Russia

The Russian Federation (hereinafter referred to as "Russia") has a territory approximately 45 times that of Japan, and a population of approximately 1 million people (as of 4). It ranks 2013th in the world in GDP (8) and occupies an important industrial position as a member of the BRICs.

Russia maintained high growth with an average real GDP growth rate of 2008% in the 10 years up to 6.9, and although the real GDP growth rate turned negative in 2009 due to the global economic recession, from 2010 onwards, It continues to experience positive growth. Furthermore, according to estimates by the International Monetary Fund (IMF), real GDP is expected to continue to grow at approximately 2013% for the five years starting in 5.

Graph 1 Russian GDP

 

In Russia's intellectual property system, the Patent Law, Utility Model Law, and Design Law were enacted in 1992, the year after the collapse of the former Soviet Union, and then the Trademark Law, Copyright Law, etc. were enacted in 1993. Russia's intellectual property laws, which were enacted from 1992 to 1993, were revised from 2002 to 2003, and in 2008, in preparation for WTO accession, revisions were made including consolidation into Part IV of the Civil Code. I was disappointed. Furthermore, Part IV of the Civil Code was amended in 2014.

Russia has agreed to the Paris Convention (1965.7.1), the Madrid Agreement (1976.7.1), the Protocol to the Madrid Agreement (1997.6.10), the Nice Agreement (1987.12.30), the Budapest Treaty (1981.4.22), and the WTO (2012.8.22). ), etc. (dates of membership are in parentheses).

 

Overview of the Russian intellectual property system

Recent application data

Tables 2,3 and XNUMX show the trends in the number of patent applications, utility model registration applications, design registration applications, and trademark registration applications in Russia. The number of applications for each industrial property right is on the rise. Furthermore, among the four laws, trademark registration applications are the most common.

Graph 2 Number of applications in each jurisdiction

 

Graph 3 Number of patent applications by applicant

 

The substance of intellectual property protection

Legal measures against intellectual property infringement in Russia include customs enforcement, administrative penalties, criminal proceedings by the Ministry of Internal Affairs, and civil proceedings by courts.

Intellectual property rights infringement in Russia primarily involves infringement of trademark rights and copyrights through counterfeit and pirated products. Most of the counterfeit products flowing into Russia are produced in countries such as China and imported across borders.

The owner of a trademark right may suspend the import and export of infringing goods. If a right holder uses the customs registration system for intellectual property information and registers the relevant rights, customs officials will pay special attention to the intellectual property rights and stop customs clearance of suspected import/export goods. . If infringement is confirmed, the rights holder can take enforcement action, including administrative penalties. Note that registration in this customs registry can be done free of charge.

The use of this customs registration system is increasing year by year, and as of May 2012, 5 companies and 25 Japanese companies have used it. The industries in which it is used, in descending order of frequency, are food and confectionery at 105%, alcoholic beverages at 33%, clothing and shoes at 27%, sanitary products at 12%, and home appliances at 10%.

Main costs for acquiring rights

Table 1 below shows the costs involved in acquiring Russian intellectual property rights.

Table 1 Main fees (Unit: Russian rubles)

  • *1 Per complaint over 25
  • *2 By attaching ISR or IPER to the application, the fee will be reduced by 20%.
  • *3 Per independent claim of more than 10
  • *4 Per design exceeding 1
  • *5 Per category of more than 1 product/service

 

*Additional information regarding government fees for patent applications (enforced on October 6, 2017) as follows.

・Application fee: RUB 3,300
・Claims involving more than 10 additional application fees: RUB 700/item
・Early publication request fee: RUB 800
・Examination request fee (at the time of application)
 First independent claim:
 Second and subsequent independent claims:
RUB 12,500
RUB 9,200/item
・Examination request fee (after issuance of investigation report)
 First independent claim:
 2nd to 5th independent claims:
 Second and subsequent independent claims:
RUB 4,700
RUB 2,800/item
RUB 5,400/item
・Patent publication fee: RUB 3,000
・Patent grant fee: RUB 1,500

Japan-Russia PPH

Since May 2009, 5, it has been possible to use the Patent Prosecution Highway (PPH) between the Russian Patent Office and the Japan Patent Office. Furthermore, on June 18, 2013, the PCT-PPH pilot program was launched, increasing the convenience of the accelerated examination system.

