A Russian invention patent is valid for 20 years and a utility model patent – for 10 years from the application filing date. The term of protection can be extended for inventions relating to drugs, pesticides or agrochemical products, in case their use requires a statutory authorization and more than five years has lapsed from the filing date of the patent application to the date of obtaining the first authorization. The extension period cannot exceed five years.
To maintain the validity of a patent, annuities should be paid to the Russian Patent Office starting from the first year for utility models and from the third year – for inventions. The first accumulated annuities are paid together with the grant and registration fees.
The annuities for every subsequent year should be paid within the preceding 12 months.
Every year, Sojuzpatent pays annuities for about 50 thousand patents. On your instruction, your patents can be added to our monitoring and reminder system, and we will ensure timely payment.
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.
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).
Can an inventor file an application for an invention that was disclosed by the inventor in specialized literature earlier?
There is a so-called six month novelty grace period. The disclosure of information relating to the invention by the inventor, applicant or by any person having obtained the information directly or indirectly from them (including when invention is displayed at an exhibition), as a result of which information on the subject matter of the invention has become publically available, does not destroy the novelty of the invention provided that the patent application was filed with the RUPTO within six months from the date of the information disclosure.
Can inequitable conduct be a valid defense argument in a patent infringement case in Russia?
Patent infringement litigation and invalidation proceedings in Russia are totally bifurcated and therefore, if an infringement action is initiated, invalidity arguments are not considered in the proceedings and cannot be asserted as a defense in patent infringement cases.
Moreover, currently the courts do not normally suspend infringement litigation if an invalidation action is filed with the RUPTO after the infringement suit has been brought.
As to invalidation proceedings, there is no such grounds for invalidity as inequitable conduct. The applicant does not face any repercussions in terms of patent validity for not disclosing any information known to them that would contradict patentability of the invention.
Under Georgian patent regulation, it is mandatory to request a substantive examination. As soon as the formal examination is completed, the applicant receives a notification. The request for a substantive examination should be filed within two months after receiving the notification.
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