Invention/utility model patent applications are filed with the Russian Patent and Trademark Office – the Federal Service for Intellectual Property (Rospatent).
Most of the patent filings received by the RUPTO from foreign applicants are national phases of PCT applications or national applications claiming conventional priority from applications filed in foreign countries. In case the invention was made in Russia, it is required that the first application be filed with Rospatent. (Please refer to the First Filing Requirement/Foreign Filing License section below.)
Sojuzpatent processes patent filings electronically, which ensures a 30% discount off the official fees.
For invention/utility model patent applications, the Russian PTO performs both formal and substantive examinations. For invention patent applications, a separate examination request should be filed no later than 3 years from the filing date (for PCT national stages - from the international filing date). The substantive examination for utility model patent applications is started automatically after the formal examination has been completed.
Most of our patent attorneys have prior experience working as examiners in Rospatent, and their extensive technical knowledge is combined with a deep understanding of the Patent Office’s approaches and requirements.
First Filing Requirement (Foreign Filing License) in Russia
The term “foreign filing license” is not directly mentioned in Russian IP legislation. At the same time, Russian regulations contain provisions similar to those set forth in countries that oblige national applicants to receive special permission before filing patent applications abroad.
In case the invention has been developed in the Russian Federation, the applicant is required by Russian law to file their first application in Russia (direct national filing or international application filed with the RUPTO as the International receiving office).
Any subsequent application can only be filed abroad after a six-month check performed by the Russian Patent Office. The check is meant to reveal state secrets the invention may eventually contain. Rospatent does not issue any special permission to file foreign applications (as compared to the US foreign filing license, when PTO issues a corresponding notification). The lapse of the said six-month term automatically allows the applicant to file subsequent applications with foreign Patent offices. The term may be reduced by filing a request explaining that the application materials do not contain state secrets. Reduction of the term lies then within Rospatent’s discretion. It may normally be reduced to 3-4 months.
If, in breach of said rule, the applicant files the patent application with a foreign Patent office, Russian law stipulates administrative liability (monetary penalties). At the same time, if, after an unauthorized foreign filing, a state secret is revealed in the invention, both the applicant and the inventor become criminally liable.
We will be happy to provide more information and perform an analysis of a specific situation involving the first filing requirement.
Can the PCT national stage start before the expiration of the time limit?
In both Russian and Eurasian Patent Offices, the processing of a PCT national (regional) stage application may start before the expiration of the 31-month time limit in case the applicant makes an express request to the Patent Office.
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.
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.
Unlike Russian or Eurasian patent rules (under which a divisional application can be filed before the patent registration or before the lapse of the period allowed for challenging the refusal decision), Ukrainian legislation allows filing a divisional application only before the decision on the initial application is issued (decision of grant or refusal). This limitation is often a stumbling point for applicants familiar with Russian and Eurasian patent regulations.
How can I transfer the Russian part of an international patent application (PCT) and of a Eurasian patent (application)?
The Russian part of a PCT application (as any Russian patent or patent application) can be transferred/assigned to another party on the base of an agreement between the parties (the recordation of the transfer of rights under a Russian patent takes about two months within the RUPTO plus preparation work).
A transfer/assignment of a Eurasian patent (patent application) can only take place with regard to all the contracting states (Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, Turkmenistan). Therefore, if the patent holder intends to transfer their patent rights with regard to Russia only, they will be unable to do so as long as the Eurasian patent is maintained in force in other countries. (And even if the patent holder has recently stopped paying annuities for some countries, the 3-year reinstatement right would be transferred together with the Eurasian patent).
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