Russia Joined Hague System for Industrial Designs
Since February 28, 2018, industrial designs can be protected in the Russian Federation through a simplified procedure under 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
Applicants from contracting parties to the Geneva Act can file documents for industrial design registration either with the International Bureau of WIPO or with the local patent offices designating Russia among countries where the protection is to be sought. After registration of industrial designs with the International Bureau and publication of the international registration data in the International Designs Bulletin, the Russian Patent and Trademark Office (Rospatent) shall conduct the substantive examination.
While performing such an examination, Rospatent will take into account certain specific requirements of Russian legislation. Such requirements include the country-specific fees charging scheme, non-deferred publication, the unity of a single creative concept, the documental proof to Rospatent of the transfer of the rights, 12 month term for forwarding the notification of rejection, etc. In case the notification of rejection was issued, it can be appealed only to Rospatent in accordance with the requirements and the terms stated in the Russian patent legislation.
The international registration of relevant industrial designs takes effect in the territory of the Russian Federation from the sending date of Rospatent’s notification to the International Bureau of WIPO on granting protection.
The duration of protection for industrial designs in Russia is 5 years with the possibility of multiple prolongation for 5 years, but the maximum duration shall not exceed 25 years from the international application filing date.
When Rospatent performs substantive examination, it addresses questions and notifications to the international applicants. We recommend using local consultancy services to minimize costs and time required for successful protection of your industrial designs in Russia as well as to protect effectively the patent rights in the Russian Federation and abroad.
Change in Russian Official Patent and Trademark Fees
Since October 6, 2017, Patent and Trademark Office (Rospatent) has started levying new fees in compliance with Russian Government Regulation dated September 23, 2017, ¹ 1151 (hereinafter Fees Regulation).
Generally, the nominal amount of patent and trademark fees has significantly increased. Thus, fees for filing an invention patent application have increased from RUB 1,650 to RUB 3,300 (EUR 1 = RUB 67,77 at the official Russian Central Bank exchange rate as of October 6, 2017). Each additional claim above 10 (previously above 25) costs RUB 700 now (as compared to RUB 250 earlier). PCT applicants entering national phase will have to pay additionally RUB 700 for each claim in respect of which no international search has been made.
The amount of fees for substantive examination has been made dependent on whether the request for substantive examination was filed simultaneously with the patent application or at a later date (even next day). Now, any applicant can opt for simultaneous filing with 7-month period for providing the search report for increased fees, i.e. RUB 12,500 plus RUB 9,200 for each independent claim over 1. Should the request for examination be filed at any date after relevant patent application filing date, then the fees would be RUB 4,700 plus RUB 2,800 for each independent claim from 2nd to 5th and RUB 5,400 for each independent claim over 5. If the applicant encloses international search report, the above rates will be discounted by 10 % (20% before October 6, 2017). As the difference in fees is quite substantial, the applicants should weigh their timing and monetary resources to find an optimal strategy for entering national phase in Russia.
Some fees were newly introduced, including fees for taking decision upon substantive examination of a utility model, fees for transforming a challenged invention patent into a utility model patent, separate fees for patent registration and issuance, etc.
Under the new Fees Regulation there is a possibility to return 50 % of fees in case Rospatent takes a decision to terminate the processing of a challenge (application), e.g. due to amicable agreement of the parties. Another case of returning 50 % of fees is when Rospatent finds no grounds for conducting information search.
Now most of the official fees (excluding annuities) are subject to a 30 % discount (15 % before October 6, 2017) if relevant documents were sent to Rospatent electronically.
Fees concerning trademarks have nominally increased, but in case of the above-mentioned e-filing, relevant expenses will be lower. E.g., fees for the full trademark registration process in one ICGS class (from application to issuing the certificate) have risen from RUB 30,400 to RUB 33,000 (vice versa, electronic filing reduces the fees from RUB 25,840 to RUB 23,100). New fees have been introduced for the filing, registration and renewal of a trademark for any more than five classes of goods and services. For example, an applicant must pay an extra RUB 1,000 to file a trademark application for each additional class over five. The trademark registration fee will be RUB 1,000 for each additional class over five. There will also be an additional fee of RUB 1,000 for each additional class over five when renewing a trademark. Previously, the official fees for filing, registration and renewal did not depend on the number of classes. Rospatent is trying to reduce the number of trademarks which cover unnecessary goods and services and in the process clog the trademark register. At the same time, it is expected that the amount of non-use cancellation actions will be reduced over time. However, these additional fees are nominal and it is unlikely that they will have much effect.
The Fees Regulation provided for a new additional period of time to pay the patent and trademark fees. Patent and trademark fees can be paid within 6 months following the due date with the fine amounting to 50 % of fees in question. Patent fees can additionally be paid from 7th to the 12th month following the due date with the fine amounting to 100 % of relevant fees.
Currently, market participants are encountering different discrepancies in Rospatent practice of levying fees. We are following the developments concerning new fees to provide our clients with up-to-date advice and recommendations.
The following new regulations governing RUPTO’s activities entered into force at the end of 2015 - beginning of 2016:
18.12.15 Administrative Regulations for pre-term termination of trademarks connected with the termination of the right holder as a legal entity or as an individual entrepreneur
27.01.16 Administrative Regulations for utility model patent granting, issuance of its duplicate
27.01.16 Rules for compiling, filing and consideration of utility model applications
08.01.16 Administrative Regulations for granting industrial design patent, issuance of its duplicate.
27.01.16 Rules for compiling, filing and consideration of industrial design applications
27.01.16 Administrative Regulations for granting appellation of origin certificate, issuance of its duplicate.
27.01.16 Rules for compiling, filing and consideration of the appellation of origin applications
08.01.16 Administrative Regulations for granting integrated circuit topology certificate, issuance of its duplicate
08.01.16 Rules for compiling integrated circuit topology application
08.01.16 Administrative Regulations for registration of transfer of rights for an invention, utility model or industrial design patent, trademark, appellation of origin, topology of integrated circuits, software for computers and database on non-contractual grounds
10.01.16 Administrative Regulations for consideration of the application on granting open license for use of an invention, utility model or industrial design patent
08.01.16 Administrative Regulation for industrial design renewal
08.01.16 Procedure for industrial design renewal
08.01.16 Administrative Regulations for trademark renewal
08.01.16 Administrative Regulations of appellation of origin renewal
08.01.16 Administrative Regulations for inserting changes in trademark certificates
08.01.16 Administrative Regulations for inserting changes in the certificates for programs for computers, databases, integrated circuit topologies
08.01.16 Administrative Regulation for patent term extension
08.01.16 Procedure for patent term extension and additional patent issuance
08.01.16 Administrative Regulations for an invention, utility model or industrial design patent reinstatement
08.01.16 Administrative Regulations for inserting changes in an invention, utility model or industrial design patent