent owner for three years after the patent grant date, any party willing and ready to use the patented industrial property asset concerned may, if the patent owner refuses to enter into a license contract, apply to the Supreme Patent Chamber of the Russian Federation (hereinafter, the “Supreme Patent Chamber”) for a compulsory non‑exclusive license. Should the patent owner fail to prove that he made no or insufficient use of the industrial property asset for a valid reason, the Supreme Patent Chamber shall grant such license, prescribing appropriate use limits, the amount of royalties, and time periods and procedures for their payment. The amount of such royalties may not be less than the market price of the license. | * 3. In the event that an invention or industrial design remains unused or insufficiently used by the patent owner and by assignees of rights therein for four years or that a utility model remains unused or insufficiently used by the patent owner and by assignees of rights therein for three years after the patent grant date and this results in the inadequate supply of the corresponding goods or services on the Russian market of goods or services, any party willing and ready to use the patented industrial property asset concerned may, if the patent owner refuses to enter into a license contract with such party on such terms and conditions as are consistent with prevailing practice, go to court to demand the grant thereto of a compulsory non‑exclusive license to use such asset on the territory of the Russian Federation. Should the patent owner fail to prove that he made no or insufficient use of the industrial property asset for a valid reason, the court shall find in favor of the grant of such license with an indication of the appropriate use limits, the amount of royalties, and time periods and procedures for their payment, and shall notify the patent owner thereof as soon as possible. The amount of such royalties may not be less than the price of the license as determined in accordance with prevailing practice. Rights to use the industrial property asset concerned may be assigned by the party granted such compulsory license to another party, but at all times together with the corresponding production operations using such asset. A finding in favor of the grant of a compulsory license may be reviewed in due course of law if and when the circumstances which prompted such finding cease to exist and are unlikely to resume. In such case, the court shall prescribe a time period and procedure for the termination of the exercise by the party granted the compulsory license of related rights. | These amendments are proposed to clarify the legal basis for decisions to grant compulsory licenses, considering that the existing Articles 4 and 5 of the Patent Law provide inadequate regulation for the conditions and consequences of such decision-making (Article 10.5, for example, does not even make it clear whether the patent owner is ensured the right to demand the execution of a license contract with the grant of a compulsory license where the other patent owner refuses to enter into such a contract, or like other arrangements). These amendments are consistent with TRIPS requirements (see the explanations regarding Article 10.1 of the Patent Law). Here and later on, the numeration of the clauses of Article 10 of the Patent Law is altered with due regard for the exclusion of Article 10.3. |
| * 5. In the event that a patent owner is unable to use his invention, utility model or industrial design without infringing the rights of another patent owner, he shall have the right to require that the other patent owner enter into a license contract. | * 4. In the event that a patent owner is unable to use his invention without infringing the rights of the owner of another patent for an invention or utility model, who refuses to enter into a license contract on such terms and conditions as are consistent with prevailing practice, he may go to court to demand the grant of a compulsory non‑exclusive license to use such invention or utility model on the territory of the Russian Federation, provided that his invention represents an important technical achievement of material economic significance in relation to the invention or utility model the patent for which is owned by such other party. Where such license is granted on the basis of a court finding, such license shall set limits on the use of the respective invention or utility model the patent for which is owned by the said other party to the extent which may be necessary to use the invention owned by the party who demanded that grant of such compulsory non-exclusive license, and shall prescribe the amount of royalties, as well as time periods and procedures for their payment. The amount of such royalties may not be less than the price of the license as determined in accordance with prevailing practice. Rights to use the industrial property asset concerned may only be assigned subject to the assignment of the patent for the invention in connection with which such rights were granted. In the event that a compulsory non-exclusive license is granted in accordance with this Article 10.4, the owner of the patent for the invention or utility model rights to use which are carried by such license shall be entitled to obtain a similar non-exclusive license to use the invention in connection with which such compulsory license was granted on such terms and conditions as are consistent with prevailing practice. | This amendment is dictated by TRIPS requirements (see the explanations regarding Article 10.1 of the Patent Law). |
| * 6. A patent owner may assign his patent to any other ** individual or legal entity. *** A patent assignment contract shall be subject to registration with the Patent Office. Failing such registration, any such contract shall be deemed invalid. | * 5. ** individual(s) or legal entity(ies). Exclusive rights certified by a patent may constitute the subject of a lien. ** An assignment contract and a pledge contract | The proposed amendments (** and ***) meet the interests of the patent owner, conform to Article 336 of the Russian Civil Code, and take account of the competence of the federal executive authority for patents and trademarks, as established with due regard for the Civil Code. |
| * 7. Patents for inventions, utility models and industrial designs, as well as rights to obtain such patents, shall be inheritable. | * 6. | Here and above, the numeration of the clauses of Article 10 of the Patent Law is altered with due regard for the exclusion of Article 10.3. |
| Article 11. Actions Not Deemed to Constitute Infringements of Patent Owners’ Exclusive Rights | | |
| The following actions shall not be deemed infringements of patent owners' exclusive rights: - use of assets incorporating * patented inventions, utility models or industrial designs in the construction or operation of (sea, river, air, land and space) vehicles of other countries if such vehicles entered the territory of the Russian Federation on a temporary basis or by accident and should such assets be used for the needs of such vehicles. No such action shall be deemed to constitute an infringement of the patent owner's exclusive rights, provided that the vehicles concerned are owned by individuals or legal entities of countries granting reciprocal rights to vehicle owners of the Russian Federation; - scientific research or experiments involving an asset incorporating a ** patented invention, utility model or industrial design; - use of assets incorporating *** patented inventions, utility models or industrial designs in force majeure circumstances (acts of God, disasters, major accidents) with **** subsequent payment of commensurate compensation **** to the patent owner; - use of assets incorporating ****** patented inventions, utility models or industrial designs for personal needs without ******* deriving any income; - one‑time production of medicines by pharmacies on a doctor's prescription; and - ******** exploitation of such assets incorporating patented inventions, utility models or industrial designs as were put to commercial use on a lawful basis. | * Of relevance to the Russian text only [see the explanation in the right-hand column] ** Of relevance to the Russian text only *** Of relevance to the Russian text only **** early notification of the patent owner and ***** thereto ****** Of relevance to the Russian text only ******* aiming to derive ******** exploitation, offering for sale, sale, importation or keeping for such purposes of a product incorporating a patented invention, utility model or industrial design if such product was put to commercial use in the Russian Federation on a lawful basis. | Here and elsewhere, the relevant terms are brought into line with the notion “legal protection” [with the Russian word ”охраняемый” [protected], which is derived from “правовая охрана” [legal protection], replacing “защищенный” [protected] throughout the text – without any implications for the English text. Here and elsewhere, the note “Of relevance to the Russian text only” will be affixed instead of the proposed Russian word or expression which, for the purposes of the English text, is in every respect equivalent to the word or expression being replaced.] This amendment (****) is consistent with Article 31(b) of the TRIPS Agreement (see the explanations regarding Article 10.4 of the Patent Law). This amendment removes the possibility of any ambiguous interpretation of the given provision. This paragraph (********), expressing the so-called right exhaustion principle, when worded as is in the existing Law, leaves open the question about actions other than “exploitation” with respect to those assets (products) which have been put to commercial uses lawfully. The inclusion of the words “in the Russian Federation” removes ambiguity from this provision which, as currently worded, could be construed to mean that no actions on Russian territory with respect to a product lawfully put to commercial use abroad may be held to infringe the patent owner’s rights. |
| Article 12. Right of Prior Use | | |
| Any individual or legal entity that made good-faith use, before the priority date of an invention, utility model or industrial design, of an identical solution developed independently of the author or made appropriate preparations for such use on the territory of the Russian Federation shall retain the right to continue using such solution free of charge, unless the scope * is increased. The right of prior use may be assigned to another individual or legal entity, but at all times together with the production operations which involved the use of such identical solution or necessary preparations for such use. | * of such use | |
| Article 13. Grant of Rights to Use Inventions, Utility Models and Industrial Designs | | |
| 1. No party except the patent owner may use a * patented invention, utility model or industrial design other than with the consent of the patent owner (on the basis of a license contract). Under a license contract, the patent owner (licensor) shall agree to grant the right to use the patented industrial property asset concerned, to the extent specified in such contract, to another party (licensee), while the licensee shall agree to pay to the licensor such royalties and ** perform such other actions as may be stipulated in the contract. Under an exclusive license contract, the licensee shall be assigned exclusive rights to use the industrial property asset concerned to the extent stipulated in the contract, while the licensor shall retain the right to use such asset, but other than to the said extent; under a non‑exclusive license, the licensor, while granting the right to use the industrial property asset concerned to the licensee, shall retain all rights carried by the patent, including the right to grant licenses to third parties. | * Of relevance to the Russian text only ** /or | The existing wording is too constrictive in its regulation of the terms and conditions of license contracts, which can in practice be quite varied. |
| * 2. A license contract shall be subject to registration with the Patent Office and shall be deemed invalid without such registration. | * 5. | The number of this clause is changed to place the given provision after all those which mention license contracts (such mention are encountered in former Article 13.3 /now proposed to be 13.2/ of the Patent Law, as amended to include an addition the need for which is substantiated below, and in the new Article 13.3 following immediately afterwards). The numeration of the subsequent clauses is altered accordingly. |
| * 3. A patent owner may apply to the Patent Office for an arrangement whereby *** rights to use the industrial property asset concerned may be granted to any party (open license) ****. The maintenance fee in such case shall be reduced by 50 percent as of the year following that during which the Patent Office publishes a notice of such arrangement. A party willing to use such industrial property asset shall be obliged to enter into a royalty contract with the patent owner. Any disputes arising over the terms and conditions of such contract shall be referred to the Supreme Patent Chamber. The patent owner's application for an open license shall not be subject to withdrawal.
