WORLD PATENT & TRADEMARKOSAKA
DAIWA MINAMIMORIMACHI BLDG.,
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WORLD TRADE CENTER BLDG. 21 F,HIROSHIMA
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in March 2018
GLOBAL GATE 9F, 4-60-12 HIRAIKE-CHO, NAKAMURA-KU, NAGOYA-SHI, AICHI 453-6109, JAPAN
In the background of the HARAKENZO trademark is a global map wherein countries/regions are sized according to the number of patents registered there in 1991.
|Information on Developing Countries
(BRICs, VISTA, et cetera)
Patent engineering staff specialized in patent affairs : Tomoo HIGUCHI
Design/trademark staff specialized in design/trademark affairs : Keiko NISHIDA
OSAKA HEAD OFFICE TEL
OSAKA HEAD OFFICE FAX
: + 81-6-6351-4384
: + 81-6-6351-5664
Information on Intellectual Property in Russia
1. Summary of the Russian Federation
The Russian Federation (Russia) is about forty-five times the size of Japan and has a population of about 140 million people (2013). Russia had the world’s eighth-largest GDP in 2012 and holds an important industrial position as a member of BRICs.
Russia maintained high growth at an average real GDP growth rate of 6.9% for ten years up through 2008. Although Russia’s real GDP growth rate in 2009 turned negative due to the global recession, Russia’s real GDP has been keeping positive growth since 2010. According to the estimation of the International Monetary Fund (IMF), Russia’s real GDP will keep positive growth of approximately 1.2% for the next five years from 2014.
Fig. 1 Russia’s GDP Growth
Russia’s intellectual property system was established in 1992, the year after the collapse of the former Soviet Union, with enactments of a patent law, utility model law, and design law. In 1993, laws for trademarks and copyrights were enacted. These intellectual property laws of 1992 and 1993 underwent revisions in 2002 and 2003, and in preparation for entry to the WTO, Russia consolidated these in its revision of Part IV of the Civil Code. In 2014, Part IV of the Civil Code further underwent revisions.
Russia is a signatory to the Paris Convention (July 1, 1965), Madrid Agreement (January 7, 1976), Madrid Protocol (June 10, 1997), Nice Agreement (December 30, 1987), Budapest Treaty (April 22, 1981), the WTO (August 22, 2012) and other intellectual property agreements (dates of entry are given in parentheses).
2. Summary of Intellectual Property Rights in Russia
(1) Recent Statistics of Applications
Figs. 2 and 3 each show transitions of the numbers of applications, for patent, utility model registration, design registration, and trademark registration, filed in Russia. The number of applications tends to increase in each field of the industrial property rights. Out of four jurisdictions, the number of applications for trademark registration is the largest.
Fig. 2. Number of Applications for Each Jurisdiction
Fig. 3. Nationalities of Applicants
(2) Actual Condition of Intellectual Property Protection in Russia
In Russia, legal actions taken against infringements of intellectual property rights include customs regulation, administrative punishments, criminal suits filed with the Department of the Interior, and civil suits filed with the court.
Infringements of intellectual property rights seen in Russia are mainly on trademarks or copyrights by counterfeit or pirated products. Among counterfeit products and the like distributed in Russia, the majority is manufactured in China etc. and smuggled into Russia across the border.
Trademark right holders can request the customs to prohibit the import and export of infringing products, by registering their registered intellectual property rights with the customs under the system of the customs register of intellectual property right information. The customs officers pay special attention to the registered intellectual property rights and suspend customs clearance of suspicious imports/exports. If infringements are verified, the trademark right holders can invoke their trademark rights, i.e., take legal actions including administrative punishments. Note that the registration fee for the customs register is free.
The use of the system of the customs register has been increasing year by year. As of May, 2012, 25 Japanese enterprises have registered 105 cases in the customs register. The industrial fields of the registered cases include food and confectionery (33%), alcoholic beverage (27%), clothing and shoes (12%), sanitary article (10%), and electrical appliance (7%), in decreasing order.
