Patenting in Russia: new rules of the game

  • Tutorial
On October 1, 2014, amendments to Part IV of the Civil Code of the Russian Federation (Civil Code) governing the legal regime of intellectual property entered into force.



Briefly, the most important changes for applicants and rightholders regarding patenting of inventions and utility models:

1. There will no longer be “free” patents for utility models issued virtually under the applicant’s honest word, utility models are now subject to substantive examination. In general, the utility model is becoming more and more like a “lite” invention, as was originally intended by the legislator.
2. As a utility model, it is now possible to patent only one device (and not a group of devices, as before).
3. The descriptions, drawings and claims of inventions and utility models now need to be prepared more carefully, because:
a) the examination has the right to “wrap up” a poorly prepared application,
b) on one’s own initiative, changes to the formula and description can be made once after receiving a search report, other changes are possible only at the request of the examination,
c) to overcome the objections of the examination, an arbitrary additional technical result is not allowed,
d) a weak description can cause cancellation patent not only indirectly - by the criterion of industrial applicability (as it was before), but directly - by the criterion of completeness of disclosure of the essence of the invention or utility model.
4. In case of violation of the exclusive right to an invention, utility model, the copyright holder will be able (from January 1, 2015) instead of damages to claim compensation, the amount of which is established by the court.

Inventions


Paragraph 1 of Art. 1350 of the Civil Code of the Russian Federation: the definition of the concept of the invention is supplemented by an explicit indication of the use of the product or method for a specific purpose. Practical value: legislative consolidation of existing practice. It mainly affects pharmaceuticals, agricultural chemistry and other similar industries for which patenting of manufacturing or application technology is important.

Point 2 of Art. 1350 of the Civil Code of the Russian Federation: applications for industrial designs may be opposed to the invention. Practical value: This norm was introduced in connection with legislative consolidation of the possibility of converting an application for an industrial design into an application for an invention or into an application for a utility model.

Point 3 of Art. 1350 of the Civil Code of the Russian Federation: in the definition of the so-called "Inventive immunity" explicitly indicated the exposure of the invention at the exhibition.Practical value: legislative consolidation of existing practice.

Paragraph 5 of Art. 1350 of the Civil Code of the Russian Federation: explicit reference is made to the open nature of the list of decisions that are not inventions. Practical value: legislative consolidation of existing practice.

Article 1361 of the Civil Code of the Russian Federation: an indication of equivalent features is introduced in the definition of prior use rights of an invention. Practical value: the changes are clarifying in nature.

Paragraph 1 of Art. 1366 of the Civil Code of the Russian Federation: it was clarified that only the sole author of the invention has the right to file an application stating that, in the event of granting a patent, the applicant agrees to conclude an agreement on the alienation of a patent (i.e. this right does not extend to the team of authors) and that already paid fees are not refundable. Practical value: the changes are clarifying in nature.

Point 2 of Art. 1375 of the Civil Code of the Russian Federation: in paragraphs. 1) an indication has been introduced of a person who has the right to obtain a patent in paragraphs. 2) an indication of a specialist in this field of technology, in paragraphs. 3) an indication of the clarity of expression of the essence of the invention has been introduced. Practical value: the changes are clarifying in nature.

Paragraph 5 of Art. 1378 of the Civil Code of the Russian Federation: the period during which the changes made by the applicant to the documents of the application for an invention are taken into account when publishing information about the application, increased from 12 to 15 months. Practical value: streamlining formalities.

Article 1384 of the Civil Code of the Russian Federation: the deadline for responding to a request has been changed - it used to be two months from the day the applicant received the request, now it is three months from the day the request was sent by Rospatent. Practical value: legislative consolidation of existing practice. Rospatent will no longer take into account the "jambs" of the Russian Post. To conduct correspondence on applications, it is advisable to use an electronic personal account.

Paragraph 1 of Art. 1385 of the Civil Code of the Russian Federation: publication of information about the application is not carried out if before the expiration of 15 months (earlier it was 12 months) from the date of filing the application for an invention, it was withdrawn or recognized as withdrawn or on the basis of which registration of the invention took place. Practical value: streamlining formalities.

Point 2 of Art. 1386 of the Civil Code of the Russian Federation: the scope of actions during substantive examination is clarified - a reference is made to the requirements and conditions established by paragraph 4 of Art. 1349 of the Civil Code of the Russian Federation, para. 1 p. 1, p. 5 and p. 6 of Art. 1350 of the Civil Code of the Russian Federation (these changes are clarifying in nature), and verification of the adequacy of the disclosure of the essence of the claimed invention in the application documents has been introduced. Practical significance: an important change - descriptions, drawings and claims should now be prepared more carefully.

