Head of Patent Department
An inventor can ensure protection for their technical solution in Russia by obtaining a patent for either an invention or a utility model.
As in most jurisdictions, an invention in Russia relates to:
A utility model relates only to a device.
The Russian Patent Office, officially named the Federal Service for Intellectual Property (Rospatent), examines patent applications for both inventions and utility models with regard to their meeting patentability criteria. The patentability criteria for inventions include novelty, an inventive step (non-obviousness), and industrial applicability, whereas a utility model is not required to meet the inventive step criterion. Therefore, a utility model is perceived as a “minor” or “small invention”. For the inventor, it is easier to obtain a utility model patent and, in case the patent is challenged by a third party, there is one less ground for invalidation (the inventive step). The downside for a utility model patent is its term of validity – ten years compared to twenty years for an invention patent. The main advantage is a relatively quick grant – about 9-12 months from the filing date.
An alternative opportunity to protect your technical solution may be a Eurasian patent (applicable for inventions only) valid in eight countries including Russia.
Russian invention/utility model patent applications and Eurasian patent applications may claim priority under the Paris Convention and can be filed as national (regional) phases of international (PCT) applications.
Our patent prosecution and litigation team is widely recognized for its expertise in all patent-related matters. As a leading and by far the oldest Russian and Eurasian patent law firms, Sojuzpatent provides a full range of patenting services, including:
For most disputes related to patent invalidation/trademark cancellation, the venue is determined directly by Russian law. It is either the Federal executive authority in the sphere of intellectual property (Rospatent, the Chamber for Patent Disputes) or the Court for Intellectual Property Rights. For the remaining invalidation/cancellation actions (a few rare types of cases) the venue is defined according to general rules depending on the defendant's address.
At the same time, in infringement lawsuits, forum shopping is possible when the claimant can name multiple persons as co-defendants (e.g. manufacturer/importer, wholesalers, and retailers). In such cases, the claimant has the option to choose with which territorial court to file their action.
Do Russian and Eurasian patent offices require annual payments for keeping patent applications in force?
No annuities are due either in the Russian Patent and Trademark Office or in the Eurasian Patent Office while the patent application is pending.
According to Russian IP law, the first accumulative annuities should be paid together with the grant and registration fee, starting from the 3rd year for Russian invention patents and from the 1st year for Russian utility model patents. The due date is counted from the date of filing the application (international filing date for PCT national phase applications).
The year from which the annuities for a Eurasian patent should be calculated depends on the national rules of each respective country and varies for different countries (1st, 2nd, or 3rd year).
How is it possible to speed up prosecution of patent applications in Russia?
One of the ways to accelerate patent prosecution in Russia is the Patent Prosecution Highway (PPH). Currently, the Russian Patent and Trademark Office (RUPTO) has pilot PPH programs with the European Patent Office and the Patent Offices of Japan, US, Korea, Finland, Spain, Denmark, China and Portugal. According to the signed agreements, RUPTO’s patent examiners will take into consideration PCT and national/regional work products. Filing the PPH request, the client may count on receiving fewer office actions and consequently decreasing the term of prosecution.
Another way is the RUPTO’s paid service allowing the applicant to receive the search report within 10 working days. The search results allow decreasing to two months the term of issuing the first office action or the decision of grant. The official tariff charged for this service amounts to 94,400 RUR.
Can one and the same person hold Russian and Eurasian patents based on the same priority application?
Yes, Russian and Eurasian patents based on the same priority application may coexist with slightly different or even identical sets of claims. However, it is important to note that a Eurasian patent covers eight countries, including the Russian Federation (in case of timely payment of patent annuities in the relevant countries). That is why obtaining both Russian and Eurasian patents based on the same priority application is usually redundant and it entails additional rightholder expenses connected with filing, prosecution and then maintaining the patent in force. However, this may prove practical for specifically important inventions in respect of which the risk of opposition is very high.
I own a valid Russian patent. What happens if it turns out that somebody has used my invention before my filing the application?
According to Article 1361 of the Russian Civil Code, the person who has in good faith used a solution identical to the patented invention before its priority date, retains the right to use the same solution without increasing the scope of its use (the right of prior use). Therefore, the patent holder is entitled to request from the said person that the volume of use not be increased.
It is important to note that if the other party is able to prove that prior use de facto represented public prior use/open use (which means, in general terms, that the solution has been disclosed to the public in sufficient details), there is a threat of the patent’s invalidation on the grounds of lack of novelty.