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.
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.
Can Russian inventors file patent applications in foreign PTOs to receive patents for their inventions in foreign countries?
Patent applications for inventions created in the Russian Federation can be filed in a foreign country (to an international patent organization) upon expiration of six months from the date of filing the respective application with the RUPTO, provided that within the indicated term the applicant is not notified of the fact that the application contains state secret data. Application for invention or utility model can be filed before the expiration of the above mentioned six month period in case the clearance for state secret data has been performed at the applicant's request.
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.