***** | * 2. *** a non-exclusive license **** on such terms and conditions as are consistent with prevailing practice ***** If the patent owner does not receive any written offers to enter into a contract in connection with an intention to use the industrial property asset concerned for two years after the publication date of such open license notice, he shall have the right upon the expiry of such two-year period to file a statement with the Patent Office for the withdrawal of his application. In such case, the shortfall in the patent maintenance fee for the term of the open license shall be compensated for and the fee shall henceforth be paid in full. The Patent Office shall publish a notice of the open license withdrawal. | The proposed deletion of this paragraph is due to the need to bring the contents of former Article 13.3 (now Article 13.2) of the Patent Law into line with the general requirement, as set out in Article 13.1 of the Law, that a license contract should be executed for the use of an industrial property asset with the permission of the appropriate patent owner. The proposed amendment broadens the patent owner’s possibilities other than contrary to the interests of society as a whole. |
| * | * 3. The author(s) of an invention entitled to obtain a patent for such invention may accompany documents comprising an application for such invention patent with an undertaking to assign the same, upon its grant, to any party in accordance with Article 10.5 of this Law on such terms and conditions as are consistent with prevailing practice. Subject to such undertaking, the author(s) of the invention shall be exempted from those patent fees which are provided for by this Law. The Patent Office shall publish a notice of such undertaking. The author(s) granted a patent shall be obliged to enter into a patent assignment contract with any party expressing the wish to obtain such patent. The party entering into such patent assignment contract with the author(s) shall be obliged to pay all patent fees exemptions from which were granted to the author(s). For a patent assignment contract to be registered by the Patent Office, an application for its registration shall be accompanied by a document confirming payment of all patent fees exemptions from which were granted to the author(s). Disputes relating to the execution of a patent assignment contract and its terms and conditions shall be referred to court. | This provision aims to furnish conditions for the patenting of inventions by authors in the low-income bracket, mostly pensioners. Presently, they do not file applications for the grant of patents for want of funds to pay patent fees. Therefore, the exemption of inventors from patent fees in exchange for their unqualified assignment of their patents to any parties will, far from reducing patent fee collections, only increase government revenues through a gain in tax receipts to flow from the commercial implementation of the inventions concerned. |
| 4. For national security reasons, the Government of the Russian Federation shall have the right to authorize the use of an industrial property asset without the patent owner’s consent, but subject to ** commensurate compensation payable thereto. Disputes arising over the amount of such compensation shall be *** referred to the Supreme Patent Chamber. | ** to prompt notification thereof and payment of *** resolved in due course of law | This addition (**) follows from TRIPS requirements. |
| Article 14. Infringement of Patents | | |
| * 1. Any individual or legal entity using a patented invention, utility model or industrial design in breach of this Law shall be deemed a patent infringer. | * 1. A patent infringement shall be understood to mean any use of a patented invention, utility model or industrial design other than in compliance with the terms and conditions set out in this Law. | The proposed wording is more in line with the heading of Article 14 of the Patent Law and consistent with the proposed changes to Article 10.2 of the Law. |
| * 2. If so required by the owner of a patent, its infringement shall be stopped and the infringing individual or legal entity shall be obliged pursuant to legislation of the Russian Federation to compensate the patent owner for his losses suffered [as a result of such infringement]. | * A patent owner shall be entitled to require that: - the patent infringement be terminated; - the party guilty of the patent infringement provide compensation for resulting losses, including loss of gain, and pay moral damages; - the income derived by the party guilty of the patent infringement be recovered in lieu of such compensation for loses; - the party guilty of the patent infringement pay a reparation which shall be equal to between 10 and 50,000 minimum monthly wages as prescribed by legislation of the Russian Federation, the specific amount of such reparation to be decided by the court, in lieu of compensation for losses or the recovery of income; - the products actions regarding which were found to have infringed the patent, as well as any facilities specially meant for the patent infringement, be confiscated for the benefit of the patent owner; and - the relevant court judgement be published in order to restore his business reputation. In addition to ordering compensation for losses, the recovery of income or payment of a fixed-sum reparation, the court shall collect a fine equal to 10 percent of the sum awarded thereby in favor of the claimant. Such fine collections shall duly go to appropriate budgets. | The proposed wording provides for more specific penalties against patent infringers and corresponds to similar provisions to be found in Russian legislative acts on trademarks, copyright and related rights, and legal protection for computer programs and databases. |
| 3. The owner of an exclusive license may also make claims against a patent infringer, unless otherwise provided for by the license contract. | | |
| SECTION V OBTAINING PATENTS | | |
| Article 15. Filing of Applications for Grant of Patents | | |
| 1. An application for the grant of a patent shall be filed * by the author, the employer or their successor (hereinafter, “applicant") with the Patent Office. | * with the Patent Office by the party entitled to obtain such patent in accordance with Article 8.1 of this Law (hereinafter, “applicant"). | The existing wording make for such an interpretation of the Law whereby any person other than the one in whose name a patent is being sought may act as an applicant. Should these persons be indeed different, this may in practice result in some insoluble collisions. |
| * 2. An application for the grant of a patent shall be in Russian. Other documents comprising the application shall be either in Russian or in any other language. In the event that any such documents comprising the application are in any language other than Russian, they shall be accompanied by their Russian translations. Such translations may be submitted by the applicant within two months ** after the Patent Office receives the application consisting of documents in another language. | * 3. ** of the date on which the Patent Office serves him notice of the need to comply with such requirement. | The proposed reversal in the sequence of Articles 15.3 and 15.2 of the Patent Law is due to the suggested addition to its Article 15.4 which refers, just as Article 15.2 of the Law, to applications. Article 6 (7) of the Patent Law Treaty and related Rule 6 (1) of the PLT Instructions require that the applicant be notified of the absence of a translation and be given at least two months after such notice to comply with this requirement. Neither the Treaty nor the Instructions specify which day is deemed to constitute the date on which the applicant is given such notification. |
| 3. An application may be filed through a patent attorney registered with the Patent Office. Individuals resident outside the Russian Federation and foreign legal entities or their patent attorneys shall conduct the business ** of obtaining and maintaining patents through patent attorneys registered with the Patent Office ***. The powers of a patent attorney shall be certified by a power of attorney issued thereto by the applicant. ****
***** Requirements for patent attorneys and procedures for their qualification and registration ****** shall defined by the Regulations on Patent Attorneys as approved by the Government of the Russian Federation. | * 2. The conduct of business with the Patent Office may be maintained by an applicant, patent owner or another party concerned either independently or through a patent attorney registered with the Patent Office. ** with the Patent Office *** , with the exception of the business of filing application, paying patent fees and such other actions, to be specified at the discretion of the Patent Office, as can be performed by such parties independently. If an applicant, patent owner or another party concerned conduct business with the Patent Office independently in accordance with this Article 15.2, the Patent Office may require that they provide an address for correspondence on the territory of the Russian Federation. **** , the patent owner or another party concerned. ***** Those nationals of the Russian Federation who are permanently resident on its territory may be registered as patent attorneys. ****** , and their powers to conduct business relating to the legal protection of industrial property assets shall be defined by the law and other regulatory legal acts of the Russian Federation on patent attorneys. The Patent Office shall be notified of the appointment of a patent attorney in accordance with the procedure prescribed by the Patent Office. | This addition takes due account of the fact that Article 7 of the PLT and Rule 7 of the related Instructions prohibit requiring that a representative be appointed to take care a number of procedures specified in these enactments. This addition is also explained by the fact that the different types of business one may conduct with the Patent Office do not boil down to the obtaining and maintenance of a patent alone. This addition (****) fills up a gap in the existing wording which omits to cover situations where a power of attorney is issued not directly by the foreign applicant, but by his proxy. This clarification (*****) aims to preclude the possibility of such competition from foreigners on the patent services market as would tell extremely adversely on Russian patent attorneys. This amendment (******) is designed to raise the legal status and increase the liability of patent attorneys. The last paragraph takes account of the fact that the PLT provides for the form of a representative’s appointment to be prescribed by the PLT Instructions. |
| | * 4. An application for the grant of a patent shall be signed by the applicant or, where such application is filed through a patent attorney, by the applicant and the patent attorney. | This addition aims to ensure a uniform overall understanding of the provisions of Article 15 of the Patent Law, which allow an application to be filed either by the applicant himself or by only such representative of the applicant as has the status of a patent attorney (this limitation of possibilities for representation in the case under review is because the application is a claim for rights, which makes it necessary for the representative to meet certain qualification requirements). |
| Article 16. Applications for Grant of Invention Patents | | |
| 1. An application for the grant of an invention patent (hereinafter, "invention application") shall refer to a single invention or a group of interrelated inventions forming a single inventive concept (unity of invention requirement). | | |