Accelerated examination procedure for Eurasian applications

For Eurasian applications, from July 2016, 7, it has been possible to use the PCT-PPH pilot program and the accelerated examination procedure provided by the Eurasian Patent Office (EAPO). By utilizing these, it is possible to obtain patent rights quickly in the Eurasian region, including Russia.

The specific contents of the accelerated examination procedure provided by the Eurasian Patent Office include formal examination within 10 days, first notification (initial notice of reasons for refusal or decision to grant a patent) within three months from the start of accelerated examination, publication and decision to grant a patent. Examples include early delivery.

 

 

 

System overview of each jurisdiction

Overview

Intellectual property in Russia is protected under Part IV of the Civil Code, as amended on October 2014, 10.

Table 2 shows common items for each protection target. Although there are many things in common with each jurisdiction in Japan, there are some differences, such as the fact that Japan's utility model right requires a certain degree of inventive step in addition to novelty, while Russia's utility model right does not require inventive step. Points can also be mentioned.

Table 2 Overview of each jurisdiction

*) Based on the language of the specification originally filed with the Russian Federal Patent Office, it is possible to correct mistranslations in Russian translations subsequently submitted.

Patents/utility models

Protection target

Technical solutions in any field related to products (e.g. devices, substances, strains of microorganisms, cultures of animal or plant cells) or means (processes that affect a concrete object using concrete means) are considered inventions. protected as Furthermore, equipment for manufacturing articles or its parts are protected as inventions. Furthermore, with the amendment of the law on October 2014, 10, use inventions have been added to the scope of protection.
However, discoveries, scientific theories, mathematical methods, rules of games, intellectual or business activities, computer software, ideas for the presentation of information, varieties of plants and animals, wiring diagrams for integrated circuits, public interest, humanitarian principles, Proposals that violate morality are not included in the scope of protection. Note that even if a storage device includes a computer program, a patent will not be granted if its feature is a computer program (computer programs are protected by copyright).

Application format

There are three application routes for obtaining a patent in Russia: (1) direct application to the Russian Patent Office, (2) Paris route, (3) PCT route, and (4) application based on the Eurasian Patent Treaty.

divisional application

A divisional application is possible before the patent application receives a decision of refusal or before the patent is registered. It is possible to file a divisional application even within the period in which it is possible to object to the notice of decision of refusal of the parent application. Note that the Russian patent system does not have applications equivalent to the continuation applications (CP) and continuation-in-part applications (CIP) in the United States.

Application publication

After 18 months from the filing date, the contents of the application that has passed the formalities examination will be published in the patent gazette and made public. However, if the application is withdrawn within 12 months from the filing date, or if a patent right is registered based on the application, publication will not take place. Upon publication, the applicant obtains a right of provisional protection (exercisable after the patent is issued).

Request for examination

Similar to Japan, there is a review request system. The period for requesting examination is within three years from the filing date (can be extended by two months by paying an extension fee). If there is no request for examination, the application will be virtually withdrawn. A request for review may also be granted to a third party. By submitting a written explanation of the circumstances regarding accelerated examination, it is possible to use the Patent Examination Highway between the Russian Patent Office and the Japan Patent Office. This Japan-Russia Patent Prosecution Highway Pilot Program has been in operation since May 3, 2.