(3) Principle fees for acquisition of IP rights
The following table 1 shows principle fees for acquisition of Russian intellectual property rights.
Table 1. Principle Fees (Unit: Russian Ruble)
- *1 for each claim in excess of 25 claims
- *2 reduction of 20% is applicable upon attachment of an ISR or an IPER to an application
- *3 for each independent claim in excess of 10 independent claims
- *4 for each design in excess of 1 design
- *5 for each class of goods/services in excess of 1 class of goods/services
(4) PPH between Japan and Russia
Patent Prosecution Highway Pilot Program (PPH) is available between the Russian Patent Office and the Japan Patent Office since May 18, 2009. Further, on June 1, 2013, PCT-PPH pilot program was started, so that the accelerated examination system became more convenient.
3. Summary of System of Each Jurisdiction
In Russia, intellectual properties are protected under Part IV of the Civil Code revised on October 10, 2014.
Table 2 shows aspects common to each form of intellectual property protection in Russia. There are many aspects common to Japan’s, but difference does exist between the two countries’ systems, such as the fact that whereas Japan’s utility model system requires a degree of inventive step in addition to novelty, Russia’s utility model rights can be given without fulfillment of any requirement of inventive step.
Table 2. Summary of Each Jurisdiction
Note: An applicant can correct errors in a Russian translation submitted subsequently to filing of an application, on the basis of a language used in the specification of the application as originally filled with the Russian Patent Office.
(2) Patent and Utility Model
- (2-1) Subjects of Protection
Technical solutions in any area related to products (for example, devices, substances, microorganism strains, and cell cultures of plants or animals) or methods (process of affecting a particular object by using particular means) may be protected as inventions. Devices or parts of the devices for producing goods may be also protected as utility models. Further, use inventions may be protected after the revision of Part IV of the Civil Code on October 1, 2014.
However, discoveries; scientific theories; mathematical methods; rules of games; intellectual or business activities; computer software; ideas on presentation of information; varieties of plants; breeds of animals; layout designs of integrated circuits; proposals contrary to the public good, human principles, or morals; et cetera are not protected. Note that storing devices containing a computer program are not protected if the subject matter is the computer program (computer programs may receive protection under copyright)
- (2-2) Application Formats
Acquiring a patent in Russia takes one of four routes, namely, 1) direct application to the Russian Patent Office, 2) the Paris Convention route, 3) the PCT route, and 4) the Eurasian patent application.
- (2-3) Divisional Applications
A divisional application can be filed prior to issuance of a decision of grant or a decision of refusal, or even during a period in which an appeal can be filed against a decision of refusal of a parent application. However, Russia’s patent system does not have a system corresponding to the continuation application (CP) or continuation-in-part application (CIP) of the United States.
- (2-4) Publication of Information
After the elapse of 18 months from the filing date of a patent application in respect of which formality examination findings are favorable, information on the patent application is published in a Russian patent publication. However, publication will not be made if the application is withdrawn within 12 months of the filing date of the application or the application is granted a patent. In a case where the information is published, the applicant gains provisional rights (which can be exerted after issuance of a patent).
- (2-5) Request for Examination
Russia has an application examination system as Japan does. Request for examination should be made within 3 years of the filing date of an application (extendable by 2 months upon payment of an extension fee). If there is no request for examination, the application will be deemed withdrawn. The request for examination may be filed by a third party. With submission of“Explanation of Circumstances Concerning Accelerated Examination”, the applicant can participate in the PPH pilot program between the Russian Patent Office and the Japan Patent Office. This PPH pilot program between Russia and Japan was implemented on May 18, 2009.
- (2-6) Examination
In recent years, applications are examined promptly in Russia, as compared with other countries. In 10 to 11 months from request for examination, examination is started and a first Office Action is issued. With use of the PPH pilot program, the examination can be started even earlier.