| 2. An invention application shall contain the following: - request for a patent, naming the author (co-authors) of the invention and the party(s) in whose name(s) the patent is sought and indicating their domiciles or locations; - specifications of the invention, which shall be complete enough to make it possible to implement such invention; - claims describing the substance of the invention and fully based on its specifications; - drawings and other materials if required for understanding the substance of the disclosure; and - abstract. An invention application shall be accompanied by a document confirming payment of the prescribed * fee or grounds for ** an exemption from or a rebate of such fee. *** **** | * application ** an exemption from, a rebate of or a grace for payment of such fee. Such document may be submitted either together with or separately from the documents comprising the application, but not more than four months after the receipt date of the application for the grant of a patent. *** Unless such document is submitted on time, the application shall be deemed withdrawn. **** The date on which an application is filed with the Patent Office shall be determined by the receipt date of those documents which are required in order to establish its priority pursuant to Article 19.1 of this Law or, if such documents were submitted other than all together, by the receipt date of the last such document submitted. | The deletion of the word “full” will remove the possibility of a subjective quantitative assessment of the extent to which the claims are based on the specifications. The introduction of the adjective (*) to define the particular fee is proposed with account taken of the contemplated renunciation of the “deferred” examination system (see the proposals regarding Article 21 of the Patent Law and the relevant substantiating arguments), since fees should become uniform. It is advisable to provide for the possibility of a rebate (**) directly in the Patent Law (the idea being that such rebates will primarily be accorded to organizations financed out of the federal budget). Unless the proposed addition (***) is accepted, the legal status of an application missing the specified document will remain uncertain. This addition (****) clearly points to the filing date of an application as the point of departure for the purposes of both determining the priority of an industrial property asset and calculating the term of a patent (see the notes for Article 3.3 of the Patent Law) and the periods of time prescribed for the performance of specific actions by the Patent Office and the applicant. The clarification to the effect that the date in question is to be determined on the basis of the receipt date of the last of the documents filed will remove uncertainty about the possibility of different documents comprising an application being submitted at different times and, by “legalizing” this date, will serve the interests of the applicants. |
| 3. Requirements for documents comprising an invention application shall be established by the Patent Office. | | |
| Article 17. Applications for Grant of Utility Model * Certificates | * Patents | See the explanation regarding Article 3.1 of the Patent Law. |
| 1. An application for the grant of a utility model * certificate (hereinafter "utility model application") shall refer to a single utility model or a group of interrelated utility models forming a single inventive concept (unity of utility model requirement). | * patent | |
| 2. A utility model application shall contain the following: - request for a * certificate, naming the author (co-authors) of the utility model and the party(s) in whose name(s) the ** certificate is sought and indicating their domiciles or locations; - specifications of the utility model, which shall be complete enough to make it possible to implement such utility model; - claims describing the substance of the utility model and fully based on its specifications; - drawings ***; and - abstract. A utility model application shall be accompanied by a document confirming payment of the prescribed **** fee or grounds for ***** an exemption from or a rebate of such fee. | * patent ** patent *** if necessary for understanding the substance of the utility model **** application ***** an exemption from, a rebate of or a grace for payment of such fee. Such document may be submitted either together with or separately from the documents comprising the application, but not more than four months after the receipt date of the application for the grant of a patent. Unless such document is submitted on time, the application shall be deemed withdrawn. The date on which an application is filed with the Patent Office shall be determined by the receipt date of those documents which are required in order to establish its priority pursuant to Article 19.1 of this Law or, if such documents were submitted other than all together, by the receipt date of the last such document submitted. | The existing wording does not make it possible for an applicant to file a utility model application without drawings even in the simplest of cases where there is no need for such drawings (Article 16.2 of the Patent Law). The description of the fee (****) is changed to observe the uniformity of terminology in accordance with the amendment proposed above (see the addition /*/ to Article 16.2 of the Patent Law). See the arguments grounding the similar proposed changes (**) to Article 16.2 of the Patent Law. |
| 3. Requirements for documents comprising a utility model application shall be established by the Patent Office. | | |
| Article 18. Applications for Grant of Industrial Design Patents 1. An application for the grant of an industrial design patent (hereinafter, "industrial design application") shall refer to a single industrial design * and may encompass its variations (unity of industrial design requirement). | * or a group of interrelated industrial designs forming a single inventive concept (unity of industrial design requirement). | This addition aims to broaden possibilities for the filing of an application relating to several industrial property assets (as it is not only “variations” that can meet the single inventive concept requirement) and to bring Russian legislation closer to international practice regarding the possibility of filing an application relating to more than one industrial design. |
| 2. An industrial design application shall contain the following: - request for a patent, naming the author (co-authors) of the industrial design and the party(s) in whose name(s) the certificate is sought and indicating their domiciles or locations; - set of * photographs showing the product, a mock‑up or a drawing, which give a full and detailed idea of the product’s appearance; - outline drawing of the product, its ergonomic diagram and confection chart if necessary to bring out the substance of the industrial design; and - specifications of the industrial design, ** including a list of its material features. *** An industrial design application shall be accompanied by a document confirming payment of the prescribed **** fee or grounds for ***** an exemption from or a rebate of such fee. | * the product’s representations (mock‑up, drawing) ** ; and *** list of the material features of the industrial design. **** application ***** an exemption from, a rebate of or a grace for payment of such fee. Such document may be submitted either together with or separately from the documents comprising the application, but not more than four months after the receipt date of the application for the grant of a patent. Unless such document is submitted on time, the application shall be deemed withdrawn. The date on which an application is filed with the Patent Office shall be determined by the receipt date of those documents which are required in order to establish its priority pursuant to Article 19.1 of this Law or, if such documents were submitted other than all together, by the receipt date of the last such document submitted. | The use of the term “representations” is suggested here for the same reasons which are presented in the notes for Article 4.3 of the Patent Law. It is appropriate to detach the list of material features as a separate document in the package comprising an application (in the same way as the claims of an invention and those of a utility model constitute independent documents in their own right), because a number of articles in the Law lend to such list such legal significance as is similar to that attributed to the invention and utility model claims. See the arguments substantiating the proposed similar changes (**) to Article 16.2 of the Patent Law. |
| 3. Requirements for documents comprising an industrial design application shall be established by the Patent Office. | | |
| Article 19. Priority of Inventions, Utility Models and Industrial Designs | | |
| 1. The priority of an invention * shall be determined by the date on which the Patent Office receives an appropriate application complete with a request for a patent, the relevant specifications and claims, and drawings if referred to in the specifications. The priority of a utility model shall be determined by the date on which the Patent Office receives an appropriate application complete with a request for a certificate and the relevant specifications, claims and drawings.
The priority of an industrial design shall be determined by the date on which the Patent Office receives an appropriate application complete with a request for a patent, a set of ** requisite photographs, and the relevant specifications ***. | * and a utility model ** representations **** and a list of material features of such industrial design. | The claims are not on the list of elements contained in Article 5 of the PLT, which is sufficient for determining the filing date of an application for which a priority date is being established. In view of the amendments proposed to Article 17.2 of the Patent Law and unifying requirements made for invention applications and utility model applications, the second paragraph is no longer necessary. The term “representations” is proposed to be used for the same reasons which are spelled out in the notes for Article 4.3 of the Patent Law. The proposed amendment also takes account of the fact that the list of material features is a separate document in the package comprising an industrial design application (see the proposed changes to Article 18 of the Patent Law). |
| 2. Priority may be determined by the filing date of the first application filed in a country which is a party to the Paris Convention for the Protection of Industrial Property (convention priority) if the invention application or utility model application was * received by the Patent Office ** within twelve months or if the industrial design application was *** received by the Patent Office within six months of such date. In the event that the application for convention priority could not be filed within the period of time indicated above for reasons beyond the applicant's reasonable control, such period may be extended, though by not more than two months. **** An applicant wishing to exercise the right of convention priority shall be obliged to indicate this when filing his application or within two months of the date on which it is received by the Patent Office and to attach a copy of the first application or to submit such copy not later than three months after the application is received by the Patent Office. | * filed with ** Of relevance to the Russian text only *** filed with **** filing **** An applicant wishing to exercise the right of convention priority shall be obliged to notify the Patent Office accordingly and provide the same with a copy of the first application within 16 months of the filing date of the first application. The Patent Office may require that the applicant submit such copy of the first application, if filed other than in the Russian language, in its Russian translation only if the priority testing involves determining the patentability of the invention on the application under review. | See the explanations regarding Article 3.3 of the Patent Law. This amendment is consistent with Articles 6 and 13 of the PLT and Rules 4 and 14 of the related Instructions, which define the scope of permissible requirements with respect to time periods reserved for requesting priority and submitting a copy of the first application and to circumstances in which a translation of the first application has to be made available. |
| 3. Priority may be determined by the receipt date of supplementary materials if filed by the applicant as a separate application before the expiry of three months after of the date on which the applicant receives a notice from the Patent Office to the effect that such supplementary materials may not be taken into consideration because they are deemed to introduce new matter modifying the substance of the industrial property asset filed.** | ** and provided that the application for which such supplementary materials are submitted was not withdrawn and is not deemed withdrawn as of its filing date. | This addition make it possible to rule out the possibility of related conflicts. |
| 4. Priority may be determined by the date on which * the Patent Office received an earlier application filed by the same applicant and disclosing the invention, utility model or industrial design concerned if the application requesting such priority ** is *** received within twelve months of the **** receipt date of the earlier invention application or within six months of the filing date of the earlier utility model application or industrial design application. ***** In such case, the earlier application shall be deemed withdrawn. Priority may be determined on the basis of several preceding applications if each complies with such requirements.