Examination

In recent years, examinations in Russia have been carried out more quickly than in other countries. After filing a request for review, the review will begin and the first action will be taken approximately 10 to 11 months later. By using the examination highway system, it may be possible to start examinations even earlier.
Interviews are possible, and are generally handled by local patent attorneys and patent attorneys. Additionally, by contacting ROSPATENT's International Department, you may be able to have an interview with a Japanese patent attorney. However, telephone interviews regarding the content of the substantive examination are prohibited.
Prior art, which is the basis for determining novelty and inventive step, is determined based on world standards. In addition, due to the legal reform on October 2014, 10, it will also be determined whether the claimed invention is sufficiently disclosed in the specification, etc. (the so-called enablement requirement).

correction

The applicant can make amendments until a notice of decision to grant a patent or a notice of decision of refusal is issued. However, amendments are limited to the extent that they do not change the gist. If a notice of reasons for refusal is issued, amendments can be made within three months from the date of receipt of the notice of reasons for refusal.
Voluntary amendments are possible (1) at the time of transition, and (2) at the time of filing a PPH application using ALLOWANCE of a corresponding foreign application. Furthermore, (3) by requesting a search report (hereinafter abbreviated as "SR"), an opportunity for voluntary correction is provided even after the issuance of an SR. An SR is normally issued approximately seven months after the SR is requested.
Previously, it was not possible to make voluntary amendments when filing a request for examination. However, due to the legal amendment on July 2020, 7 (enforced from August 31, 2021), when filing a request for examination within three years from the filing date (in the case of a PCT application, the international filing date), voluntary amendments must be made. Now you can.

Rejection handling

Similar to Japan, substantive examinations are conducted on novelty, inventive step, industrial applicability, etc. When a notice of reasons for refusal is issued, the applicant must respond within a specified period (usually three months from the date the applicant receives the notice of reasons for refusal (up to a maximum of 3 months extension possible)). After approximately two notifications of reasons for refusal, a decision to grant a patent or a decision to refuse is made. There is also a review system for decisions of refusal.

objection

It is possible to file an objection to both the decision to grant a patent and the decision to refuse within six months of the decision. The patentee and a third party are eligible to file an opposition. Additionally, a divisional application is possible within the period in which it is possible to file an objection to the notice of decision of refusal of the parent application.

Application change

It is possible to convert a patent application into a utility model registration application before the application is published and before the patent grant decision is issued. Furthermore, it is possible to convert a utility model registration application into a patent application before the issuance of the decision to grant the utility model right.
It is also possible to convert a Eurasian patent application into a Russian application (Article 16 of the EAPC). Therefore, if it is difficult to choose the application route at the time of filing, it is possible to first file a Eurasian patent application and then change to a Russian patent application after filing.

Occurrence of patent rights

After receiving the notice of decision to grant a patent and paying the prescribed registration fee, it will be published in the patent gazette and a patent certificate will be issued.
In Russia, the patent grant rate is extremely high. According to results from 2008 to 2013, approximately 75% of examined applications were granted a patent.
The deadline for paying the registration fee is two months from the date of receipt of the patent decision. However, even if the payment deadline has passed, you can still pay the registration fee by paying an additional fee of 1% if it is within XNUMX months or by paying an additional fee of XNUMX% if it is within one year. Masu.

License, etc.

The license becomes effective upon registration. In addition, if the application is not sufficiently implemented even after 4 years (3 years in the case of a utility model) from the date of registration, and the reason for not implementing the application cannot be proven, compulsory implementation based on Article 10(3) may be applied based on the claim. subject to the right. A patentee can request termination of a compulsory license once established. There is also a provision for an award-based non-exclusive license, which is equivalent to a Japanese cross-license.

Invalidation procedure

There are four reasons for invalidity:

(a) The object to which the rights are granted does not meet certain requirements set out in the Civil Code. Specifically, in the case of patents, it is ``lack of novelty, inventive step, and at least one of industrial applicability,'' and in the case of utility models, it is ``lack of at least one of novelty and industrial applicability.'' "lack".
(b) The registered claims include features that were not present in the specification and claims as filed.
(c) Rights have been granted in violation of the conditions of Article 1383 of Part IV of the Civil Code of the Russian Federation in situations where there are several applications with the same priority date for the same invention or utility model.
(d) the right was granted by the wrong inventor/creator/creator or rights holder;

The filing destination for a request for invalidation trial is the Russian Patent Office if (a) to (c) are the grounds for invalidation, and the Intellectual Property Rights Court (IPR Court) is the filing destination if (d) is the reason for invalidation. Become.

