Foreign Filing Restrictions and Licenses in Russia – Part 4

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:

  1. File a Russian patent application with the Russian Patent Office;
  2. 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
  3. 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:

  1. Six months have passed since first filing the patent application in Russia; or
  2. 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.

 

BRIC Panel at 2015 BIO International Convention – Sunday, June 14

In conjunction with the 2015 BIO International Convention, Michael Best & Friedrich LLP is excited to be sponsoring a panel discussion this Sunday, June 14, 2015 on “Strategies for Successfully Mastering the Different Challenges of the IP Systems in the BRIC Countries and U.S. in the Pharmaceutical and Life Sciences Sectors.” Lisa Mueller will be presenting with four attorneys from around the globe, for a discussion including informative insight and advice for successfully navigating through some of the challenges associated with the intellectual property systems in these countries and useful strategies for maximizing intellectual property protection. For more information and to register, click the invitation below.

Strategies for Successfully Mastering the Different Challenges of the IP Systems in the BRIC Countries and U.S. in the Pharmaceutical and Life Sciences Sectors

In conjunction with the 2015 BIO International Convention, Michael Best & Friedrich LLP is excited to be sponsoring a panel discussion on Sunday, June 14, 2015 on “Strategies for Successfully Mastering the Different Challenges of the IP Systems in the BRIC Countries and U.S. in the Pharmaceutical and Life Sciences Sectors.”  I will be presenting with four attorneys from around the globe, for a discussion including informative insight and advice for successfully navigating through some of the challenges associated with the intellectual property systems in these countries and useful strategies for maximizing intellectual property protection. Panelists include:

Otto Licks – Licks Legal, Brazil

Vlad Ugryumov, Gowlings, Moscow, Russia

Tarun Gandhi, Chadha & Chadha, India

Oliver Lutze, Spruson & Ferguson, Shanghai, China

Lisa Mueller, Michael Best & Friedrich LLP, Chicago, Illinois, USA

Moderator:  Verena Simpson, Guardian IP Consulting, Copenhagen, Denmark

The presentation will be at the Philadelphia Marriott Downtown from 3:30-5:00 pm with a cocktail reception to follow at 5:00 pm.  There is no cost for attending.  For more information and to register, please click here.

I am excited about this panel and look forward to seeing readers from the BRIC Wall Blog there!

New Russian Intellectual Property Court is Open

We are very pleased to have a guest post from the Moscow office of the Gowlings law firm on the opening of the new Russian Intellectual Property Court.

The new Russian Intellectual Property (IP) Court has officially opened its doors and begun hearing cases. The opening of this court represents a significant milestone in the advancement of intellectual property protection in Russia.

On July 2, 2013, the Plenum of the Supreme Commercial Court of the Russian Federation approved the commencement of the new IP Court. The IP Court is located in the center of Moscow (Mashkova St., 13), near the Supreme Commercial Court.

The IP Court is part of the larger system of arbitrazh or commercial courts and will perform many functions including: (1) reviewing decisions made by ROSPATENT (the Russian Federal Service for Intellectual Property), including patent and trademark grant and revocation cases first tried by the Chamber for Patent Disputes, an administrative body within ROSPATENT; (2) determining issues of IP ownership and authorship; (3) determining the cancellation of trademark registrations for non-use (among other things); and (4) acting as a cassation (second appeal) court for IP infringement cases decided in commercial courts of first instance and first appeal courts.

The IP Court is headed by Lyudmila A. Novoselova, an ex-judge of the Supreme Commercial Court. Ms. Novoselova was an unusual choice, as she was previously a corporate law specialist. In addition to Judge Novoselova, the IP Court consists of 12 other judges, several of whom have some IP experience or a technical background.

The opening of this new specialized IP Court evidences the Russian Government’s commitment to IP protection and improved harmonization of its laws with those of other countries. In fact, over the last few years, Russia has been steadily fostering a more friendly and conducive environment for innovation and entrepreneurship. The creation of the IP Court follows the recent creation of the Skolkovo Foundation by former President Medvedev. The Skolkovo Foundation is the agency responsible for the Skolkovo Innovation Center, a giant government-funded technology and innovation hub that is located just outside of Moscow.

Finally, it is expected that the IP Court will play a significant role in helping to protect the IP rights of innovators and brand owners during the upcoming Sochi Olympics (the 22nd Winter Olympics) to be held in February 2014. Typically, at such events, there is a very significant need to enforce IP rights against ambush marketers, counterfeiters and parallel importers (although the right for parallel import is currently a hot topic in Russia). The new IP Court is expected to provide an efficient, reliable and transparent mechanism for combating any abuses of IP.

The BRIC Wall would like to thank Gowlings RUSSSIA/CIS for this guest post which was edited by Lisa Mueller.

