Article in INPIT - Joint ownership of patent applications and patents in Russia

An article by Sojuzpatent’s Senior lawyer Mikhail Nepomnyashchikh entitled "Joint ownership of patent applications and patents in Russia" was published by the Japanese National Center for Industrial Property Information and Training (INPIT) in the framework of a joint strategic project with the Japan Patent Office (JPO) "Data Bank for Intellectual Property Information from Emerging Nations" (GLOBAL IPDB).

The GLOBAL IPDB aims to compile and provide information about various intellectual property systems of East Asian, East European, Latin American, African, ASEAN and BRICs countries. The information in GLOBAL IPDB includes basic system on IP protection, how to access information of statistics, measures against counterfeits, litigation and license related information. The goal is to provide helpful information for Japanese enterprises (especially small and medium enterprises) when they try to enter a market in the subject countries.

Joint ownership of patent applications and patents in Russia
 

Mikhail Nepomnyashchikh (Senior lawyer)

Sojuzpatent was founded in 1922. Sojuzpatent is the oldest IP law firm on the territory of the 
former USSR. Currently the personnel of Sojuzpatent consists of over 100 qualified specialists, 
including more than 50 registered Russian and Eurasian patent attorneys and litigation lawyers. 
Mikhail Nepomnyashchikh has a master’s degree in Law from Kutafin Moscow State Law University. He 
is experienced in the field of intellectual property protection, including litigation, unfair 
competition, patent searches, domain names, software and databases.
Overview
All patent-related matters are regulated by the provisions of Section VII of Part IV of the Civil 
Code of the Russian Federation “Rights to results of intellectual activity and means of 
individualization” (which succeeds to the Patent Law of the Russian Federation - effective until
2008). The matter of joint ownership of patents or applications, in particular is addressed in
Articles 1358, 1348 and 1229, which are reproduced at the end of the article for your reference.

The general legal framework of patent joint ownership in Russia can be described by a simple 
formula:

• usage – independent;
• management – joint;
• enforcement – independent.

Apart  from these  default  rules,  the  interrelations between patent/application co-owners are 
entirely subject to freedom of contract.
1. Use.
By default, any of the co-owners are free to use the patented invention at their own discretion. 
The rights holder is not required to inform or obtain any approval for the use of the invention by 
other co-owners. Nevertheless, in this regard it  is  important to  consider the distribution of 
income generated from such use.
The law provides for equal distribution of gains only when the invention is used jointly. At the
same time, the Civil Code stipulates that the relations between co-owners should be regulated by an 
agreement. Therefore, to avoid ambiguity we recommend that prior to any commercialization of the 
invention the co-owners agree on the terms of such use and particularly on the distribution of 
income. Lack of clear written contractual arrangements regarding use of the invention frequently 
leads to disputes between the co-owners.
2. Management.
Generally, all co-owners are jointly in charge of the exclusive right, unless otherwise stipulated
in the agreement between them (paragraph 3 of Article 1229 of the Civil Code).

The provision applies to any kind of arrangement that affects ownership of patent or application. 
This includes license and sublicense agreements, franchise agreements, abandonment of right, 
assignments (including assignment of rights among the current patent owners/applicants and 
assignment to parties affiliated to any of the patent owners/applicants).

Notwithstanding the above, the agreement between the co-owners may provide otherwise (for example, 
the possibility of disposing of the exclusive right by any of the co-owners or one of them, etc.). 
The Civil Code does not restrict the co-owners in their choice of the model for distribution of 
powers, therefore, for example, any of the following options is viable:
- any of the co-owners may dispose of the exclusive right to the result of intellectual activity on 
behalf of all rights holders;
- a certain rightholder may dispose of the exclusive right on behalf of all rights holders;
- several co-owners out of their total number may dispose of the exclusive right on behalf of all
rights holders, but for this end they need to make a consensus decision;
- for transactions of a certain category (for example, for the assignment of an exclusive right), a
joint decision of all co-owners is required, while other transactions may be made by any of the 
co-owners on behalf of all rights holders.

Other issues related to the disposal of the exclusive right (e.g. the procedure for making 
managerial decisions, entrusting the exercise of one's rights to one of the co-owners or to a third 
party, the inclusion of a new person in the ownership, transfer of one’s share in this right to 
other co-owners or third parties etc.) may be defined in the co-owners’ agreement as well. Most 
importantly the agreement should define the rate of distribution of any proceeds gained from 
licensing, assignments etc., unless the co-owners agree with equal portions prescribed by law.