Priority may not be determined by the ****** receipt date of an application which already requested an earlier priority. | * an earlier application disclosing the invention, utility model or industrial design concerned was filed with the Patent Office by the same applicant ** was not withdrawn and is not deemed withdrawn as of its filing date and *** filed ***** Upon the filing of an application requesting such priority, ****** filing | This amendment (*****) is needed to clarify the procedure for altering the status of an earlier application. The possibility offered by the paragraph proposed to be deleted is common for all cases of establishing an earlier priority date than the application filing date and is already provided for in the new provision (***) to be added after Article 19.5 of the Patent Law. |
| 5. The priority of an invention, utility model or industrial design under a divisional application shall be determined by the date on which * the Patent Office receives the original application disclosing the industrial property asset concerned ** if such divisional application was filed before the issuance of an office action to refuse the grant of a patent on the original application without further appeal options open or, where the patent on such application was granted, prior to the date of its registration in the state register. *** | *the original application by the same applicant, disclosing the industrial property asset concerned, was filed with the Patent Office ** or, in the event of rights to an earlier priority under such original application, by such earlier priority date provided that the original application was not withdrawn and is not deemed withdrawn as of the filing date of such divisional application and further provided that the said divisional application was filed prior to the exhaustion of options to appeal an office action refusing the grant of a patent or, where the office action on the original application was to grant the patent, *** 6. Priority may be determined on the basis of several preceding applications or supplementary materials for them, subject to their compliance with the applicable conditions as set out in Articles 19.2, 19.3, 19.4 and 19.5 of this Law. | The proposed amendment aims to bring the wording of this provision more closely into line with others concerning the establishment of an earlier priority (Articles 19.2-19.4 of the Patent Law), which stipulate that an earlier application or related supplementary documents that serve as grounds for determining the priority of a later application, must be filed by the same applicant (see also the notes for Article 3.3 of the Patent Law, explaining the need to use the term “filing date” instead of “receipt date”). See the reasons for the deletion of the second paragraph from Article 19.4 of the Patent Law. |
| * 6. Where an examination finds the same priority date claimed for several identical industrial property assets, ** a patent may be granted on that application proved to have been sent to the Patent Office on an earlier date or, should such dates also coincide, on the application having an earlier registration number assigned by the Patent Office, unless otherwise agreed upon between the applicants. | * 7. ** a patent for such asset may only be granted on one of such applications and to such party(ies) as may be designated by agreement between the applicants and such party(ies) or, where the applications for the identical industrial property assets were filed by one and the same applicant, on the application designated thereby. Within 12 months of the receipt date of an appropriate notice, the applicant(s) shall be obliged to file a statement designating the application on which the patent should be granted and the party to whom it should be granted. Upon the grant of a patent on one of the applications, all authors named in the applications shall be deemed co-authors. Unless the Patent Office receives within such time period such statement or a request for the extension of the said time period, the applications shall be deemed withdrawn. Where an invention and a utility model disclosed by applications filed by the same applicant are identical and their respective priority dates coincide, then, should a patent be granted on either of these applications, the grant of a patent for the identical industrial property asset under the other application shall be possible subject to the filing with the Patent Office of a request by the owner of the patent granted earlier for the termination of such patent for the respective asset. In such case, if the patent owner so petitions in such request, the patent granted earlier for such asset shall be terminated as of the publication date of the report on the grant of the patent on the other application. Reports on the grant of the patent on such application and on the termination of the patent granted earlier for the identical industrial property asset shall be published simultaneously. | The numeration change is due to the proposed addition to the Patent Law of new Article 19.6. This amendment (**) corrects the deficiency of the existing wording which makes the possibility of obtaining a patent conditional on such an accidental factor as the number assigned to the application and does not make it clear what is to be done where it is impossible to reliably determine the forwarding date of at least one of the applications. This addition furnishes the possibility of obtaining legal protection quickly – first for a utility model and then for an invention, and this should increase applicants’ interest in utility models as a legal category. |
| Article 20. * Amendment of Documents Comprising Applications on Applicants' Initiative | * Alteration of Documents Comprising Application | |
| * Within two months of the receipt date of his application, an applicant shall have the right to amend and update any documents comprising such application unless amendments and updates modify the substance of the invention, utility model or industrial design filed. Subject to payment of the prescribed fee, such amendments and updates may be submitted with respect to an invention application even after the expiry of the above period of time, but before an office action is issued upon the outcome of the substantive examination. Such amendments and updates shall be taken into consideration during the publication of an invention application report, provided that they are received by the Patent Office within twelve months of the receipt date of the application.
** | Pending the issuance of an office action on his application, an applicant shall have the right to amend and update any documents comprising such application unless such amendments and updates introduce new matter modifying the substance of the invention, utility model or industrial design applied for. Supplementary materials shall be held to introduce new matter modifying the substance of an invention (utility model) applied for if they make for the inclusion in the claims of such invention (utility model) of such features as were absent from the original specifications, as well as from the claims of such invention (utility model) if those were presented in the application as of its filing date. ** Supplementary materials shall be held to introduce new matter modifying the substance of an industrial design applied for if they contain such features reflected in the respective product’s representations (mock-up, drawing) and required to be included in the list of the material features of the industrial design concerned as were absent from the product’s original representations (mock-up, drawing). The alteration of references to an applicant upon the assignment of the right to obtain a patent or as a result of a change in the applicant’s name, as well as the correction of obvious and clerical errors in documents comprising the application, may be carried out prior to the registration date of the industrial property asset concerned in the appropriate state register. No fee shall be charged for the alteration of any materials comprising an application if effected on the initiative of the applicant within two months of the application filing date. Alterations made by the applicant shall be taken into consideration during the publication of an invention application report, provided that they are received by the Patent Office within twelve months of the application filing date | In addition to amendments and updates, an application may undergo changes of also a different nature (see the fourth paragraph of the proposed wording). Furthermore, it is inadvisable to restrict the operation of the procedure for the alteration of documents comprising an application (as prescribed by Article 20 of the Patent Law) to only such revisions which are initiated by the applicant. The applicant’s interests are protected to a fuller extent where the possibility of amending documents comprising an application prior to the issuance of a related office action covers not only invention applications, but also utility model applications and industrial design applications. This condition (**) is transferred from Article 21.2 of the Patent Law owing to the need to supplement it with the provision about supplementary materials being held to modify the substance of an industrial design (see the third paragraph of the proposed wording of Article 20), which is absent from the existing Law (such an addition could not be included in its Article 21.2 which deals with inventions only). Compared with existing Article 21.2 of the Law, the proposed new provision governing the assessment of supplementary materials for an invention (utility model) application refers to only the original specifications and claims, as drawings and abstracts are not meant to reveal the substance of an invention or a utility model. This additional paragraph will close an obvious gap in the existing wording of the Patent Law. The contents of this paragraph and the one following immediately after it correspond to Article 20 of the existing Patent Law. |
| Article 21. Examination of Invention Applications | | |
| 1. * The Patent Office shall proceed with its formal examination of an application two months after its receipt date. At the applicant's written request, a formal examination may be started earlier. Upon his filing of such request, the applicant shall forfeit the right granted thereto by the first paragraph of Article 20 above to amend and update any documents comprising the application on his own initiative without paying a fee. The formal examination of an application shall aim to verify whether all requisite documents are included and meet applicable requirements, as well as to decide whether the subject matter of the application falls within the range of patentable assets.
| * Subject to the submission of a document confirming payment of the prescribed fee or grounds for an exemption from, a rebate of or a grace for payment of such fee, an invention application received by the Patent Office shall be put to a formal examination to verify whether all requisite documents are included and meet applicable requirements. | The applicant is interested in coming to know the outcome of a formal examination as soon as possible, which is why, because of the existing wording’s provision which makes for applications to “collect dust” for the first two months, he is compelled to take the extra trouble of applying for an early commencement of the formal examination. Coupled with the proposed changes to Article 20 of the Patent Law, this amendment will make it all the more unnecessary to delay the beginning of a formal examination. An asset may be identified as falling within the category of that subject matter which is not eligible for legal protection more reliably upon analysis of the substance of the proposal applied for, i.e. upon the substantive examination rather than the formal examination of the invention application. |
| 2. In the event that an applicant submits any supplementary documents to be included in his application pursuant to Article 20 above, the examination shall aim to verify whether such documents introduce any new matter modifying the substance of the invention applied for *. Supplemental documents shall be deemed to introduce new matter modifying the substance of a filed invention if they make for such features to be included in the claims which were not in the original documents comprising the application. Any supplementary documents introducing new matter to modify the substance of an invention applied for shall be ignored for the purposes of examining the application, ** but may be filed by the applicant as a separate application.
| * a check shall be made in accordance with Article 20 of this Law ** and the applicant shall be notified accordingly. | This amendment (*) is in line with the explanations following directly below. The contents of the text to be deleted were moved, after some clarifications, to Article 20 of the Patent Law, where they also supplemented by a condition (absent from the existing Law) on which supplementary documents are held to modify the substance of the industrial design applied for. The text to be deleted repeats the corresponding portion of Article 19.3 of the Patent Law, while the addition (**) makes for accord with the remainder of Article 19.3 of the Law. |
| 3. The applicant shall be notified of the positive outcome of a formal examination and of * the priority determined in accordance with Article 19.1 of this Law. Should the formal examination find the application to refer to any subject matter that does not fall within the range of patentable assets, an office action shall be issued to refuse the grant of a patent. Such action may be disputed with the Chamber of Appeals at the Patent Office within two months of the date on which it is received by the applicant. His appeal shall be examined by the Chamber of Appeals at the Patent Office within two months of its receipt date. | * the application filing date as determined in accordance with Article 16.2 of this Law. | This amendment agrees with the proposed revision of Article 21.1 of the Patent Law (regarding the substance of a formal examination). The deletion of the remaining text removes the need for an action involved in determining the priority of an application, whose performance at the given phase in the examination has no legal consequences. Instead, it is proposed that the application filing date be determined, documented and reported to the applicant. |
| 4. Where a filed application is found to be inconsistent with any requirements applicable to its documents, the applicant shall be given a notice requesting that amended or missing documents be submitted within two months of the receipt date of such notice. Should the applicant fail to submit the requested documents * within such time period or to apply for its extension, the application shall be deemed withdrawn.** | * on time ** The prescribed time period may be extended by the Patent Office, but by not more than 12 months. | The words “such time period” (*) cannot apply to documents the period for the submission of which has been extended. This amendment (**) serves to ensure the unity of the terminology used [in Russian, the word “признается” [deemed, recognized] is replaced by “считается” [deemed, considered], without any consequence to the English text] and to accommodate the interests of third parties for whom the possibility of the prescribed time period being renewed indefinitely is equal to the perpetuation of legal uncertainty regarding a specific invention applied for. |
| 5. Where an application is found to be inconsistent with the unity * requirement, the applicant shall be requested to make it clear, within two months of the receipt date of the appropriate notice, which of the inventions applied for is to be examined and, if necessary, to update documents comprising the application. The other inventions covered by the original application may be filed as divisional applications. If the applicant fails to make it clear within two months of the receipt date of such notice of non-compliance with the unity ** requirement which of the *** proposals filed is to be examined and to submit updated documents, the **** asset listed in the claims first shall be examined. | * of invention ** of invention *** inventions **** invention appearing | This amendment is necessitated by the requirement to bring the given term into line with that used in Article 16.1 of the Patent Law. These amendments likewise serve the goal of ensuring the uniformity of terminology, in addition to providing for the possibility of more than two inventions being applied for. |