Establishment of Russia’s Specialized Intellectual Property Court

By: Lisa Mueller

In December 2011, Russia implemented legislative changes establishing a specialized intellectual property (IP) Court. The purpose of the IP Court is to ensure the proper adjudication of IP disputes which are notorious for their complexity. Although the IP Court was officially formed in February 2013, it has not yet begun hearing cases. On May 15, 2013, during the St. Petersburg International Legal Forum, Presiding Judge Ludmila Novoselova stated that she expects the IP Court to start hearing cases in approximately July 2013, although further delays are possible. Some of the reasons for the delay are: (1) infrastructure remains to be built; (2) professional and administrative staff positions remain vacant; and (3) proposed new legislative initiatives could expand the jurisdiction of the IP Court.

With respect to the proposed new legislative initiatives, these initiatives relate to whether the jurisdiction of the IP Court should be expanded in include trademark non-use cancellation actions. Presently, these actions fall within jurisdiction of the Arbitration Court of Moscow; however, technically, these cases are to be transferred to the IP Court once it begins hearing cases. Nonetheless, in April 2013, a bill was introduced to exclude non-use cancellation actions from the jurisdiction of the IP Court and to instead provide jurisdiction for these cases in the arbitration courts (based on the location of the defendant). The bill was introduced by Mr. Pavel Krasheninnikov, the chairman of the State Duma’s (lower house of the Russian Parliament) committee on civil, criminal, arbitration and procedural legislation. It is quite possible that the opening of the IP Court may be further delayed until this issue is resolved.

Jurisdiction of the IP Court

The IP Court has a dual role in the Russian court system acting as a first instance and second appeal (cassation) court. The IP Court will operate as a first instance court, hearing appeals of decisions of the Russian Patent Office, including its revocation tribunal, the Chamber for Patent Disputes. The decisions of the IP Court can be appealed to the Presidium of the IP Court. The IP court will also operate as a second appeal (cassation) court for IP infringement actions. Figure 1 outlines the types of cases that will fall within the jurisdiction of the IP Court. Figure 2 outlines the role the IP Court will play in IP infringement actions.

Figure 1

Types of cases that will fall within the jurisdiction of the IP Court

Types of cases that will fall within the jurisdiction of the IP Court

Figure 2

IP Court role in IP infringement actions

IP Court role in IP infringement actions

Procedure

All cases in the IP Court will be heard by a panel of at least three judges. The decisions of the Presidium of the IP Court with respect to appeals against Patent Office decisions, and in IP infringement cases, can be appealed to the Supreme Arbitration Court. Figure 3 depicts the four-level (Levels I-Level IV) system for IP disputes.

Figure 3

This chart depicts the four-level (Levels I-Level IV) system for IP disputes

This chart depicts the four-level (Levels I-Level IV) system for IP disputes

Transition period

Currently, appeals against Patent Office decisions are filed at the Arbitration Court of Moscow. These decisions can be appealed to the first (appellate) appeal court 9th Arbitration Appellate Court and then to the second (cassation) appeal court Federal Arbitration Court of the Moscow Circuit.

Once the IP Court begins hearing the cases, any pending appeals filed at the Arbitration Court of Moscow will remain in that court. However, any second (cassation) appeals may not be filed at the Federal Arbitration Court of the Moscow Circuit, but must instead be filed at the Presidium of the IP Court.

As mentioned above, the IP Court is expected to start hearing cases in July, at the earliest. Once the IP Court starts to hear cases, it is important to consider the implications of the “transition period.” The implications of the transition period with regard to challenging Patent Office decisions (for example, patent revocations) could unfold as follows:

  1. The Patent Office issues a decision to revoke a patent;
  2. Patentee appeals the decision to the Arbitration Court of Moscow as the first instance court (the case stays in this court even after the IP Court begins hearing cases);
  3. The Arbitration Court of Moscow renders a decision upholding or reversing the Patent Office Decision;
  4. The decision of the Arbitration Court of Moscow is appealed to the 9th Arbitration Appellate Court as the first appeal court;
  5. The 9th Arbitration Appellate Court renders its decision; and
  6. If, by the time of filing of the second (cassation) appeal the IP Court begins hearing cases, then the second appeal must be filed at the Presidium of the Supreme Court instead of the Federal Arbitration Court of the Moscow Circuit as is currently the case.

Judges

The IP Court is presided over by Ludmila A. Novoselova, an ex-judge of the Supreme Arbitration Court. Ms. Novoselova was an unexpected choice, as she is a corporate law specialist. A minimum number of 15 judges is required for the IP Court to operate. At the time of this post and according to the official website of the IP Court (http://ipc.arbitr.ru), 13 judges have been appointed. Most of the IP Court judges are former judges of the arbitration courts. Only two judges have technical backgrounds such as in physics (Judge Rogozhin) and mechanics (Judge Vasilieva). Specific details on the judges are provided below.

Judges of the Intellectual Property Court

Location

The IP Court is located in downtown Moscow (Mashkova St., 13), close to the Supreme Arbitration Court.

Please watch the BRIC Wall for future posts on the status of Russia’s specialized IP Court.

The above is from an original article prepared by Gowlings and edited by Lisa Mueller.  Many thanks to Gowlings for providing their insights on Russia’s specialized IP Court.