Paragraph 1 of Art. 1387 of the Civil Code of the Russian Federation: it is clearly indicated that with insufficient disclosure of the essence of the claimed invention, a decision is made to refuse to grant a patent; A six-month deadline for responding to the examination decision is set from the day the request was sent by Rospatent. Practical significance: an important change - descriptions, drawings and claims should now be prepared more carefully. In addition, Rospatent will no longer take into account the "jambs" of the Russian Post. To conduct correspondence on applications, it is advisable to use an electronic personal account.

Point 3 of Art. 1387 of the Civil Code of the Russian Federation: the deadline for filing an objection to refuse to grant a patent or recognition of an application revoked (it used to be 6 months from the day the applicant received the decision, now 7 months from the day the decision was sent by Rospatent) and the deadline for requesting opposed materials (it used to be 2 months from the day receipt of the decision by the applicant, now - 3 months from the date the decision was sent by Rospatent). Practical value: legislative consolidation of existing practice. Rospatent will no longer take into account the "jambs" of the Russian Post. To conduct correspondence on applications, it is advisable to use an electronic personal account.

Article 1388 of the Civil Code of the Russian Federation: the applicant has the right to familiarize himself with all materials related to patenting of inventions referred to by Rospatent, with the exception of documents of an unpublished application.Practical value: legislative consolidation of existing practice.

Article 1389 of the Civil Code of the Russian Federation: the article excludes the mention of evidence of the validity of the reasons for which the period of the applicant's necessary action was not respected. Practical value: streamlining formalities. The exclusion of the mention of evidence does not mean that the validity of the reasons is not required to be proved, since Rospatent will still decide whether they are respectful or not.

Point 3 of Art. 1392 of the Civil Code of the Russian Federation: the term "monetary compensation" is replaced by the term "monetary compensation". Practical value: the changes are clarifying in nature.

Utility Models


Point 2 of Art. 1351 of the Civil Code of the Russian Federation: the concept of the prior art of a utility model now fully coincides with the concept of the prior art of the invention. Practical value: the legal regime of the utility model approaches the legal regime of the invention.

Point 3 of Art. 1351 of the Civil Code: in the definition of the so-called "Inventive immunity" explicitly indicated exhibiting a utility model at an exhibition. Practical value: legislative consolidation of existing practice.

Paragraph 5 of Art. 1351 of the Civil Code of the Russian Federation: in defining decisions that are not a useful model, a clarifying reference is given to paragraph 5 of Art. 1350 and an indication was entered that the application relates to these objects as such. Practical value: the changes are clarifying in nature.

Point 6 of Art. 1351 of the Civil Code of the Russian Federation: in the definition of objects that are not provided with legal protection as a utility model, a reference is made to paragraph 6 of Art. 1350. Practical: changes are clarifying.

Paragraph 1 of Art. 1376 of the Civil Code of the Russian Federation: an application for a utility model must relate to one utility model. Practical value: important change - the possibility of patenting a group of utility models by one application is excluded.

Point 2 of Art. 1376 of the Civil Code of the Russian Federation: requirements for the content of the application for a utility model are made symmetrical with the requirements for the content of the application for an invention (taking into account clause 1 of article 1376 of the Civil Code of the Russian Federation). Practical value: the legal regime of the utility model approaches the legal regime of the invention.

Paragraph 1 of Art. 1390 of the Civil Code of the Russian Federation: the scope of actions for substantive examination of the utility model has been clarified - a reference is made to the requirements and conditions established by paragraph 4 of Art. 1349 of the Civil Code of the Russian Federation, para. 1 p. 1, p. 5 and p. 6 of Art. 1351 of the Civil Code of the Russian Federation ( these changes are clarifying in nature ), and verification of the adequacy of the disclosure of the essence of the claimed utility model has been introduced. Practical significance: an important change - descriptions, drawings and formulas of utility models now need to be prepared more carefully.

Point 2 of Art. 1390 of the Civil Code of the Russian Federation: it is clearly indicated that with insufficient disclosure of the essence of the claimed utility model, a decision is made on refusals to grant a patent; A six-month deadline for responding to the examination decision is set from the day the request was sent by Rospatent. Practical value:an important change - descriptions, drawings and claims should now be prepared more carefully. In addition, Rospatent will no longer take into account the "jambs" of the Russian Post. For correspondence to applications, it is advisable to use an electronic personal account.

Inventions + utility models


Article 1349 of the Civil Code of the Russian Federation: in the list of objects that cannot be objects of patent rights, a clone of a person is explicitly indicated in clauses 4) a clarifying reference to paragraphs is given. 1). Practical value: the changes are clarifying in nature.

Point 2 of Art. 1358 of the Civil Code: added 4) symmetrical to a change in Art. 1350 of the Civil Code of the Russian Federation regarding the use of a product or method for a specific purpose. Practical value: the changes are clarifying in nature.