| 6. Should the formal examination of an application have a positive outcome, the Patent Office shall publish an appropriate report on such application upon the expiry of 18 months after its * receipt date, unless the application ** is withdrawn. The list of data to be included in such report shall be determined by the Patent Office. Following the publication of such report, any party shall have the right to inspect the documents comprising the application ***. **** The Patent Office may publish an application report earlier than ***** stated above if the applicant so requests. ****** The author of an invention may waive his right to be identified as such in the respective application report. | * filing ** was withdrawn or is deemed withdrawn as of the expiry of 12 months after such filing date or served as the basis for the registration of the respective invention in the Russian State Register of Inventions. The full list of data to be included in such report shall be determined by the Patent Office. *** unless the application was withdrawn or is deemed withdrawn as of the publication date of the report on such application. Should a report be published on an application which was withdrawn or is deemed withdrawn as of the publication date of such report, the data contained therein shall not be included in the state of the art with respect to subsequent applications filed by the same applicant. **** The procedure for inspecting documents comprising an application shall be prescribed by the Patent Office. ***** [upon the expiry of] 18 months after the filing date of the respective application ****** in a petition submitted prior to the expiry of 12 months after the application filing date. | This amendment (*) is called for by the same reasons which are given in the notes for Article 3.3 of the Patent Law. The 12-month period (***) requirement is explained by the fact that upon the expiry of 12 months it is technologically no longer possible to prevent an already prepared report publication from appearing in print. The publication of separate reports on applications for inventions which have already been registered would be redundant. See also the proposed new second paragraph to be added to Article 25 of the Patent Law (which is Article 26 in the suggested new wording of the Law). This addition (****) meets applicants’ interests, as the publication of reports on applications which have been withdrawn or are deemed withdrawn cannot be prevented for technological reasons already mentioned above. This limitation (*****) has the same reason of a technological nature, as the possibility of taking into account during the publication of application reports of only those amendments made to documents comprising the respective applications which were completed not more than 12 months after the filing dates of such applications (see Article 20 of the Patent Law). |
| 7. * At the request of an applicant or any third parties, which may be submitted at any time within three years of the receipt date of the respective application, the Patent Office shall perform a substantive examination of such application, aiming to determine the priority (unless it was not already established during the formal examination) and verify the patentability of the invention concerned. Failing such request within the above time period, the application shall be deemed withdrawn. The Patent Office shall notify the applicant of any such requests filed by third parties. | After sending a notice of the positive outcome of a formal examination to the applicant, the Patent Office shall perform the substantive examination of his application, which shall involve an information search regarding the invention applied for in order to determine the state of the art and verify the conformity of the invention to the patentability criteria established by Article 4 of this Law. An information search report for an application the priority date of which is determined in accordance with Article 19.1 of this Law shall be sent upon the expiry of six months after the commencement date of its substantive examination subject to the applicant’s filing of a request for such search prior to the commencement of the substantive examination, but not more than six months after the application filing date. The time period prescribed for the sending of an information search report to the applicant may be extended by the Patent Office should it be found necessary to request from outside organizations any source of information that is not found at the Patent Office itself or if the invention applied for is described in the original specifications and claims in a manner making it impossible to perform such search in full, and the applicant shall be notified accordingly. The Patent Office may not perform an information search regarding that industrial property matter applied for which falls among the non-patentable assets listed in Articles [?].2 and [?].3 of this Law, and the applicant shall be notified accordingly before the expiry of six months after the commencement date of the substantive examination of his application. The procedure for performing information searches and communicating their findings shall be prescribed by the Patent Office. | The applicant is objectively interested in obtaining information about the results of a patentability check on his invention as soon as possible. The practical experience of implementing the Patent Law shows that financial difficulties prompt Russian scientific, educational and other institutions funded out of the government budget, as well as authors, initially to take advantage of the possibility of “postponing” the start of the formal examination basically just a means of putting off the need to pay the prescribed fee. Their recourse to this option often leads, owing to the growth of such fees in absolute terms, to directly opposite results. The inclusion in the existing regulations on patent fees of a provision granting a respite for their payment to government-funded organizations (Russian Government Resolution No. 1058 dated August 20, 1987), combined with the possibility, as provided by the proposed wording of Article 13.5 of the Patent Law, for authors to file applications without paying any fees, will furnish favorable conditions for Russian applicants who will be able to use these options without relying on the “deferred examination” arrangement. Therefore, the continued preservation of the latter arrangement, which is mostly advantageous for foreign applicants, would only conserve the situation whereby the payment of patent fees by such applicants, which are due from them in foreign currency, is put off until a much later time (for up to three years). The “deferred examination” arrangement has, in point of fact, turned into an effective tool for exerting adverse influence on the Russian economy through the recording by foreign applicants of the priority of their inventions on Russia’s territory and the forcing of Russian inventors and producers into a situation of protracted legal and economic uncertainty regarding technical solutions disclosed in reports published on applications filed by foreign applicants. In addition, the principal reason why the “deferred examination” arrangement has been adopted in a number of foreign countries – namely: the inability of their respective patent offices to perform examinations of all incoming applications within acceptable time periods – is presently not in evidence in Russia. The abandonment of this arrangement will not result in the loss of its advantages consisting in the prompter provision of information to Russian inventors about new technical ideas (including those originating abroad) through the publication of application reports, since such reports are to be continued as before in accordance with the proposed version of the Patent Law. Unlike the case now, however, this will not result in the disclosure of the substance of such technical solutions without first ensuring their legal protection, as is often the case nowadays when substan tive examinations of applications already filed and reported are not requested solely because many applicants and other parties concerned simply do not have the funds required to pay the relevant fees. |
| 8. During its substantive examination of an application, the Patent Office may require that the applicant submit supplementary documents which are indispensable to the continued examination, including amended claims. Such supplementary documents requested by the examiner shall not be allowed to introduce any new matter modifying the substance of the invention and shall be submitted within two months of the date on which the applicant receives such request or copies of references cited to anticipate the invention if such copies were requested by the applicant within one month of the date of his receipt of the said request. Should the applicant fail to submit the requested documents within the prescribed period of time or to apply for its extension, the application shall be deemed withdrawn.* Any supplementary documents introducing new matter to modify the substance of a filed invention shall be subject to the procedure prescribed by Article 21.2 of this Law. Should the Patent Office find *** as a result of the substantive examination of an application that the filed invention as expressed by the claims proposed by the applicant meets the criteria of patentability, an office action shall be issued to grant a patent on such claims *****. Should a filed invention as expressed by the claims proposed by the applicant be found to be inconsistent with any of the patentability criteria, an office action shall be issued to refuse the grant of a patent.****** | * The said time period may be extended by the Patent Office, but by not more than 12 months. In exceptional cases, such time period may be extended by the head of the Patent Office by more than 12 months. *** in the process of its ***** with an indication of the established priority. ****** An office action to refuse the grant of a patent shall also be issued if the applicant does not amend the claims of the invention after being notified that his claims describe an invention that meets the criteria of patentability, but include such features as were absent from the original specifications, as well as from the claims if the same were contained in the application as of its filing date. Pending the issuance of an office action, the applicant shall be forwarded a notice to advise him of the outcome of the patentability testing of the invention applied for and to invite him to submit his related arguments. The applicant’s arguments shall be taken into consideration during the issuance of an office action on the outcome of the substantive examination of his application if they are submitted within six months of the forwarding date of such notice. An office action to grant a patent may be reviewed by the Patent Office prior to the registration of the invention in connection with the receipt of an invention application or a utility model application enjoying an earlier priority pursuant to Articles 19.2, 19.3, 19.4 and 19.5 of this Law or in connection with the identification of an application filed or a patent granted for an identical industrial property asset having the same priority. The Patent Office may review an office action on the outcome of the substantive examination of an application if such action was issued in violation of that procedure for the consideration of applications which is prescribed by this Law. An office action to grant a patent may be reviewed prior to the registration of the invention. An office action to refuse the grant of a patent may be reviewed within six months of the date on which it was sent to the applicant unless an appeal from the applicant against such office action refusing the grant of a patent, which is provided for by Article 21.10 of this Law, is received or, if such appeal was received before the expiry of such time period, then not later than the appeal receipt date. | See the explanation regarding the amendment (**) to Article 21.4 of the Patent Law. This amendment (***) is consistent with those proposed below. This addition (*****) does away with the uncertainty created in the given situation by the existing Patent Law. Thanks to this addition, the applicant will also acquire the right to go to the Chamber for Patent-Related Disputes to appeal the examiner’s decision regarding the substance of the invention having been modified. This addition (******, second paragraph) is in the interest of the applicant and makes it possible to heed his arguments prior to having recourse to the Chamber for Patent-Related Disputes. The possibility, as provided for by this addition, for the examiner to review his action granting a patent with due regard for new circumstances coming to light will make it possible to avoid the procedure of contesting the patent already issued (see also the proposal for Article 19.6 of the Patent Law). This part of the addition aims to provide fuller guarantees that applicants’ rights will be observed. |
| * | * 9. If a decision to deem an application to have been withdrawn is made in violation of applicable conditions as established by this Law, the Patent Office may reverse such decision within three months of the date on which the applicant was sent a notice of such decision, but not later than the receipt of an appropriate appeal as provided for by Article 21.10 below. | This addition is designed to ensure applicants’ rights to a fuller extent. |
| * An applicant may contest an office action to refuse the grant of a patent by filing an appropriate appeal with the Chamber of Appeals at the Patent Office within three months of the receipt date of such action or copies of references cited to anticipate the invention if the applicant requested them from the Patent Office within two months of the date of his receipt of the said action. The applicant’s appeal shall be considered by the Chamber of Appeals at the Patent Office within two months of the date of its receipt. | * 10. An applicant disagreeing with an office action to refuse the grant of a patent or with refusal to review an office action issued or with a decision to deem his application to have been withdrawn may file an appropriate appeal with the Chamber for Patent-Related Disputes at the Patent Office (the “Chamber for Patent-Related Disputes”) within three months of the receipt date of such office action, the notice of such decision to deem his application withdrawn, the notice of refusal to review the office action issued, or copies of references cited to anticipate the invention if the applicant requested them from the Patent Office within two months of the date of his receipt of the said action. The procedure for the filing of such appeals with and for their consideration by the Chamber for Patent-Related Disputes shall be prescribed by the Patent Office. | This wording is in line with the above proposals to amend Article 21.8 of the Patent Law. The Patent Office has created (as required by Decree No. 1008 dated September 11, 1997) a body performing the functions of the Supreme Patent Chamber as an administrative agency. With account taken of this fact, as well as of the decision that has already been taken to turn down a proposal to create a Russian Patent Court in lieu of the Supreme Patent Chamber, it is inexpedient to have two administrative authorities (Chamber of Appeals and Supreme Patent Chamber) to consider appeals and other petitions from applicants, patent owners and third parties both from the standpoint of these parties’ interests and for economic considerations. The Chamber for Patent-Related Disputes is proposed as the sole administrative agency (replacing the Supreme Patent Chamber and the Chamber of Appeals at the Patent Office) to take up such addresses (see the subsequent proposals regarding the competence of the proposed new body). |
| * 9. Should an applicant disagree with an decision issued by the Chamber of Appeals, he may lodge a complaint with the Supreme Patent Chamber within six months of the receipt date of such decision. The Supreme Patent Chamber’s decision shall be final. | | Article 21.9 of the Patent Law is proposed to be deleted considering that applicants already enjoy constitutional rights to legal protection (see also the explanations regarding the preceding provision). |
| 10. Upon the positive outcome of a formal examination, the applicant or any third parties may request a state-of-the-art information search for the respective application in order to determine whether the filed invention meets the novelty and inventive step criteria. The procedure for performing such search and communicating its findings shall be prescribed by the Patent Office.
