Industrial design patent in Russia

Russian Federation – is the member of the following agreements: World Intellectual Property Declaration, Patent Law Treaty (PLT), Paris Convention for the Protection of Industrial Property, Locarno Agreement Establishing an International Classification for Industrial Designs (Locarno Classification). For providing the full protection of IP rights in Russia and avoiding of possible infringements, not only invention or utility model, but also article appearance can be patented. Industrial design patenting can be one more efficient way to protect the products from copying by other companies or individuals. According to the statistics of the Russian Federal Service for Intellectual Property (hereinafter - 'Rospatent'), on the 1st December, 2015, there were 28 312 industrial designs which have already been patented in Russia. As industrial design a decision of appearance of an article, industrially or handicraft manufactured, can be patented. To be patented, the industrial design is required to be new and original by its substantial features. Substantial features are the features, determining the aesthetic peculiarities of article appearance, namely shape, configuration, ornament, combination of colors, lines, contours of an article, texture or structure of an article material. Features, caused only by technical function of an article, are not protected. Industrial design is considered as new, if the complex of its substantial features, which are reflected on images of article appearance is unknown from the information, which became publicly available from the date of priority of industrial design. Industrial design is considered as original, if its substantial features are determined by the creative nature of article particularities. Namely, if other decision of article appearance with similar functions, which makes on informed consumer the same general impression as made by the industrial design, reflected on the images of article appearance, is unknown from the information became publicly available from priority date of industrial design. While establishing novelty or originality of the industrial design (under priority condition), all applications on inventions, utility models and industrial designs, and also applications on trademarks, service marks, filed in Russia by other persons and available for studying to anyone, are taken into account. As industrial design cannot be protected:
  • decisions, if all their features are determined entirely by the technical function of an article;
  • decisions, which are able to mislead the consumer of an article, including as to an article manufacturer, a place of manufacture, or a product, for which it serves as a packing material, packaging, or label.
  • Step 1: Application filing The application should be filed with 'Rospatent', which grants industrial designs patents. The right to obtain the industrial design patent initially belongs to the author, and may be transferred to other individuals or legal entities. Patent application on industrial design in Russia has to include: 1) application specifying the author of industrial design and the applicant, their residence(s); 2) series of article images, which provide a complete idea of substantial features of industrial design, determining the aesthetic particularities of an article appearance; 3) drawing of the general view of an article, team chart, if they are required for industrial design disclosure; 4) a description of the industrial design. The application should be filled in Russian. If there are documents in other languages, they must be translated into Russian. Patent application on industrial design can be related to one industrial design or the group of industrial designs, which conform to the same creative concept (industrial design unity requirement). On the filing date of application to 'Rospatent,' the industrial design priority is established. It also can be established on the convention priority date (first filing date in member of Paris Convention). A convention priority is valid during 6 months from the indicated date and can be extended if reasons beyond applicant's control appeared, but no more than for 2 months. Step 2: Formal examination. On this stage, the availability of the documents and their compliance with the requirements of the legislation are examined. If it passes successfully and the documents meet all requirements, the substantial examination will be provided. If the application does not meet all the requirements, or there is a lack of documents required, 'Rospatent' sends a notification to the applicant. In his turn, the applicant may send lack or amended documents (observations) to 'Rospatent', within 3 months from the date of sending notification. If, within this term, the applicant does not comply with all the requirements or does not apply for prolongation of the term, the application will be withdrawn (the prolongation term can be no more than 10 months). Step 3: Substantive examination Substantive examination in Russia includes:
  • information search concerning the industrial design, for the determination of publicly known information, which will be taken into account during patentability examination;
  • examination of the conformance to the patentability and other legislative requirements.
  • On this step 'Rospatent' can apply to the applicant for additional materials, which must be filed before expiring of 3-months term from the request. If the materials are not provided within the term, or prolongation is not requested, 'Rospatent' will withdraw the application. The term can be prolonged for no more than 10 months. Step 4: Registration If all documents conform with all the requirements, 'Rospatent' grants a patent. If at list one of the requirements or conditions of the patentability are not satisfied, 'Rospatent' refuses in patent granting. Basing on the decision for patent granting, 'Rospatent' enters the industrial design into the State Register of Industrial Designs. 'Rospatent' publishes the information about granting of the industrial design patent in the Official Bulletin, which includes the author's name (if the author did not rejected), name/title of the patent holder, title of the industrial design and the image of the article, giving the comprehensive view about all substantial features of the industrial design. For obtaining the industrial design patent all prescribed fees also have to be paid. Standart term of industrial design patenting in Russia is about 1 year. The term for protection of industrial designs in Russian Federation – is 5 years from the first filing date. It can be extended after application filing to 'Rospatent' for a 5-year term repeatedly, but for no more than 25 years in whole from the date of first application filing.