Point 3 of Art. 1358 of the Civil Code of the Russian Federation: the criteria for recognizing used inventions and utility models are clarified. It is explicitly stated that the doctrine of equivalents does not apply to the utility model. Practical value: the changes are clarifying in nature.

Article 1358.1 of the Civil Code of the Russian Federation: the concept of a dependent invention and a dependent utility model is introduced, their legal regime is defined. Practical value: the changes are clarifying in nature.

Article 1359 of the Civil Code of the Russian Federation: it is expressly stated that repeated import, resale and other similar actions do not constitute a violation of the exclusive right to an invention, utility model or industrial design. Practical value: the changes are clarifying in nature.

Paragraph 1 of Art. 1378 of the Civil Code of the Russian Federation: changes to the application documents (except for changing information about the author and applicant) on their own initiative can now be made only once after receiving the search results, other changes are possible only at the request of the examination. By the way, such an order is a common practice in many countries. Practical value:important change - descriptions, drawings and claims of inventions and utility models now need to be prepared more carefully.

Point 2 of Art. 1378 of the Civil Code of the Russian Federation: changes in the application will be checked for compliance with the requirements of the unity of invention (this is a legislative consolidation of existing practice); to overcome the objections of the examination of novelty and / or inventive step, it is now not allowed to indicate an arbitrary additional technical result. Practical significance: an important change - descriptions, drawings and claims of inventions and utility models now need to be prepared more carefully.

Article 1379 of the Civil Code of the Russian Federation: the possibility of mutual conversion of applications for inventions, utility models and industrial designs was introduced.Practical value: in real life, it may be necessary in case of an incorrect filing of an application with the wrong type of application (for example, they wanted to file an application for an invention, but filed for an industrial design, although the application materials contain all the attributes of an application for an invention - before this application had to be revoked and filed again with loss of priority, and now you can convert it).

Point 3 of Art. 1381 of the Civil Code of the Russian Federation: when determining the priority of an invention, utility model by the filing date of the earlier application by the same applicant, the condition of the absence of state registration (i.e., granted patent) for the earlier application is introduced. Practical value: the changes are clarifying in nature.

Paragraphs 2 and 3 of Art. 1382 of the Civil Code of the Russian Federation: for utility models, the same legal regime is established with regard to the convention priority as for inventions. Practical value: the legal regime of the utility model approaches the legal regime of the invention.

Paragraph 1 of Art. 1382 of the Civil Code of the Russian Federation: a 12-month period for decision-making by applicants who simultaneously filed applications for identical inventions was established from the day Rospatent sent it, it used to be from the day it was received by applicants. Practical value: Rospatent will no longer take into account the “jambs” of the Russian Post. To conduct correspondence on applications, it is advisable to use an electronic personal account.

Point 2 of Art. 1393 of the Civil Code of the Russian Federation: the decision to declare the application withdrawn due to non-payment of the registration and grant of a patent for an invention or utility model is not taken if the decision to grant a patent is disputed. Practical value: if, after the decision by Rospatent to grant a patent (this event is visible to everyone in the register) and before the grant of a patent from a third party, an objection to the grant of a patent has been received, then the fee can not be paid until a decision is made on the opposition.

Point 4 of Art. 1393 of the Civil Code of the Russian Federation: it is clearly indicated that Rospatent makes changes to the issued patent and the relevant registry related to information about the copyright holder and (or) about the author, including the name, name of the copyright holder, his location or place of residence, name of the author, correspondence address.Practical value: earlier it was necessary to force Rospatent through the court to change erroneous information about the author.

Point 2 of Art. 1395 of the Civil Code of the Russian Federation: it is clearly indicated that the national application, which claims the priority of the international application, is not recognized as withdrawn. Practical value: legislative consolidation of existing practice.

Paragraph 1 of Art. 1396 of the Civil Code of the Russian Federation: it is clearly indicated that the deadline for submitting the indicated documents missed by the applicant can be restored provided that the reasons for non-compliance are indicated.Practical value: the changes are clarifying in nature. It should also be noted that in order to restore missed deadlines for international applications, Rospatent applies the “due care” criterion, i.e. the applicant must indicate good reasons for missing and Rospatent may request evidence of their respect.

Paragraph 1 of Art. 1398 of the Civil Code of the Russian Federation: the reason for revocation of a patent may be a failure to disclose the essence of the invention or utility model with the completeness sufficient for the implementation of the invention or utility model by a person skilled in the art. Practical significance: an important change - descriptions, drawings and claims of inventions and utility models now need to be prepared more carefully.

Point 2 of Art. 1398 of the Civil Code of the Russian Federation: it is clearly indicated who and where should file an objection to the grant of a patent for various reasons. Practical value: legislative consolidation of existing practice.

