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:
Which countries are covered by a Eurasian patent?
Currently: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and Turkmenistan are members of the Eurasian Patent Convention. Moldova left the Convention on February 27, 2012, but the patents registered on the basis of applications filed before that date, are valid.
What is the deadline for filing a divisional application in the Russian and Eurasian Patent Offices?
A divisional application can be filed with the Russian PTO:
A divisional application can be filed with the EAPO:
Can I use arguments for invalidity as a defense in an infringing action brought in Russia by the patent’s owner?
The defendant in a patent infringement case brought to a Russian court can challenge the patent validity. However, since the Russian patent system is bifurcated, the defendant cannot assert invalidity of the patent in question to the infringement court, but has to initiate a separate proceeding at the Chamber for Patent Disputes in the Russian Patent and Trademark Office. Accordingly, infringement and invalidity of the patent at issue will be examined in separate proceedings.
The court judgment on the infringement suit is appealable to a local court of appeals and the appeal decision comes into force immediately. The decision of the court of appeals can be challenged before the Court for intellectual property rights as a cassation instance.
The decision of the Chamber for Patent Disputes on the patent’s validity is appealable to the Court for intellectual property rights, and its decision can be challenged before the Presidium of the same Court as a cassation instance.
Therefore, a judgment by an infringement court may come earlier than that by the Chamber for Patent Disputes, and an injunction could be enforced by a patentee even if the patent is invalidated later on.
How can I invalidate a Eurasian patent?
Within 6 months of the publication of the mention of the grant of a Eurasian patent, any person (non-residents of any contracting state – through a registered Eurasian patent attorney) can file an opposition against the grant of the Eurasian patent to the Eurasian Patent Office. After the 6-month period has expired, the Eurasian patent can be invalidated separately in each of the contracting states according to the national procedures. In Russia, for example, the nullity action, in most cases, should be filed with the Russian PTO, the decision of which is appealable to the Court for Intellectual Property Rights.
Do I have to prove the legal interest for filing a nullity action against a Russian patent?
According to Russian patent legislation, any person who became aware of violations of patent law can file an invalidation action to the Russian Patent office (or to the court in case the violation relates to the list of the inventors/applicants) during the term of validity of the patent. However, only a person having legal interest in invalidating the patent can file an invalidation request after the expiry of the patent.