| | The proposed deletion of Article 21.10 of the Patent Law is explained by the fact that according to the suggested amendment to its Article 21.7, an information search is to be conducted for all applications because of the changed examination procedure requiring that the substantive examination be carried out immediately upon the completion of the formal examination without the applicant having to file a special request towards this end. |
| 11. An applicant shall have the right to inspect all documents mentioned in the examiner’s request and indicated in the office action or the search report. The Patent Office shall send copies of the patent references requested by the applicant within one month of the date on which it receives such request from the applicant. | | Here and later on, the numeration changes are due to the deletion of Article 21.10 from the existing Patent Law. |
| 12. * Those time periods prescribed by this Article, with the exception of those set in its Clauses 7 and 9, and missed by the applicant may be reinstated by the Patent Office provided that the reason given for having missed such time periods is confirmed as valid and subject to payment of the prescribed fee. A petition to reinstate a time period missed may only be filed by the applicant within twelve months of the expiry of such period.*** **** | * Those time periods prescribed for the submission of documents by an applicant at the examiner’s request and for the filing of appeals with the Chamber for Patent-Related Disputes, which were *** Such petition shall be filed with the Patent Office simultaneously with the documents requested by the examiner or with a request for the extension of the time period prescribed for their submission or with an appeal lodged with the Chamber for Patent-Related Disputes. **** 13. If the examination of an application finds any data contained therein to constitute a state secret, the application shall be classified in accordance with the procedure prescribed by legislation of the Russian Federation. That report regarding such application which is to be published pursuant to Article 21.6 shall not be published. | The proposed new wording defines those time periods which are subject to reinstatement more clearly. This addition (***) lays down that procedure for the submission of documents which is similar to the one prescribed by the Russian Code of Civil Procedure. This addition (****) aims to prevent the divulgence of secret data contained in applications filed as non-classified ones, which may occur upon the filing of applications by individuals and enterprises other than in the public sector. |
| Article 22. Provisional Legal Protection | | |
| 1. Any invention applied for shall be granted provisional legal protection to the extent of the relevant claims published from the publication date of the application report until the publication date of the patent grant report.* | * but not in excess of the extent determined by the claims included in the patent granted. | This clarification corrects a drawback in the existing wording, which makes it lawful to demand compensation following the grant of a patent for the use of a particular asset, which is improperly covered by “broadly” formulated claims that have still to be examined, during the period of its provisional legal protection (which also concerns that asset in a filed group of inventions which turned out to unpatentable and was dropped from the claims during the issuance of the letters patent). |
| 2. Provisional legal protection shall be deemed to have not been granted * in the event of an office action ** to refuse the grant of a patent without further appeal options open. | * if the application was withdrawn or is deemed withdrawn or should an office action be issued ** Of relevance to the Russian text only | This addition closes a gap in the existing Patent Law. |
| 3. An individual or legal entity using a filed invention during the period of time indicated in Article 22.1 of this Law shall pay cash compensation to the patent owner upon the latter’s obtaining of the patent sought. The amount of such compensation shall be agreed upon by the parties. | | |
| 4. The provisions of Article 22.3 of this Law shall apply to inventions, utility models and industrial designs as of the date of the user’s notification by the applicant of his filing of a patent application if such date falls earlier than the publication date of the application report in the case of inventions or than the publication date of the patent grant report in the case of utility models and industrial designs. * | * The provisions of Article 22.3 of this Law shall also apply to inventions, utility models and industrial designs from the date of which a product incorporating the same is placed at an official or officially recognized international exhibition organized on the territory of a country which is a party to the Paris Convention for the Protection of Industrial Property, provided that the application for the grant of a patent for such invention, utility model or industrial design is filed with the Patent Office not more than six months after such date. | This addition accords with the requirements set out in Article 11 of the Paris Convention for the Protection of Industrial Property. |
| Article 23. Examination of Utility Model Applications | | |
| 1. The examination of a utility model application * shall not involve a check on its conformity to the patentability criteria set out in Article 5.1 of this Law. A certificate shall be granted on the applicant's own responsibility and without any guarantee of validity. | * which shall be performed subject to the submission of a document confirming payment of the prescribed fee or grounds for an exemption from, a rebate of or a grace for payment of such fee, shall aim to check whether all other requisite documents are included and meet applicable requirements and whether there is any obvious breach of the unity of utility model requirement and to decide whether the filed proposal falls within the range of assets patentable as utility models. The utility model applied for shall not be tested for its conformity to the patentability criteria set out in Article 5.1 of this Law. | The positive description of the substance of an examination undertaken with respect to a utility model application is more appropriate. The “formal examination” description is not up to the point, because the examination concerned involves a check on conditions relating to the substance of the utility model applied for. |
| 2. The formal examination of a utility model application shall be * correspondingly subject to the provisions of ** Article 21.1 through Article 21.5 of this Law. Should the examination find an application to have been filed for such subject matter as falls within the range of patentable assets and the documents comprising the application to be duly executed, an office action shall be issued to grant a patent. ***
| * duly ** Articles 21.2, 21.4, 21.5, 21.9, 21.10, 21.11, 21.12 and 21.13 of this Law. *** 2. Should an examination find an application to refer to a proposal falling within the range of assets patentable as utility models and the documents comprising such application to be duly executed, an office action shall be issued to grant a patent with an indication of its grant date and the priority date determined. Should an examination find an application refer to a proposal that does not fall within the range of assets patentable as utility models, an office action shall be issued to refuse the grant of a patent. An office action to refuse the grant of a patent shall also be issued if the applicant does not amend the claims of the utility model after being notified that his claims include such features as were absent from the original specifications, as well as from the claims of the utility model if such claims were contained in the application as of its filing date. An office action to grant a patent or to refuse the grant of a patent may be reviewed by the Patent Office in connection with the identification of an application filed or a patent granted for an identical industrial property asset having the same priority, as well as in those cases and in accordance with that procedure which are stipulated by the seventh paragraph of Article 21.8 of this Law. | This amendment (**) is consistent with the proposed changes to the structure and contents of Article 21 of the Patent Law (see the appropriate explanations) and reflects the need for priority to be determined in all cases of decision-making to grant patents for utility models, as follows from Article 3.2 of the Law. The reference to Article 21.11 of the Patent Law, which furnishes the possibility of reinstating time periods missed by applicants, is added in the latter’s interests. This addition (***) is prompted by the advisability of clearly defining conditions for the issuance of an office action to refuse the grant of a patent for a utility model (see also the notes regarding Article 21.8 of the Patent Law). |
| 3. An applicant or any third parties may request a state-of-the-art information search for a utility model application in order to determine the patentability of the utility model applied for. The procedure for performing such searches and communicating their findings shall be prescribed by the Patent Office. | | |
| 4. Following the publication of a certificate grant report, any party shall have the right to inspect the documents comprising the application.
| | The contents of the text proposed to be deleted are reflected in the proposed new second paragraph of Article 25 of the Patent Law (see the proposals for amending Article 26 /26 of the Law with account taken of numeration changes/). |
| Article 24. Examination of Industrial Design Applications | | |
| 1. * The Patent Office shall perform a formal examination and ** a substantive examination of an industrial design application. 2. The formal examination of an industrial design application shall be * correspondingly subject to the provisions of ** Article 21.1 through Article 21.5 of this Law. Should a formal examination have a positive outcome, it shall be followed up by a substantive examination.