Point 3 of Art. 1398 of the Civil Code of the Russian Federation: the conditions for the transformation of the controversial invention into a utility model are defined; the priority and filing date are retained. Practical value: the changes are clarifying in nature.

Paragraph 1 of Art. 1400 of the Civil Code of the Russian Federation: it is clearly indicated that the restoration of a patent is possible not only at the request of the person who owned the patent, but also at the request of the assignee of that person. Practical value: the changes are clarifying in nature.

Point 4 of Art. 1400 of the Civil Code of the Russian Federation: it is clearly indicated that the right of after-use can be transferred to another person only together with the company where the use was made or the necessary preparations were made for this. Practical value: the changes are clarifying in nature.

Article 1406.1 of the Civil Code of the Russian Federation (will be enforced from January 1, 2015): in case of violation of the exclusive right to an invention, a utility model, the copyright holder, instead of damages, will be able to demand compensation, the amount of which is established by the court. Practical Importance: An Important Change- now no laborious loss calculation is required; Compensation, perhaps, will be easier and faster than reimbursement. Previously, compensation instead of damages could only be claimed in respect of copyright and related rights, as well as means of individualization.

Changes regarding service inventions and utility models - see here .

Contracts (disposals and licensing)


Clause 3.1 of Art. 1234 of the Civil Code of the Russian Federation: gratuitous alienation of the exclusive right in relations between commercial organizations is not allowed, unless the Civil Code provides otherwise. Practical value: legislative consolidation of existing practice.

Paragraph 5.1 of Art. 1235 of the Civil Code of the Russian Federation: the granting of the right to use the result of intellectual activity or means of individualization in relations between commercial organizations throughout the world and for the entire duration of the exclusive right under the exclusive license is not allowed. Practical value: the changes are clarifying in nature.

Paragraph 5 of Art. 1234 of the Civil Code of the Russian Federation: a thirty-day period has been set for the acquirer to eliminate the exclusive right of debt to the copyright holder before the copyright holder can unilaterally withdraw from the contract and demand damages. Practical value: the changes are clarifying in nature.

Clause 1.1 of Art. 1236 of the Civil Code of the Russian Federation: the licensor is not entitled to use the result of intellectual activity or the means of individualization to the extent that the right to use such a result or such means of individualization has been granted to the licensee under an agreement under an exclusive license, unless otherwise provided by this agreement. Practical value: the changes are clarifying in nature - the default value of this parameter is legally established.

Point 4 of Art. 1236 of the Civil Code of the Russian Federation: a condition of a substantial debt and a thirty-day period for its liquidation are established before the licensor can unilaterally withdraw from the license agreement and demand damages. Practical value: the changes are clarifying in nature.

Article 1369 of the Civil Code of the Russian Federation: explicitly stated on the invalidity of the contract on disposal of the exclusive right in case of non-compliance with the written form. Practical value: legislative consolidation of existing practice.

General Provisions


Paragraph 1 of Art. 1232 of the Civil Code of the Russian Federation: the copyright holder is obliged to notify Rospatent of a change in the name or name, location or place of residence and address for correspondence of the copyright holder. The risk of adverse consequences if such notification is not made or false information is provided is borne by the copyright holder. Practical value: if, due to a change in the name, name or address of the copyright holder, it was not possible to inform, for example, of a patent dispute that has arisen, this dispute can be considered without his participation and the decision will most likely prove to be not in his favor. That is, in this case, there is a risk of losing the patent and not even know about it until a certain time.

Paragraphs 3-5 of Art. 1250 of the Civil Code of the Russian Federation: an indication of force majeure circumstances, exempting from liability for violation of intellectual rights, and the right to recourse claims (for example, if the violation occurred to the consumer through the fault of the manufacturer). Practical value: the changes are clarifying in nature.

Clause 6.1 of Art. 1252 of the Civil Code of the Russian Federation: in the event that one violation of the exclusive right to the result of intellectual activity or a means of individualization is committed by the actions of several persons together, such persons shall be jointly and severally liable to the copyright holder. Practical value: the changes are clarifying in nature.

Article 1253 of the Civil Code of the Russian Federation: the condition for the presence of guilt in violation of exclusive rights for the liquidation of a legal entity or the termination of IP activities is established.Practical value: extortion and “white” raiding are complicated.

Article 1254 of the Civil Code of the Russian Federation: the possibility of a licensee to demand the liquidation of a legal entity and the termination of IP activities in case of violation of exclusive rights is excluded. Practical value: extortion and “white” raiding are complicated.

Conclusion


Only those changes of the greatest practical importance are mentioned here. A full summary of changes with references to expired and effective documents is available in Consultant Plus and other legal bases. If someone cannot download it, I am ready to share this summary in the form of a file.

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