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INTELLECTUAL PROPERTY NEWS



October 8, 2014
Substantial changes in the Russian IP Legislation

Law as to the Amendments to Part IV of the Civil Code of the Russian Federation which came into legal force on October 01, 2014 (with the part of the provisions to come into force on January 01, 2015) provides substantial changes to the IP law of the Russian Federation which concern all IP objects.

Please select one of the suggested below to review the amendments in this respect.

COPYRIGHT

The main changes in the area of copyright concern the specification of concepts and definitions. Mainly the changes were made due to necessity to regulate the copyright issues in the Internet and IT sphere which were hardly regulated and to bring the legislation into the balance with the current needs.

The changes concerned the concept of rebroadcasting. According to the Law rebroadcasting is reception and simultaneous transmission on the air (including via satellite) or by cable of the full and unchanged radio or television broadcast (aircast) or its substantial part, transmitted by the organization of on-air or cable broadcasting.

The list of terms under which the record of the work is not considered to be its reproduction was specified as well.

The record of the work will not be considered its reproduction and the infringement of the intellectual property rights if the following requirements are met simultaneously:

- the record is short-term and is temporal or random by nature (at the previous variant the Code referred only to temporal nature of the record);
- the record is the integral and substantial part of the technological process the only purpose of which is the justified usage of the work or its transmission by the informational intermediary in the informational and telecommunication network. It is necessary that the record in such case does not have substantive economic value.

The list of the actions which may be performed without the permission of the rightholder and the payment of the remuneration (as previously such actions should be accompanied with the obligatory indication of the author and the source of citation):

- citation of the works being lawfully released to public particularly in order to reveal authorís creative concept;
- public performance of the works being lawfully released to public without the intention to make profit particularly in educational, medical organizations by the actions of the staff or the persons serviced by these organizations;
- the record on the electronic data carriers including recording in the computer memory and making available to the public of the synopsis of thesis.

PATENTS AND UTILITY MODELS

CRITERIA OF PROTECTABILITY OF INVENTIONS AND UTILITY MODELS

Inventions are one of the objects affected by the Law to the fullest extent. The main changes concern the criteria of protectability of the inventions. First of all unlike the previous wording the Law provides the open list of the non-protectable objects. But the Law does not contain any criteria on the basis of which the object by its nature may be regarded as non-protectable. The same open list of non-protectable objects is applicable in respect of utility models.

This provision of the Law is criticized as it may cause vagueness and uncertainty in interpreting although the rationality of the application of such provision will depend mostly on the Patent Office. It also shall be mentioned that the open list of the non-protectable objects was entrenched by the Patent Law which was repealed by the Part IV of the Civil Code.

Some changes also concerned the novelty of the inventions. According to the Law in the frame of determining the novelty the examiner takes into account also the industrial designs and is not limited by inventions and utility models as it was the case previously.

Industrial designs should also be considered in the frame of determining the novelty of the utility models, which will undergo the substantive examination. According to the previous wording of the Code utility models undergo only the formal examination.

TERM OF PROTECTION OF INVENTION AND UTILITY MODEL PATENTS

(amendments enter into legal force from January 01, 2015)

Part IV of the Civil Code in the previous edition Current rule
The term of protection of the utility models is 10 years and may be renewed for the term up to 3 years Utility model patent is effective for 10 years, but is not renewed
The term of protection of the inventions is not changed although the Law provides the issuance of the additional patents in case of renewal of the patents for medication, a pesticide, or an agrochemical.
INDUSTRIAL DESIGNS

CRITERIA OF PROTECTABILITY OF INDUSTRIAL DESIGNS

The system of protection of the industrial designs is also the subject to the substantial modifications. First of all the definition of the industrial design was changed. According to the wording of the Law the industrial design is the presentation of the appearance of the article, manufactured industrially or by artisans. Such definition may be considered as extending the legal protection as far as the previous wording provided the possibility of protection of only the artistic and design presentation.

Clause 5 of Article 1352 of the Civil Code in the wording of the Law provides the new list of the objects which may not be registered as the industrial designs:

- designs all the features of which are stipulated only by the technical function of the article;
- designs which may cause confusion including confusion in respect of manufacturer, place of manufacture or the goods. In particular, designs which are identical or creating the same general impression as the trademarks (registered or applied), well-known trademarks, appellation of origin, cultural heritage sites, company names, etc.

Industrial designs should also be considered in the frame of determining the novelty of the utility models, which will undergo the substantive examination. According to the previous wording of the Code utility models undergo only the formal examination.