A substantive examination shall be subject to the provisions of Article 21.8, Article 21.9, Article 21.11 and Article 21.12 of this Law.
| * Subject to the submission of a document confirming payment of the prescribed fee or grounds for an exemption from, a rebate of or a grace for payment of such fee, ** , if the same has a positive outcome, * duly ** Articles 21.1, 21.2, 21.3, 21.4, 21.5, 21.8, 21.9, 21.10, 21.11, 21.12 and 21.13 of this Law. | The proposed amendments to Articles 24.1 and 24.2 of the Patent Law are consistent with the suggested changes to the structure and contents of its Article 21, which has some provisions in common with Article 24, and aim to broaden the rights of applicants when it comes to reinstating time periods missed (reference to Article 21.11 of the Law). |
| 3. Following the publication of an industrial design report, any party shall have the right to inspect the documents comprising the application.
| | See the explanations regarding Article 23.4 of the Patent Law. |
| Article * 25. Publication of Patent Grant Reports | * 26. | The proposed changes in the numeration of Articles 25 and 26 of the Patent Law are in line with the sequence of steps taken in the technological process of registration and publication. |
| Upon the issuance of an office action to grant a patent and subject to the applicant’s payment of the patent fee, the Patent Office shall have its official newsletter publish an appropriate patent grant report which shall include the name(s) of the author(s), unless the author(s) waived his (their) right to be identified as such, and the patent owner, the title and claims of the invention or utility model or a list of the material features of the industrial design and a representation thereof. The full list of data to be included in such report shall be established by the Patent Office
****. | **** Following the publication of a patent grant report, any party may inspect the documents comprising the application and the Patent Office’s information search report for the invention application. The procedure for inspecting the documents comprising an application and an information search report shall be prescribed by the Patent Office. | It is advisable to concentrate in a single article all matters relating to the right of any party to inspect documents comprising an application following the grant of a patent sought therein (see the proposals concerning Articles 23.4 and 24.3 of the Patent Law and designed to move the contents of those clauses to its Article 25), including invention patents, with due regard for the fact that sometimes (when a patent is issued before the expiry of the time period prescribed for the publication of a report on the respective application) it is no longer necessary to publish a report on the application as such. |
| Article * 26. Registration of Inventions, Utility Models and Industrial Designs, and Grant of Patents | * 25. | |
| 1. Simultaneously with the publication of a patent grant report, the Patent Office shall register the appropriate invention, utility model or industrial design, respectively, in the Russian State Register of Inventions, the Russian State Register of Utility Models or the Russian State Register of Industrial Designs and shall issue the letters patent to the party in whose name it was sought.** In the event that a patent was sought in the name of several parties, they shall all be issued a single letters patent. *** | ** subject to the applicant’s payment of the patent registration and grant fee. *** Unless a document confirming payment of the patent registration and grant fee is duly submitted, the registration of an invention, utility model or industrial design and the issuance of a letters patent shall not take place and the respective application shall be deemed withdrawn. | The publication of such reports simultaneously with the corresponding registrations, as stipulated in the existing Patent Law, is technologically unmanageable. Unless this addition (***) is included, the legal status of applications for which patent grant fees still have to be paid will remain uncertain. |
| 2. The form of a letters patent and the list of data to be included therein shall be established by the Patent Office. | | |
| 3. The Patent Office shall correct obvious and clerical errors made in an issued letters patent if requested to do so by the patent owner. | | |
| Article 27. Withdrawal of Applications | | |
| * An applicant may withdraw his application prior to the publication of the relevant invention application report, but not later than the registration date of the corresponding invention, or prior to the registration date of the corresponding industrial design or utility model. | An applicant may withdraw his application prior to the registration of the corresponding invention, utility model or industrial design. | This amendment will broaden applicants’ rights. |
| Article 28. Conversion of Applications | | |
| Prior to the publication of an invention application report,* the applicant shall have the right to convert the application concerned into a utility model application by filing an appropriate request. ** A utility model application may be converted into an invention application prior to *** the issuance of an office action to grant a certificate sought thereunder. Any application converted as described above shall retain the priority **** of the first application. | * but not later than the receipt date of an office action granting a patent, ** other than where the application is accompanied by such undertaking by the author(s) which is provided for by Article 13.3 of this Law. *** the date on which the applicant receives an office action to grant a patent or, where the office action is to refuge the grant of a patent, prior to the exhaustion of options to appeal such action. **** and filing date | The existing wording does not preclude the possibility of a second title document being granted under the same application in the event that a conversion request is received after the issuance of an office action to grant an invention patent. This proposal (**) is consistent with the proposed new wording of Article 13.3 of the Patent Law, which does not provide either for any fee-free patenting of utility models or for the recall of the respective applications. The existing wording is fuzzy about the filing date of a converted application. |
| SECTION VI TERMINATION * OF PATENTS | *AND REINSTATEMENT | See the proposed new Article 31 of the Patent Law. |
| Article 29. Oppositions to Patents | | |
| 1. A patent may be contested and invalidated, fully or partially, at any time during its term in the following circumstances: * (a) the patented industrial property asset does not comply with the patentability criteria prescribed by this Law; ** (b) the claims of an invention or utility model or *** the material features of an industrial design include such features as were absent from the original **** documents comprising the corresponding application; or *****(c) the letters patent wrongly names the author(s) or the patent owner(s). | * (1) ** (2) *** the list of ****specifications, as well as from the claims of such invention or utility model if such claims were included in the application as of its filing date, or from the product’s original representations (mock-up, drawing); (3) the patent was granted in violation of those terms and conditions which are set out in Article 19.7 of this Law; (4) the patent was granted despite the applicant being in default of those requirements set out in Article 36.1 of this Law; or ***** (5) | As far as this amendment (****) is concerned, see the explanations regarding Article 3.4 of the Patent Law. This amendment (*****) is consistent with the above specifying of those documents comprising an application which may contain features subject to inclusion in the claims or in the list of material features. The existing Law is blurry on the situation clarified by this addition (3). This addition (4) is due to the need to bring Article 29 of the Patent Law into line with the proposed amendment to Article 35 of the Law (Article 36 according to the suggested numeration change). |
| 2. * The Chamber of Appeals shall consider an opposition to the grant of a patent on any of the grounds listed in Items (a) and (b) of Article 29.1 above within six months of the receipt date of such opposition and the patent owner shall be acquainted therewith. The Chamber of Appeals shall consider oppositions to the extent of the grounds referred to therein. 3. Should any party disagree with an decision issued by the Chamber of Appeals on an opposition to the grant of a patent, such party may lodge a complaint with the Supreme Patent Chamber within six months of the date of such decision and the relevant decision made by the Supreme Patent Chamber shall be final.
| * An opposition to the grant of a patent on any of the grounds listed in Items (1)-(4) of Article 29.1 above shall be filed with the Chamber for Patent-Related Disputes. The procedure for the consideration of such oppositions by the Chamber for Patent-Related Disputes shall be prescribed by the Patent Office. | The deletion of Articles 29.2 and Article 29.3 of the Patent Law are owing to the inadvisability of a situation where the same appeal is to be taken up by two different administrative bodies within the Patent Office and to the fact that the parties concerned already have the right to judicial protection. |
| Article 30. * Patent Termination | * Invalidation and Termination of Patents | The heading needs to be amended as the existing one does not cover cases which do not represent early termination of a patent. However, its invalidation should have legal consequences different from those stemming from the termination of the previously effective maximum term as allowed by the Patent Law. This circumstance is likewise taken into account by the proposed change to the article heading and suggested new Article 30.1. |
| * 1. A patent shall be terminated ** early:
- upon its full invalidation in accordance with Article 29 of this Law;
*** - on the basis of an appropriate motion filed by the patent owner with the Patent Office ****; or - should ***** maintenance fees not be paid on time ******. | * 1. A patent shall be invalidated, fully or partially, on the basis of an effective decision by the Chamber for Patent-Related Disputes or by an effective court judgement. ** 2. ***- upon the expiry of its term as established in accordance with this Law; ****, in which case the patent shall be terminated as of the date on which a report on the early termination of the patent upon such motion by the patent owner is published in the official newsletter of the Patent Office. Where a patent was granted for a group of industrial property assets, while the patent owner’s motion refers other than to the entire group of such assets, the patent shall be terminated only with respect to those industrial property assets which are designated in such motion; or ***** the maintenance fee ******* , in which case the patent shall be terminated as of the expiry date of the time period prescribed for payment of the patent maintenance fee. | This addition covers all cases of patent invalidation. This deletion (**) is due to the addition of Article 30.1. This addition (***) is necessitated to cover all cases of patent termination. This clarification (****) ends the existing Patent Law’s unclarity on this issue. |
| * 2. The Patent Office shall publish ** a patent termination report in its official newsletter. | * 3. ** reports on fully or partially invalidated patents and on terminated patents in its official newsletter. | |
| * | * Article 31. Reinstatement of Patents. Right of Subsequent Use | This new article is proposed to broaden the patent owner’s rights without disrupting the balance between his interests and those of third parties. |
| * | * 1. A patent invalidated fully or partially shall be reinstated by a court judgement reversing the full or partial invalidation of such patent. Those legal relations which arose in connection with the operation of the patent prior to the publication date of the respective patent invalidation report in the official newsletter of the Patent Office and were terminated in connection with the invalidation of the patent shall be restored as of the patent reinstatement date. | The legal regulation of patent reinstatement under the circumstances is required with due regard for the proposed amendment to Article 30 of the Patent Law, including the addition of new Article 30.1 (see above). |
| * | * 2. A patent terminated for failure to pay the maintenance fee on time may be reinstated on the basis of an appropriate request filed by the patent owner with the Patent Office within three years of the expiry date of the time period prescribed for payment of such fee and accompanied by a document confirming the prescribed reinstatement fee. A patent for an invention, utility model or industrial design may not be reinstated should the appropriate request be filed upon the expiry of, respectively, 20, 10 and 5 years after the date on which the application was filed with the Patent Office and if the patent extension provided for by Article 3.3 of this Law was not effected, or upon the expiry of the relevant extension deadlines. | Patent reinstatement under the circumstances (Article 31.2), combined with the right of subsequent use for third parties (see the proposed Article 31.4), serves the interests of the patent owner without detriment to the interests of others. The same approach is taken in the patent laws of a number of developed nations (Paragraph 123 of the German Patent Law, Section 28 of the British [sic] Patent Act, etc.). |
| * | * 3. The Patent Office shall publish patent reinstatement reports in its official newsletter. | |
| * | * 4. Any party that commenced the use of a patented industrial property asset during the period between the publication date of a patent invalidation or termination report and the publication date of a report on the reinstatement of the same patent, both in the official newsletter of the Patent Office, or that made essential preparations for the commencement of such use during the said period of time shall retain the right to continue using the asset concerned free of charge unless the scope of its use is enlarged (right of subsequent use). | The proposed Article 31.4 aims to protect the interests of third parties upon patent reinstatement (see the above comments on foreign patenting practice). |
| SECTION VII PROTECTION OF RIGHTS OF PATENT OWNERS AND AUTHORS | | |
| Article * 31. Court Hearings of Disputes | * 32. | Here and further on, the article numeration changes are due to the addition of new Article 31. |
| 1. Any disputes arising in connection with the application of this Law shall be dealt with in accordance with the procedure prescribed by legislation of the Russian Federation. Courts, including courts of state arbitration and courts of private arbitration, shall hear the following disputes in accordance with the limits of their competence: - disputes over the authorship of inventions, utility models and industrial designs; - disputes over patent ownership; - disputes over infringements of exclusive rights to use a patented industrial property asset and other proprietary rights of the patent owner; - disputes over the execution and performance of license contracts for patented industrial property assets; - disputes over the right of prior use; * - disputes over remuneration payable to the author by the employer pursuant to Article 8.2 of this Law; - disputes over compensation payable under this Law other than in the case stipulated by Article 13.4 above; and - such other disputes as may be related to ** the protection of rights certified by a patent other than those falling within the competence of the Supreme Patent Chamber. | *- right of subsequent use; ** the seeking of a patent for an industrial property asset or | The deletion is due to the absence of a need to enumerate different types of courts, since the existing text already points to the limits of their competence. This addition (*) is consistent with the proposal to introduce this legal notion (see the proposed new Article 31). This deletion is needed because the suggested new wording of Article 13.4 of the Patent Law provides for the judicial procedure to defuse disputes arising over amounts of compensation. This amendment (**) broadens applicants’ rights to the judicial protection of their interests during the patenting of industrial property assets. |
| Article * 32. Liability for ** Infringements of Authors' Rights | * 33. ** Breaches of This Law | |
| * Any usurpation of authorship, coercion to co‑authorship and unlawful disclosure of information about an industrial property asset ** shall entail *** criminal liability pursuant to legislation of the Russian Federation. | * An infringement of a patent owner’s exclusive rights, ** and breach of the procedure established for the patenting of an industrial property asset in foreign countries *** civil and | The proposed changes to the heading and wording of Article 32 (Article 33 according to the new numeration) are more closely in line with its designated purpose and to the provisions of the Patent Law on the rights of a number of parties in connection with the patenting of industrial property assets. |
| SECTION VIII FINAL PROVISIONS | | |
| Article * 33. Patent Fees | * 34. | |
| Legally relevant actions related to patents shall be performed for a fee. Patent fees shall be payable to the Patent Office. The list of actions for which patent fees shall be charged, their amounts, time periods for their payment, and grounds for exemptions from and rebates of such fees shall be established by the Government of the Russian Federation. | | |
| Article * 34. State Encouragement of Creation and Use of Industrial Property Assets | * 35. | |
| The State shall encourage the creation and use of industrial property assets, accord privileged taxation and crediting terms to authors and economic agents using such assets, and grant them other benefits pursuant to legislation of the Russian Federation. | | |
| Article * 35. Patenting of Industrial Property Assets in Foreign Countries | * 36. | The numeration change is due to the addition of a new article after Article 30 of the Patent Law. |
| The patenting in foreign countries of inventions, utility models and industrial designs created in the Russian Federation shall be carried out at least three months after of the date on which the respective application is filed with the Patent Office.
