This is part 4 in our series examining foreign filing restrictions and licenses in the U.S. and in a number of countries throughout the world. To view part 1, foreign filing restrictions and licenses in the U.S., click here. To view part 2, foreign filing restrictions and licenses in China, click here. To view part 3, foreign filing restrictions and licenses in India, click here.
Foreign Filing Licenses in Russia
According to Article 1395 of the Civil Code of the Russian Federation, if an invention is created in Russia, then an application directed to the invention must be filed in Russia, regardless of the nationality of the inventors involved. This includes inventions made by foreign citizens and jointly by Russian and foreign inventors resulting from any type of collaboration. Also included are inventions made by employees for their employer (regardless of whether or not the employer is Russian).
There are three ways to file a patent application in Russia:
- File a Russian patent application with the Russian Patent Office;
- File a regional Eurasian patent application, designating Russia, with the Eurasian Patent Office (this method generally is about twice as expensive as filing directly in Russia with the Russian Patent Office); or
- Designate/elect the Russian Federation in a Patent Cooperation Treaty (PCT) application and enter the national phase before the Russian Patent Office.
The requirement for first filing in the Russian Federation exists so that the Russian government can carry out an examination on the patent application to determine if the application contains a state secret. This examination must be carried out before a foreign (non-Russian) patent application is filed.
It is important to note that if the Applicant (such as an entity or individual filing a patent application) is a foreign citizen or a foreign legal entity, then the subject matter of the patent application filed in Russia cannot be classified as state secret.
A patent application can be filed abroad in the case of:
- Six months have passed since first filing the patent application in Russia; or
- After a foreign filing license is obtained
After a patent application has been filed with the Russian Patent Office, the patent application undergoes examination for six months at no cost to the Applicant. If the Applicant has not been notified by the Russian Patent Office within six months of filing the patent application, then the Applicant is free to file abroad without further approval.
If the Applicant wishes to accelerate this proceeding and file the patent application abroad earlier, then the Applicant can file a request for examination concerning the presence of a state secret. In this case, a foreign filing license can be expected to be granted within three to four months from filing the request for examination.
If an application is filed in violation of the first filing requirement and the application comprised state secret information, this will result in criminal penalties for the Applicant. If a patent application is filed abroad before than six months have passed since first filing in Russia or if a foreign filing license was not obtained—Applicant will be required to pay a monetary fine.
This post was written by Lisa Mueller and Himani Nadgauda of Michael Best and Vladislav Ugryumov of Gowlings.