An interview with the examiner can be requested. Typically in such a case, a local patent agent or attorney holds the interview. Japanese patent attorney may also hold the interview by contacting the international department of the Russian Patent Office. However, no telephone interview is allowed about details of substantive examination.
Prior arts, based on which an application is examined in terms of novelty and inventive step, are determined by global standards. Further, the application is examined on whether its claimed invention is sufficiently disclosed in the specification etc. of the application (that is, so-called enablement requirement), after the revision of Part IV of the Civil Code on October 1, 2014.
- (2-7) Amendments
An applicant has a right to make corrections and clarifications prior to issuance of a decision of grant or a decision of refusal, provided that the corrections and clarifications do not change the essence of a claimed invention or utility model. Such amendments can be filed free of charge within 2 months of the filing date.
- (2-8) Response to Refusal
As in Japan, an application is subjected to substantive examination in terms of novelty, inventive step, industrial applicability, etc. If a notification of reasons for refusal is issued, the applicant needs to respond to the refusal within a designated period (typically, within 2 months (extendable by up to 10 months) or 6 months of receipt of the notification). A decision of grant or a decision of refusal is typically issued after about 2 times of issuance of notifications of reasons for refusal. There is also an appeal system against a decision of refusal.
- (2-9) Opposition
Right holders and third parties can file an opposition against a decision of grant or a decision of refusal within 6 months of the decision. A divisional application can be filed within a period in which an opposition can be filed against a decision of refusal of a parent application.
- (2-10) Conversion of Application
Prior to the publication of information on a patent application, but not later than issuance of a decision of grant, the applicant can convert the patent application into a utility model application. Conversion of a utility model application into a patent application is also allowed prior to issuance of a decision of registration of a utility model.
Moreover, the applicant also can change a Eurasian patent application into a Russian patent application (Article 16 of the EAPC). Thus, in a case where it is difficult for the applicant to select an application route at the filing of the application, the applicant can first file a Eurasian patent application and then change the application to a Russian patent application.
- (2-11) Establishment of Patent Right
In a case where payment of a prescribed registration fee is made upon receipt of a notification of a decision of grant, the grant of a patent is announced in a Russian patent publication, and a certificate of patent is issued.
In Russia, the rate of decision to grant a patent is significantly high. According to the actual results from 2008 to 2013, approximately 75% of examined patent applications were granted patents.
- (2-12) License and others
A license of an invention comes into effect by grant of a patent. However, if (i) the invention fails to be used or is insufficiently used by the right holder for four years from the date of the grant of a patent (or three years from the date of registration of a utility model) and (ii) the right holder does not prove that the non-use or insufficient use of the invention or utility model is based on valid excuses, a compulsory license may be exercised with respect the invention upon request under Article 10(3) of Part IV of the Civil Code. The effect of the compulsory license may be terminated by judicial procedure on a suit initiated by the right holder. Russia also has a non-exclusive license system, which corresponds to Japan’s cross-license system.
(3) Industrial Design
- (3-1) Subject of Protection
(1) Protection Law
Designs (industrial designs) are protected in Russia as design patents under Part IV of the Civil Code of the Russian Federation (hereinafter simply referred to as "the law").
(2) Definition of Industrial Design
Article 1352 of the law defines as follows:
"An artistic and design presentation of an article, manufactured industrially or by artisans, that defines its outward appearance, shall be protected as design."
(3) Scope of Protection
The scope of protection for a design used to be determined based on (i) the drawing of the design and (ii) the "list of essential features of the design" until the revision of 2014. Since submission of the "list of essential feature of the design" was abolished in 2014, the scope is currently determined based only on the drawing of the design.
- (3-2) Period of Examination
The formal examination and the substantive examination take an average of six month in total. According to the statistical report of 2013, 80% of applications are granted design rights.
- (3-3) Term of Protection
The revision of 2014 changed the term of protection to 5 years, which can be extended 4 times (by not more than 5 years) up to 25 years at the maximum (this provision is applied to those filed after January 1, 2015).
