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:
What happens if the applicant does not meet the time limit for entering the national phase in Russia?
The rights of the applicant with respect to an international application in Russia can be reinstated within 12 months upon the applicant’s request. The request should state the reasons for not meeting the time limit. The official fee charged for reinstatement amounts to 5,000 RUB.
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.
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.
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.
Does the Russian patent office require metric units in patent applications?
Although in the RUPTO regulation there is a mention that preferably metric units should be used in Russian invention patent applications, there is no prohibition to use imperial or US customary units.