The rule stipulating the prohibition of registration of the objects including reproducing or imitating the official symbols is now also extended to industrial designs.

The specified definition of the distinctiveness of the industrial design was implemented. As earlier the industrial design may be regarded distinctive if its substantive features are determined by the creative character of the particularities of the article. However the considerable amendments affect the definition of the creative character: the creative character is present in case the presentation of the article of the similar purpose making the similar impression on the informed user is not known from the information generally available in the world before the priority date of the industrial design. All earlier filed or registered inventions, industrial designs and utility models in the Russian Federation will be taken into account in the frame of determination of distinctiveness, while previously only the earlier applications for industrial design were taken into account and only in the frame of the novelty, not distinctiveness determination.

The second change concerns the definition of the substantial features of the industrial designs which do not include ergonomic features of the article but only those which influence the esthetic features. At the same time the list of the features which may be considered substantive was extended. Particularly the combination of the lines, edges of the article, texture and surface of the article may be considered as substantive features.

Moreover the list of the substantial features is not to be enclosed to the application for the industrial design. So the scope of protection should be defined on the basis of the picture of the article, not the list of the substantial features provided by the applicant as it was stipulated by the Civil Code previously.

The list of the objects which may not be registered as industrial designs was also specified. According to the Law the following objects: which may mislead the consumers, including in respect of the producer or the place of production or the goods for which the item is the label or package, in particular to the objects being identical with the official names and images of particularly valuable objects of the cultural heritage of the peoples of the Russian Federation or objects of world cultural or natural heritage or the means of individualization of other persons, or making the same general impression, or including such objects.

GRACE PERIOD FOR INDUSTRIAL DESIGNS

The term for filing the application after disclosure of information relating to an industrial design by its author, applicant, or other person having received this information directly or indirectly from them, is extended by the Law from six months to one year.

TERM OF PROTECTION OF INDUSTRIAL DESIGNS

(amendments enter into legal force from January 01, 2015)

Part IV of the Civil Code in the previous edition Current rule
Now the term of protection of the industrial designs is fifteen years and may be renewed for another ten years. The general term of protection may not exceed 25 years. The term of protection of the industrial designs is five years and may be repeatedly renewed each time for five years. The general term of protection may not exceed 25 years.
DEPENDENT INVENTION, UTILITY MODEL OR INDUSTRIAL DESIGN

The new concept of the dependent invention, utility model or industrial design was introduced by the Law and is defined as the invention, utility model or industrial design which may not be used without using of the prior invention, utility model or industrial design protected by the patent. It is absolutely new concept for the Russian legislation.

TRANSFORMATION OF APPLICATIONS

The Law also provides the new possibility of transformation of the application for the invention, utility model into the application for the industrial design and vice versa. The current wording provides only the possibility of transformation of the application for invention into the application for utility model and conversely.

TRADEMARKS, APPELLATIONS OF ORIGIN

The main changes provided by the Law in respect of trademarks and appellations of origin concern the publication of the applications. After such publication and before taking of the final decision by the Trademark Office any person may file the opposition. The same procedure is provided for the appellation of origin.

According to the previous wording there were no official oppositions against the applied trademarks and the trademark was the subject to cancellation by the third party only after its registration.

LICENSING, ASSIGNMENT

One of the main changes in the area of the licensing and assignment concerns the procedure of the registration of the agreements.

According to the Law providing of the copy of the agreement is not necessary in case the application for the registration is filed by both parties. Otherwise one of the following documents shall be enclosed to the application:

- the Statement of Disposal of the Exclusive Right signed by both parties;
- the agreement;
- the notarised extract from the agreement which also may be filed.

Another change concerns the prohibition of the gratuitous assignment and exclusive licensing between commercial organizations.

The Law also provides the possibility of unilateral termination of the license agreement for any IP object in case of substantial breach of the obligation as for payment the royalty fee by the Licensee. According to the previous wording of the Civil Code such possibility is provided only in respect of the copyright license agreements.

LIABILITY FOR INFRINGEMENTS

(amendments enter into legal force from January 01, 2015)

The compensation for the infringement of the patent rights in the amount from 10 000 to 5 000 000 RUB or double amount of the cost of the right to use the invention, utility model or industrial design was introduced by the Law. According to the previous wording of the Code in case of patent infringement the rightholder was not entitled to request the compensation; only reimbursement of damages was possible.


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