- (3-4) Requirement of Registration – Novelty and Distinctness
Article 1352 of the law defines as follows:
"An industrial design shall be granted legal protection if in its essential features it is new and original."
Thus, novelty and distinctness are mainly determined during the examination.
The revision of 2014 expanded the scope of prior art such that prior art include (i) all information obtainable throughout the world and (ii) all inventions, utility models, designs, and trademarks for which applications are filed in Russia.
- (3-5) Exception to Lack of Novelty
The revision of 2014 extended a period in which the exception to lack of novelty can be applied, from 6 months to 12 months.
The exception to lack of novelty can be applied to an application filed within 12 months from the disclosure of information relating to the design by its author, applicant, or other person (Article 1352-4)
- (3-6) Priority under Paris Convention
Priority under the Paris Convention can be claimed by (i) filing an application within the period of priority and (ii) submitting a certified copy of the first application within 3 months from the date of filing the application.
- (3-7) Multiple Designs in One Application
The law defines that it is possible to file an application including multiple designs that are closely associated to form a single creative concept.
- (3-8) Partial Design
No system for protecting a partial design is stipulated in the law. However, it is in practice possible to seek for protection for a partial design in a case where (i) an overall view of the object is illustrated in the drawing submitted, (ii) a portion to be protected is indicated by a solid line, and (iii) other portion to be excluded from protection is indicated by a broken line.
- (3-9) Related Design
Related designs are not available.
- (3-10) Secret Design
No system for secret designs is available. However, it may be possible to delay the publication by, for example, intentionally omitting an address of the author so that a relevant office action will be issued.
- (3-11) Drawings
The law defines that it is necessary to submit a drawing that can entirely and specifically illustrate an outward appearance of an article. However, the number of drawings is not limited. Furthermore, a photograph can be filed instead of drawings.
- (3-12) Accession to Hague Agreement
Although Russia has not acceded to the Hague Agreement Concerning the International Registration of Industrial Designs (hereinafter simply referred to as "the Hague Agreement"), it plans to accede to the Hague Agreement in the near future. Under the circumstances, it can be considered that the 2014 revision to the Civil Code of Russia was made to facilitate Russia's accession to the Hague Agreement.
The following will describe comparison between the current design system of Russia and the Hague Agreement.
1. Multiple Designs in One Application
Hague Agreement (Article 5(4), Rule 7(3)(v),(7) of the Geneva Act)
One design application can include up to 100 designs, as long as all of them belong to the same main class stipulated in the Locarno Agreement Establishing an International Classification for Industrial Designs.
Russia (Article 1377(1))
One design application can include multiple designs as long as they are related to each other so as to form a single creative concept.
2. Publication Deferment System
Hague Agreement (Article 11, Rule 16 of the Geneva Act)
In a case where a designated member country has the publication deferment system, an applicant can defer publication of his/her design application up to a maximum of 30 months by making a request at the time of filing an international application.
Russia does not have the publication deferment system.
3. When Notification of Reasons for Refusal is Issued
Hague Agreement (Article 12, rule 18 of the Geneva Act)
Although a notification of reasons for refusal, in principle, should be issued within 6 months from the date of international publication, it is admitted to take a maximum of 12 months until a notification of reasons for refusal is issued.
A notification of reasons for refusal is issued, on average, within 6 months from the date on which an application was filed.
4. Requirement of Drawings
Hague Agreement (rule 19 of the Geneva Act)
In case of two-dimensional design, a designated office cannot require filing of more than one drawing. Meanwhile, in case of three-dimensional design, a designated office cannot require filing of more than 6 drawings.
An applicant is required to file a drawing(s) that fully illustrate(s) the appearance of an article in detail, but the number of drawings is not limited.
