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:
Can I get a patent term extension in Russia?
In case more than five years have lapsed between the filing date of an application for an invention related to a medication, pesticide or agrochemical product (if its use requires authorization) and the date of the first marketing authorisation, the term of the patent shall be extended upon request of the patent owner by the Russian Patent and Trademark office. The term shall be extended for the period computed from the filing date of the patent to the date of the first authorisation minus five years, with the proviso that the term of the patent may not be extended for a period exceeding five years.
The request for extension of the term should be submitted by the patent owner during the term of the patent’s validity within six months after obtaining the first authorisation or of the patent grant, whichever comes last.
Can the invention’s right of authorship be transferred?
The inventor holds the invention right of authorship, i.e. the right to be legally recognized as the person who made the invention by his or her own creative work. Right of authorship cannot be alienated or transferred. Waiver of author's rights is void. Right of authorship is protected indefinitely.
Do I have any protection after publication of a Russian patent application and before the grant of the patent?
As in most patent jurisdictions, an applicant receives in Russia provisional legal protection of his or her rights during the period between the publication of the patent application and the publication of the granted patent (Article 1392 of the Russian Civil Code).
Any third party having used the invention during the said period shall pay to the patent holder a reasonable compensation. If the parties do not agree about the amount of the compensation, the same should be defined by the court. It is important to understand that the right holder can bring a legal action against such a third party only after the registration and publication of the patent.
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.
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.