Recent Amendments in Intellectual Property Protection in Russian Federation
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Below we provide the brief analysis of recent amendments.
1) It has been introduced the possibility to file trademark oppositions. According to the amended article 1493 of CC everybody can file opposition that trademark does not meet the trademark requirements after the application publication to the moment of making the decision about registration. In this situation it will be more difficult to register the trademark, but at the same time third parties will be able to monitor published applications and influence on the examination. Therefore, if the trademark is misleading or infringe the copyright you can protect your right without bringing a court action against such applicants.
2) License agreement on the usage of the trademark should contain the list of goods for which trademark is registered (nowadays the requirements of the license agreement are subject of the agreement and ways of usage of IP’s objects). So when you specify such list of goods in the license agreement, it should be noted, that rights may not be assigned for entire list of goods, but only for some of goods.
3) The term of submitting additional materials on the request of Rospatent has been changed. According to the new version of Civil Code of RF this term will be 3 months from the date of sending the request. In practice, Rospatent’s requests can be received in several weeks or even months after sending. And in fact Rospatent doesn’t care when the request has been received. To avoid problems with the Rospatent’s requests we recommend monitoring the applications on the web-site of Patent Office of RF. Please remember: if applicant failed to submit the additional materials, application is withdrawn.
1) In Russian Federation the scope of legal protection conferred by the patent is determined by an set of substantial features which are represented in the images of the article and specified in the list of substantial features of industrial design. In our opinion, this rule can be easily abused. You may apply the images with the one set of substantial features, but in description you may specify another set. For instance, you want to obtain the patent on the bottle, which substantial feature is engraving on the bottleneck, but in the description this substantial feature is absent.
2) Term of validity of industrial design patent has been changed. Under the current legislation, term of validity of the industrial design patent is 15 years from the date of filing the application, but according to the amended article this term will be 5 years and may be extended for 5 years each time but no more than to 25 years.
1) Amendments introduce the substantive examination of applications for the utility models. Current version of CC of RF does not provide the substantive examination of applications for the utility models. As a result, person can patent not new decision. It facilitate the development of patent trolls.
The substantive examination of utility models will include:
- prior art patent search,
- examination of the requisites of patentability,
- examination of sufficiency disclosure of utility model application.
Therefore applicants should be more attentive when they are drafting the application for the utility model. We recommend conducting of patent search, analyzing compliance with the criteria of novelty and industrial applicability and analyzing the sufficiency disclosure of utility model application.
2) Under current version of Civil Code of RF there is possibility to transform a utility model application for invention application. According to the amendments in CC RF it will exist the possibility to transform this application into industrial design application. For example, if the bottle is the object of obtaining for the industrial design certificate, but the applicant realizes that there is the possibility of refusal or applicant obtained refusal, he (she) can transform a utility model application into an invention application. By the way, there is the possibility vice versa - you can transform an industrial design application into a utility model application.
3) It has been introduced new definition: dependent invention (utility model or industrial design). It is object which you can’t use in product or process without usage of another invention (utility model, industrial design). For instance, if subject matter of patent is drug composition X, you can’t use dependent invention (utility model or industrial design) without consent of patent’s owner on the another object of intellectual property, for which it was applied as dependent. It means that on the one hand it will be easier for applicants to protect their rights, especially in pharmaceutical sphere, and on the other hand, applicant should conduct patent searches on the novelty more carefully before you enter the RF market.
We should also pay attention to the amendments which concern the license agreement. The significant amendments are:
1) possibility of unilateral termination of the agreement by the licensor if the licensee broke the obligation to remunerate in law day. The licensor also has the right to claim damages for the unilateral termination of the agreement. In this situation agreement is terminated on the expiry of 30-days term from the moment of taking the notice about the termination;
2) possibility to remunerate in the form of fixed one-time or recurrent payments, percentage allocations and in other forms;
3) prohibition to assign the rights of usage on the free of charge base for commercial organization worldwide and for the term of validity of exclusive license. It is also prohibited the gratuitous assignment of the rights.
In practice there are many questions in the situations when the same object has legal protection as trademark, trade name or industrial design. At the same time these objects are ownership of different persons. For instance, in RF there is a lawsuit between public company «Autodom», owner of trademark «Autodom» and private company «Autodom», which exploited in their trade name mark «Autodom». There are different types of opinions on this problem, produced by court practice, but on 1.10.2014 the new rule is coming into force. According to this rule if different means of identification (trade name, trademark, service mark, commercial name) are admitted by court as identical or misleading similar, the object, for which legal protection was obtained earlier, has a preference prior to the other means of identification.
It means that before the filing the application for the registration of the trademark Ukrainian applicant should not only conduct trademark search, but also for trade names.