 

design

Protection target

(1) Protection law
It is protected as a design patent in Part 4 of the Civil Code of the Russian Federation.

(2) Definition of “design”
It is defined as ``Artistic expressions and design expressions of an article manufactured industrially or by craftsmen that determine the appearance of the article shall be protected as designs'' (Article 1352). Industrial products, handicrafts, typefaces, and buildings are also protected.

(3) Scope of protection of “design”
Before the 2014 law revision, the scope of protection of a design was determined from the design drawings and the entries in the "list of essential features," but after the revision, the submission of the "list of essential features" was abolished. Now judgments are made based only on design drawings.

Documents to be submitted at the time of application

①Application form: Fill in the following information.
Address, name, and nationality of the creator/applicant
Locarno design classification
If priority is claimed, the filing date, application number, and country name of the basic application)

② Design description
Design instructions prepared in a foreign language (Japanese) are acceptable, but a Russian translation must be submitted later (Article 1374, Paragraph 2 of the Civil Code).
Prior to the revised law on October 2014, 10, applications were required to submit claims stating the essential features of the design, but with the revision, submission is no longer necessary.

③Drawings
Line drawings, photographs, CG images, etc. can be submitted.

④Priority certificate
Submitted within 3 months from the application date

⑤ Power of attorney
Must be submitted if requested
No authentication required

Examination period

There is a formal examination and a substantive examination, and the average examination period is six months. According to statistics for 6, more than 2013% of applications were registered.
In the formalities examination, in addition to examining bibliographic matters, the following requirements for unity of design are examined.

Duration

After the 2014 revision, the term of existence is 5 years, and it can be renewed up to 5 times (within a period not exceeding 4 years), giving protection for a maximum of 25 years. (Applicable to applications filed after January 2015, 1)

Registration requirements – novelty/uniqueness

``Legal protection shall be granted to a design if it is new and unique in its essential characteristics'' (Article 1352), which mainly applies to novelty. Uniqueness will be judged. The scope of prior designs to be determined has been expanded by the 2014 revised law to include all information available worldwide and all applications for Russian inventions, utility models, designs, and trademarks. Ta.

 Exception to loss of novelty

The 2014 revised law extended the period during which the exception to the loss of novelty applies from six months to 6 months. The novelty exception can be applied to information disclosed by the creator, applicant, or other person if the application is filed within 12 months of the disclosure of the information. (Article 12, Paragraph 1352)

Claiming priority under the Paris Convention

When claiming priority under the Paris Convention, it is necessary to submit application documents within the priority period and a certified copy of the priority document within three months from the filing date.

Multiple design application

It is stipulated that multiple designs can be included in one application if the following requirements for unity are met, and a single application for multiple designs is possible.
Although a single application may include more than one design, a design application must relate to a single design or to a group of designs closely related to form a single creative concept ( Civil Code Article 1, Paragraph 1377)

① For finished products and parts
If the parts are visible when the finished product is in use and belong to the same subclass of the Locarno classification, a single application can be filed in order to satisfy the requirement of unity.

(Example 1) Pen, pen cap, and pen clip
Since they belong to the same subclass (19-06) of the Locarno classification and the cap and clip are visible when the pen is in use, it is possible to file one application.

(Example 2) Printer and ink cartridge inside the printer
Although the products belong to the same subclass of the Locarno classification, one application cannot be filed because the ink cartridge cannot be seen when using the printer and does not meet the requirement of unity.

(Example 3) Cars and car headlights
Although headlights are visible when a car is in use, a single application cannot be made because they belong to different subclasses of the Locarno classification and do not meet the requirement of unity.