If the co-owners are heirs to the deceased, then at their request such an agreement may be 
incorporated into the certificate of inheritance or issued as an independent document.

The disposition of rights shall be registered with the patent office (otherwise, the transfer of 
rights is deemed not effectuated), at the same time, the abovementioned agreements between the 
co-owners themselves are not subject to any registration.

As a  matter of practice, there are two  possible situations when registering assignments or 
licenses.
When the co-owners dispose of their patents jointly – they shall provide the patent office with a
Power of Attorney signed by all of the co-owners.
In case the co-owners have some specific management arrangements by virtue of an agreement –
they  submit  the  PoA  signed  by  the  authorized  co-owner  plus  a  copy  of  an  agreement
(declaration, deed, contract etc.) conforming such authorization by other co-owners.

Note 1. Though there is no legal requirement, the patent office may request all the co-owners to 
sign-off even when the changes in title are due to reorganization (legal succession) or change of 
name of one of the co-owners.

Note 2. The same rules are applied to the co-authors of the invention. When there are several co- 
authors, addition of new co-author(s) or exclusion of any of them can only be effectuated when each 
of them confirms their consent in writing.

3. Enforcement.

Every patent owner is free to take action in order to protect their exclusive rights individually. 
In case one of the patent holders becomes aware of an illegal usage of the patented invention (or 
preparations for such usage) they can prosecute the infringers the way they choose and without any 
procedural requirements for informing other co-owners, obtaining their approval etc. This applies 
to any venue the rightholder chooses: administrative proceedings in the Federal Antimonopoly 
Service, requesting criminal investigation by the Police and most common – filing a civil lawsuit 
with the court.

The court may, at its own discretion or upon a motion by any other party to the infringement 
litigation, invite other co-owner(s) to participate in the proceedings only if it decides that 
their involvement is necessary for proper consideration of the case or their rights and interests 
will be affected by the decision.

4. Litigation practice.

Current litigation practice in Russia in the sphere of patent/application ownership focuses mainly 
on the issues of service inventions. Therefore, apart from employee-employer disputes regarding the 
exclusive rights there are no controversial points subject to evolving court practice.

Article 1358. The Exclusive Right to an Invention, Utility Model, or Industrial Design

<…>

5. If the holders of a patent for invention, utility model, or industrial design are two or more 
persons, the rules of Paragraphs 2 and 3 of Article 1348 of the present Code shall be respectively 
applied to relationships among them, regardless of whether or not any of the patent holders is the 
author of this result of intellectual activity.

Notes

Article 1348. Co-Authors of an Invention, Utility Model, or Industrial Design

1. Citizens who have made an invention, utility model, or industrial design by joint creative work 
shall be deemed the co-authors.

2. Each of the co-authors shall have the right to use the invention, utility model, or industrial 
design at their discretion, unless an agreement among them has provided otherwise.

3. The rules of Paragraph 3 of Article 1229 of the present Code shall be applied to inter relations 
of the co-authors connected with sharing the income received from use of an invention, utility 
model or industrial design and with the disposition of the exclusive right to an invention, utility 
model, or industrial design. The disposition of the right to obtain a patent for an invention, 
utility model, or industrial design shall be fulfilled by the co-authors jointly.

4. Each of the co-authors shall independently have the right to enforce its rights to the 
invention, utility model or industrial design.

Article 1229. Exclusive Right
<…>
2. The exclusive right to a result of intellectual activity or to means of individualization 
(except the exclusive right to a trade name) shall belong to one person or to several persons 
jointly.

3. In case when the exclusive right to the result of intellectual activity or means of 
individualization belongs to several persons jointly, each of the rights holders shall have the 
right to use such a result or such means at their discretion, unless the present Code or an 
agreement between the rights holders have provided otherwise. Relations of the persons possessing 
the exclusive right jointly shall be determined by agreement among them.
The  disposition of the  exclusive right  to  the  result  of intellectual activity or  to  means 
of
individualization shall be effected by the rights holders jointly, unless the present Code or an 
agreement between the rights holders have provided otherwise.
The income from the joint use of the result of intellectual activity or means of individualization 
or from joint disposition of the exclusive right to such result or means shall be distributed among
all the rights holders equally, unless otherwise provided for by an agreement among them.