Since October 6, 2017, Patent and Trademark Office (Rospatent) has started levying new fees in compliance with Russian Government Regulation dated September 23, 2017, № 1151 (hereinafter Fees Regulation).
Generally, the nominal amount of patent and trademark fees has significantly increased. Thus, fees for filing an invention patent application have increased from RUB 1,650 to RUB 3,300 (EUR 1 = RUB 67,77 at the official Russian Central Bank exchange rate as of October 6, 2017). Each additional claim above 10 (previously above 25) costs RUB 700 now (as compared to RUB 250 earlier). PCT applicants entering national phase will have to pay additionally RUB 700 for each claim in respect of which no international search has been made.
The amount of fees for substantive examination has been made dependent on whether the request for substantive examination was filed simultaneously with the patent application or at a later date (even next day). Now, any applicant can opt for simultaneous filing with 7-month period for providing the search report for increased fees, i.e. RUB 12,500 plus RUB 9,200 for each independent claim over 1. Should the request for examination be filed at any date after relevant patent application filing date, then the fees would be RUB 4,700 plus RUB 2,800 for each independent claim from 2nd to 5th and RUB 5,400 for each independent claim over 5. If the applicant encloses international search report, the above rates will be discounted by 10 % (20% before October 6, 2017). As the difference in fees is quite substantial, the applicants should weigh their timing and monetary resources to find an optimal strategy for entering national phase in Russia.
Some fees were newly introduced, including fees for taking decision upon substantive examination of a utility model, fees for transforming a challenged invention patent into a utility model patent, separate fees for patent registration and issuance, etc.
Under the new Fees Regulation there is a possibility to return 50 % of fees in case Rospatent takes a decision to terminate the processing of a challenge (application), e.g. due to amicable agreement of the parties. Another case of returning 50 % of fees is when Rospatent finds no grounds for conducting information search.
Now most of the official fees (excluding annuities) are subject to a 30 % discount (15 % before October 6, 2017) if relevant documents were sent to Rospatent electronically.
Fees concerning trademarks have nominally increased, but in case of the above-mentioned e-filing, relevant expenses will be lower. E.g., fees for the full trademark registration process in one ICGS class (from application to issuing the certificate) have risen from RUB 30,400 to RUB 33,000 (vice versa, electronic filing reduces the fees from RUB 25,840 to RUB 23,100). New fees have been introduced for the filing, registration and renewal of a trademark for any more than five classes of goods and services. For example, an applicant must pay an extra RUB 1,000 to file a trademark application for each additional class over five. The trademark registration fee will be RUB 1,000 for each additional class over five. There will also be an additional fee of RUB 1,000 for each additional class over five when renewing a trademark. Previously, the official fees for filing, registration and renewal did not depend on the number of classes. Rospatent is trying to reduce the number of trademarks which cover unnecessary goods and services and in the process clog the trademark register. At the same time, it is expected that the amount of non-use cancellation actions will be reduced over time. However, these additional fees are nominal and it is unlikely that they will have much effect.
The Fees Regulation provided for a new additional period of time to pay the patent and trademark fees. Patent and trademark fees can be paid within 6 months following the due date with the fine amounting to 50 % of fees in question. Patent fees can additionally be paid from 7th to the 12th month following the due date with the fine amounting to 100 % of relevant fees.
Currently, market participants are encountering different discrepancies in Rospatent practice of levying fees. We are following the developments concerning new fees to provide our clients with up-to-date advice and recommendations.