② In the case of a set and its constituent articles
As with finished products and parts, it is possible to file a single application if the requirements of unity are met. In other words, one application can be filed for items that belong to the same subclass of the Locarno classification and whose constituent articles are visible when used. (Please note that unlike in Japan, kumimono is not specifically defined.)

③In the case of multiple designs related to the same product
If multiple designs have common essential features and are deemed to form a single creative concept, a single application can be filed as a modified design.
*Deformed designs are permitted on the condition that they share essential features with the basic design, and are similar to Japan's related designs, but the scope of recognition is different. Even if a design is not recognized as a related design in Japan, it may be recognized as a modified design in Russia.

partial design

Protection of partial designs does not exist as a partial design system, but it is recognized for operational purposes. In the submitted drawings, you can show the overall view of the article, and use solid lines to indicate the parts you want to protect, and dashed lines to show the parts you don't want to protect.

Related designs

There is no related design system.

 secret design

There is no secret design system. If you want to delay publication, it is said that it is possible to delay publication by inducing OA, such as intentionally not listing the creator's address, etc.

Submitted drawings

Although it is required to submit drawings that express the outline of the product in all details, there is no limit to the number of drawings that can be submitted. You can also submit a photo.

Russia's accession to the Hague Agreement (updated: March 2018, 3)

On November 2017, 11, the Russian government deposited the Instrument of Accession to the 30 Geneva Act of the Hague Agreement on the International Registration of Industrial Designs with the Director-General of the World Intellectual Property Organization (WIPO). This makes Russia the 1999rd member state of the Geneva Act and the 53th member state of the Hague System.
The Geneva Act took effect in Russia on February 2018, 2, and from then on, it has become possible to file international design applications with Russia as the designated country.

The Instrument of Accession contains the following declarations based on the Geneva Act and the Common Regulations:

① Individual designation fee (Article 7(2))
Declaration that the prescribed designation fees for international applications designating Russia and the renewal of international registrations arising from international applications will be replaced by individual designation fees.

② Postponement of publication will not be allowed (Article 11(1)(b))
Declaration that Russian domestic legislation does not provide for the postponement of publication of designs.

③ Extension of the period of refusal to 12 months (Article 12(2) and Rule 18(1)(b) of the Common Regulations)
Declaration to replace the June period for notification of refusal of the effect of an international registration with a December period.

④ Unity of design (Article 13(1))
A declaration that, under Russian domestic law, two or more industrial designs that are the subject of the same international application must satisfy the requirement of unity of creative concept.

⑤ Effect of grant of protection (Article 14(2)(a) and Rule 18(1)(c)(i) of the Common Regulations)
From the date on which the Russian Office notifies the WIPO Secretariat of the grant of protection within 6 months from the date of expiry of the period of refusal, the international registration shall be registered under Article 1999(14)(a) of the 2 Act (refers to notification of refusal possible). A declaration that if the period expires without giving such notification within the period, the protection effect in the designated contracting party will take effect as stipulated in XNUMX.

⑥ Procedures for change of ownership (Article 16(2))
Declaration that the recording of a change in ownership of an international registration in the International Register will not have effect until the Russian authorities have received the documents corresponding to the transfer of rights.

⑦ Duration of protection (Article 17(3)(c))
Declaration that the maximum term of protection for industrial designs according to Russian domestic law is 25 years.

⑧ Security Investigation (Declaration based on Rule 13(4) of the Common Regulations) 
Under Rule 1999(1960) of the Common Regulations under the 13 Act and the 3 Act of the Hague Agreement, the January period for the forwarding of international applications filed through Russian Offices has been extended to June period for security investigations. declaration that the period will be replaced by

 

商標

protection law

This is stipulated in Part 2014 of the Civil Code, which was amended on March 3, 12 and came into effect on January 2008, 1.