5. Scope For Which Applicant Does Not Seek Protection (Partial Design System)
Hague Agreement (Common rule 9(2)(b), Section 403 of the Enforcement Regulation of the Geneva Act)
An applicant is required to (i) describe a portion of a design for which portion the applicant does not seek design protection and also (ii) to indicate such a portion with a dotted line or a broken line.
Partial designs are practically admitted. An applicant is allowed to indicate, with a broken line, a portion of an appearance of an article for which portion the applicant does not seek design protection.
6. Duration of Design Rights
Hague Agreement (Article 17 of the Geneva Act)
The duration of design rights is basically 15 years from the date of international registration. In a case where the duration of design rights provided in a designated member country is longer than 15 years, the longest duration provided in that country is applied.
The duration of design rights is 5 years from the filing date. The duration can be extended a total of 4 times by 5 years each, and can be extended to a maximum of 25 years.
- (4-1) Subjects of Protection
Signs capable of individualizing goods of legal entities or individual entrepreneurs and signs capable of individualizing work performed or services provided by legal entities or individual entrepreneurs may be protected as trademarks. A trademark consisting solely of colors can also be registered, unlike Japan’s trademark system.
- (4-2) Examination
In a case where formality examination findings are favorable, substantive examination of a trademark application is carried out (in terms of unregistability, novelty, and similarity with registered trademarks or signs of earlier applications). In the examination in regard to absolute grounds for refusal, the trademark application is examined on whether the sign has distinctiveness over other products and services. In the examination in regard to relative grounds for refusal, the trademark application is rejected in a case where the sign is identical or confusingly similar to signs of earlier applications or registered trademarks.
One trademark application can be filed for two or more classes.
Formal examination is carried out within 1 month of the date of filing. If the trademark application satisfies the formal requirements, the trademark application is given a filing date. Substantive examination takes approximately 12 months.
- (4-3) Duration
The duration of a trademark right is 10 years from the filing date of the trademark application, and can be extended by 10 years upon request of renewal of the duration. The number of times of the renewal is not limited. The duration can be renewed as many times.
Protection of a registered trademark may be early terminated in a case where the registered trademark is not continuously used for specified goods or services for 3 or more years after its registration. A request for termination of the protection of the trademark, as the result of its non-use, can be filed with the Chamber for patent Disputes only by interested parties/individuals. If the applicant wishes to dispute a decision, the applicant can file a suit with an arbitration court.
- 1. Homepage of the Russian Federation Patent Office:http://www1.fips.ru/wps/wcm/connect/content_ru/ru
- 2. Homepage of the Eurasian Patent Office:http://www.eapo.org/en/
- 3. Homepage of the International Monetary Fund (IMF):http://www.imf.org/external/index.htm
- 4. Homepage of the Japan External Trade Organization (JETRO):http://www.jetro.go.jp/indexj.html
- 5. Databank of Intellectual Property Information of Developing Countries (JPO):http://www.globalipdb.jpo.go.jp/
- 6. Homepage of Support Program for Measures Against Infringement of Industrial Property Rights in Foreign Country:http://iprsupport-jpo.go.jp/
- 7. Patent News No. 12900 (published by Japan Research Institute of Economy, Trade, and Industry)
- 8. “Research Report of Intellectual Property Rights System and Enforcement of the System in Russia, Central and South America, and Middle East”(published by JPO)
- 9. Patent News No. 12955 (issued on March 30, 2011)
- 10. Patent News No. 12956 (issued on March 31, 2011)
- 11. Patent News No. 13012 (issued on June 23, 2011)
- 12. Resources distributed at Patent Seminar 2011 (hosted by Kinki Branch of Japan Patent Attorneys Association)
Patent and Trademark Attorney
Tomoo HIGUCHI obtained a Bachelor of Arts in Law.
My current interests are intellectual property in foreign cases and revision of the principle of territoriality.
I make every effort to quickly respond to the demands of our clients.
A good design creates a great marketability, differentiating clients' goods from others.
Seeking for our clients' satisfaction, I strive to protect their valuable intellectual properties including design.