New Guidelines on IP Objects Registration

By the end of 2018 Russian Patent and Trademark Office is to complete preparation of the guidelines regulating the procedure of rendering state services for registration of IP objects. Most of the guidelines were already adopted, some are under final consideration after being exposed for public comments. Though guidelines are not binding on the applicants or any other third parties, they are obligatory for the RUPTO practitioners in processing relevant applications. However, any third parties may refer to the provisions of the guidelines in communication with RUPTO and appeal to the guidelines in an argument.

There are seven new Guidelines prepared by RUPTO:

1. Guidelines on administrative procedures and actions in the framework of rendering state service on state registration of the industrial design and issuing a patent for industrial design, its duplicate adopted by the Decree No. 127 dated 24.07.2018 (hereinafter Guidelines on Designs);

2. Guidelines on administrative procedures and actions in the framework of rendering state service on state registration of the trademark, service mark, collective mark and issuing certificates for trademarks, service marks, collective marks and their duplicates adopted by the Decree No. 128 dated 24.07.2018 (hereinafter Guidelines on Trademarks);

3. Guidelines on administrative procedures and actions in the framework of rendering state service on state registration of the software programs and databases and issuing a certificate on the state registration of the software programs and databases, their duplicates adopted by the Decree No. 129 dated 25.07.2018;

4. Guidelines on administrative procedures and actions in the framework of rendering state service on state registration of the integrated circuit layout designs and issuing a certificate on the state registration of integrated circuit layout designs, their duplicates adopted by the Decree No. 130 dated 25.07.2018;

5. Guidelines on administrative procedures and actions in the framework of rendering state service on state registration of appellations of origin and granting exclusive right to such appellation of origin, as well as granting exclusive right to the already registered appellation of origin and issuing the certificate on exclusive right to the appellation of origin, its duplicate (to be adopted in December 2018); 

6. Guidelines on administrative procedures and actions in the framework of rendering state service on state registration of the invention and issuing a patent for the invention, its duplicate (to be adopted in December 2018); 

7. Guidelines on administrative procedures and actions in the framework of rendering state service on state registration of the utility model and issuing a patent for the utility model, its duplicate (to be adopted in December 2018).

The guidelines, generally, follow the structure of similar documents used by the European patent office. Namely, each document is divided into two columns. In the right column, there are references to legal norms on which recommendations located in the left column are based. These norms include the Civil Code of the Russian Federation, Ruling of the Government of the Russian Federation on patent and other fees № 941 dated 10.12.2008 (as amended), Administrative Procedures, Rules, and Requirements applicable to specific IP objects.

In the left hand column, there are specific guidelines, comments and practical examples developed based on applicable legislation, Chamber for patent disputes and IP Court practice. These guidelines do not contain recommendations on filing applications, but rather help RUPTO experts to process such applications.

There are certain new issues in the guidelines as compared to the previously effective documents.

In the Guidelines on Designs extended attention is given to recommendations on unity, on features justified by the technical function only, on the degree of designer’s freedom, on finding out the substantive features, on conversion of a design application into an invention or utility model application.

Guidelines on Trademarks replace all existing RUPTO recommendations and information letters (where provisions overlap), and contain extended material in view of new legislation, Chamber for patent disputes and court practice.

We are expecting that the remaining guidelines will be adopted in December 2018 as scheduled by the RUPTO Decree No. 47, dated 14.03.2018, and will be glad to provide our comments in connection with specific issues arising in the course of registration procedures.