The Patent Office may, if necessary, allow an invention, utility model or industrial design to be patented in foreign countries earlier than prescribed above.
| * 1. For the purposes of patenting an industrial property asset created in the Russian Federation, an appropriate application may be filed in foreign countries or with international organizations by a party entitled to obtain a patent in the Russian Federation pursuant to this Law or by such party’s successor. | The existing wording is too restrictive as regards the rights of applicants, preventing them from filing an application abroad prior to its filing in Russia under any circumstances. |
| * | * 2. Invention applications and utility model applications may be filed in foreign countries or with international organizations upon the expiry of six months after the date on which the corresponding application is filed with the Patent Office. Invention applications and utility model applications may be filed earlier than upon expiry of the above time period, but upon the completion of a check undertaken in accordance with the procedure prescribed by the Government of the Russian Federation to verify that such application does not contain any data constituting a state secret. The requirements defined in the first paragraph of this Article 36.1 shall be deemed observed for an industrial property asset created in the Russian Federation and being patented according to the procedure prescribed by the Patent Cooperation Treaty or the Eurasian Patent Convention if the corresponding international application with an indication of the Russian Federation is filed with the Patent Office as the recipient agency or if the corresponding Eurasian application is filed through the Patent Office. The Patent Office may authorize those applications for inventions or utility models data regarding which does not constitute a state secret to be filed in foreign countries or with international organizations without filing an appropriate application with the Patent Office if the subject matter thereof falls within the range of assets that are not patentable pursuant to this Law. | The proposed extension of the time period (to six months from three months) upon the expiry of which an application may be filed with a foreign agency is owing to the need to bring this time period closer (with due regard for international practice) to those time periods prescribed to check whether any documents comprising an application disclose a state secret (and amounting in the United States to six months /see Paragraph 184 of Section 35 of the Code of Laws/ and in Germany to four months, with the possibility of an extension for another two months /see Paragraph 53 of the Patent Law/). The proposed wording (2) combines well with the listing of penalties to be imposed for a breach of the relevant procedure as prescribed by the Patent Law (see the proposed changes to its Article 32 /Article 33 according to the new numeration/ and Article 29 of the Law). |
| * | * 3. In the event that applications for inventions or utility models created in the Russian Federation are filed in foreign countries or with international organizations in violation of the procedure prescribed by Article 36.2 above, patents for such industrial property assets in the Russian Federation shall not be granted and where patents have already been granted such patents shall be invalidated. | |
| Article * 36. Rights of Foreign Individuals and Legal Entities | * 37. | |
| Foreign individuals and legal entities shall enjoy those rights granted by this Law on a par with individuals and legal entities of the Russian Federation in accordance with international agreements to which the Russian Federation is a party or on the basis of reciprocity. | | |
| * | * SECTION IX. INTERNATIONAL AGREEMENTS | It is proposed to add this section in connection with the addition of new Articles 39 and 40 which deal with Russia’s participation in international agreements. Their inclusion, just as the proposed expansion of Article 37 (Article 38 according to the new numeration), is needed to institutionalize a number of provisions connected with Russia’s participation in the Patent Cooperation Treaty (PCT) and presently invoked not on the basis of the Law, but merely on the basis of earlier practice; the inclusion of the said articles is also required in connection with the coming into force of the European Patent Convention to which the Russian Federation is a party. |
| Article * 37. International Agreements | * 38. | |
| * If an international agreement to which the Russian Federation is a party establishes rules other than those set out in this Law, the rules established by such international agreement shall prevail. | * The provisions of this Law shall apply both to those applications for title documents which are filed with the Patent Office in accordance with international agreements to which the Russian Federation is a party and to title documents effective on Russian territory in accordance with such agreements. | See the notes for Section IX. |
| * | * Article 39. Applications for Title Documents Having the Force of Applications Provided for by This Law | |
| | 1. The Patent Office shall commence those actions which are provided for by this Law with respect to an application filed in accordance with the Patent Cooperation Treaty (international application) indicating the Russian Federation as the country in which the applicant intends to obtain a patent, but not earlier than upon the expiry of those periods of time which are specified in the first paragraph of Article 39.2 below or prior to their expiry, if expressly requested by the applicant, provided in all cases that the applicant submits the Russian translation of such international application and a document confirming payment of the prescribed fee. The Russian translation of an international application may be replaced as part of the respective filing with the Patent Office by a Russian-language patent application stipulated by Articles 16 or 17 of this Law. Those time periods prescribed by Article 20s and 21.6 of this Law shall begin to run as of the date on which the Patent Office commences such actions with respect to an international application as are provided for by this Law. | |
| | 2. The time period reserved for the submission to the Patent Office of the Russian translation of an international application or a Russian-language patent application which is stipulated by Articles 16 or 17 of this Law shall be 21 months or, where the application has been subjected to a prior international examination, 31 months from the priority date requested by the international application. Should such time period be missed by the applicant, the international application shall be deemed withdrawn. The said period may be reinstated in accordance with the procedure prescribed by Article 21.12 of this Law. The Russian translation of other documents comprising an application and a document confirming payment of the [prescribed] fee may be submitted not more than two months after the expiry date of the time period specified in the first paragraph of this Article 39.2. Unless these documents are submitted on time, the international application shall be deemed withdrawn. | |
| | 3. A Eurasian application filed in accordance with the Eurasian Patent Convention shall have the force of an invention application stipulated by this Law from the filing date of the Eurasian application if the applicant files, upon being notified by the Eurasian Patent Office of its refusal to grant a Eurasian patent or to grant an appeal, an appropriate petition indicating the Russian Federation as the country in which he intends to obtain a patent according to the national procedure. | |
| | 4. Those actions provided for by Articles 21, 25, 26, 27 and 28 of this Law shall be performed with respect to a Eurasian application having the force of an invention application stipulated by this Law from the date on which the Patent Office receives a certified copy of such Eurasian application from the Eurasian Patent Office and a document confirming payment of the prescribed fee to the [Russian] Patent Office. Those time periods specified in Articles 20 and 21.6 of this Law shall likewise begin to run as of the same date. | |
| | 5. The publication of an international application by the International Bureau of the World Intellectual Property Organization under the Patent Cooperation Treaty, if made in the Russian language, and of a Eurasian application having the force of an invention application stipulated by this Law, if made earlier by the Eurasian Patent Office, shall replace the publication of a corresponding application report as required by Article 21.6 of this Law. | |
| | * Article 40. Identical Inventions Under Eurasian Patents and Russian Patents | |
| | Where a Eurasian patent and a Russian patent for identical inventions or an identical invention and an identical utility model, which have the same priority dates, are owned by different patent owners, each of the latter shall be entitled to use the patented industrial property asset at his own discretion. Should there occur a collision of rights enjoyed by any parties granted licenses by such patent owners to use the respective assets, the issue regarding the terms and conditions of their use by such parties shall be resolved in due course of law. Where a Eurasian patent and a Russian patent for identical inventions or an identical invention and an identical utility model, which have the same priority dates, are owned by the same party, such party may grant the right to use such invention and/or utility model under a license contract which shall refer to both patents. | The provisions set out in Article 40 of the Patent Law aim to regulate the steps to be taken during possible disputes. |
