Civil Code amendments: invention and utility model patents

26 April 2021

Preliminary searches and reports on patentability
Limitations on free applications
Additional opportunity to amend claims and specification

On 31 July 2020 Federal Law 262-FZ made several amendments to the Civil Code regarding the examination of invention and utility model patent applications. Most of the amendments will take effect on 1 August 2021, although some took effect in Autumn 2020.

Preliminary searches and reports on patentability

From 1 August 2021 applicants may request a preliminary search and report on patentability from any academic or research institution accredited by the Russian Patent and Trademark Office (Rospatent). Rospatent may use the results of the search and the report to examine the application.

According to the legislature, this amendment aims to:

  • involve more research and education specialists in patent processing;
  • reduce the volume of preparation work for Rospatent's examiners;
  • increase patent quality, given the participation of specialists; and
  • reduce patent application processing terms and the official examination fees.

Limitations on free applications

Previously, patentees did not have to pay official fees if they filed an application along with a signed obligation to cede the granted patent on the market conditions to any interested national resident. The amendment to Article 1366 of the Civil Code – which took effect on 30 October 2020 – enables the government to limit the number of patent applications filed by such patentees every year and choose which fees are affected. The government has subsequently limited the annual number of reduced-price applications to 10 per applicant.

This amendment aims to prevent abuse of such right, which resulted in thousands of free applications being filed every year, even though the number of transferred patents did not exceed 0.2% of the total.

Additional opportunity to amend claims and specification

The aforementioned amendments primarily concern first filings and, therefore, national applicants. The following amendment may be important for filers of subsequent applications, including Patent Cooperation Treaty (PCT) national phases.

Before the amendment takes effect, applicants may amend their application claims and specification:

  • when entering the Russian national phase;
  • within one month of entering the Russian national phase;
  • in response to an official action; and
  • after receiving the search report (only once).

The last two options are difficult for applicants to access where applications are granted with no official actions and applicants receive the search report together with the grant decision.

However, from 1 August 2021 an amendment to Article 1378 of the Civil Code will give applicants another opportunity to amend their applications. Applicants will be able to make a voluntary amendment when filing a substantive examination request, which can be filed within three years of the filing date (for PCT applications, the international filing date).

This change relates to the aforementioned preliminary search and patentability report amendment. However, it provides additional convenience to all applicants, regardless of their use of such procedure.

This article first appeared in International Law Office