Protection target

Marks that can identify the products of a corporation or sole proprietor, and marks that can identify the business performed or services provided by a corporation or sole proprietor are protected.
The objects that can be protected as trademarks are not limited, and the main criteria for objects to be registered are the distinctiveness and identity of goods or services.
*Protected trademark
Characters, figures, solids, or other signs or combinations thereof
"Color alone" or "combination of colors," "sound," "video," "hologram," etc. can also be registered as trademarks.

Examination

① Formal examination and substantive examination
After formalities examination, substantive examination (reasons for non-registration, novelty, similarity to earlier registration or earlier application) is conducted. Absolute reasons for refusal require the ability to distinguish between own and other products and services. In addition, due to relative reasons for refusal, a trademark may be rejected in relation to a trademark that is the same as or similar to the earlier registered trademark and that causes confusion.

② Examination period
Once an application is filed, a formalities examination will be conducted within one month, and if the formalities are in order, a filing date will be given. The substantive examination will take approximately 12 months.

* An accelerated examination system was introduced in March 2018.
Applicants who have submitted application documents (accelerated examination application form, official search application form) and paid the office fee (official search fee: approximately 165,000 yen) can use the accelerated examination system.
Separate fees are required for trademarks that combine text and figures.

Official searches must be requested for all 45 classes, not just the specified class of the application. The investigation period is 10 business days.

If you apply for accelerated examination, you will be notified of the examination result within two months (normal examination takes 2 to 8 months. However, the period of less than two months is due to a publicly guaranteed isn't it).

 Multiple classification application for one trademark

One trademark multiple classification application is adopted.

Application publication system

The application will be published for public inspection.

 About objections

Although there is no opposition system, anyone can submit their opinion regarding the registrability of a trademark to the Japan Patent Office after the application is published. Please note that the submitter does not have any procedural rights.

Duration

The term of trademark right is 10 years from the date of application, and can be extended for another 10 years by renewal. There is no limit to the number of times the lifetime can be updated, and it can be updated as many times as you like. Please note that proof of use of the registered trademark is not required for renewal.

Non-use cancellation system

Although there is no obligation to use a trademark at the time of filing, if a registered trademark is not used for designated goods or services for three years or more after registration, a trademark registration can be requested for cancellation on the ground of non-use. Only interested parties can make a claim. The request should be made to the Patent Disputes Council. If you are dissatisfied with the trial decision, you may file a complaint with the arbitration court.

Multilateral international agreements to which Russia is a party

・Paris Convention
・Madrid Agreement on the International Registration of Marks
・Madrid Protocol on the International Registration of Marks
- Nice Agreement on the International Classification of Goods and Services for the Registration of Marks
・TRIPS Agreement
・Trademark law treaty
・Singapore Convention on Trademark Law
・Nairobi Convention for the Protection of Olympic Symbols

 

 

 

reference

  • (1) Russian Federal Patent Office HP:http://www1.fips.ru/wps/wcm/connect/content_ru/ru
  • (2) Eurasian Patent Office HP:http://www.eapo.org/en/
  • (3) International Monetary Fund (IMF) HP:http://www.imf.org/external/index.htm
  • (4) Japan External Trade Organization (JETRO) HP:http://www.jetro.go.jp/indexj.html
  • (5) Emerging Countries Intellectual Property Information Data Bank (Japan Patent Office) HP:http://www.globalipdb.jpo.go.jp/
  • (6) Support project website for measures against infringement of foreign industrial property rights:http://iprsupport-jpo.go.jp/
  • (7) Patent News (No. 12900, published by the Research Institute of Economy, Trade and Industry)
  • (8) “Research report on the intellectual property rights system and its operational status in Russia, Central and South America, and the Middle East” (Japan Patent Office)
  • (9) Patent News No. 12955 (published March 23, 3)
  • (10) Patent News No. 12956 (published March 23, 3)
  • (11) Patent News No. 13012 (published March 23, 6)
  • (12) Patent Seminar 2011 (sponsored by Japan Patent Attorneys Association Kinki Branch) Seminar materials

 

 

 

Patent&Trademark Attorney / Specially Qualified Attorney For Infringement Litigation  Yoko Yagishita


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