March 4, 2016
Change of Approach to Registration of Disposal of Intellectual Property Rights in the Russian Federation: Assignment, License, Pledge

In accordance with Federal law No. 35-FZ of March 12, 2014 there has been introduced some amendments into Part IV of the Civil Code of the Russian Federation (Civil Code), which took effect on October 1, 2014. The amendments concern particularly the chapters relating to registrations of license, assignment and pledge agreements in respect of objects of intellectual property.

With regard to said amendments on December 24, 2015 the Rules on state registration of disposing the exclusive rights to an invention, utility model, industrial design, trademark and other objects of intellectual property were approved by the Government of the Russian Federation. Federal Service for Intellectual Property (Rospatent) realizes accepting and prosecuting the documents on the basis of the newly adopted Rules. Corresponding Administrative regulations are expected to be approved soon.

One of the most important innovations is change of the approach to registration of disposing the intellectual property rights. Namely, currently instead of the agreement (transfer, license or pledge agreement) Rospatent registers the fact of transfer, pledge or giving a right to use (license) the result of intellectual activities or means of individualization. First of all, it means that Rospatent does not check whether all provisions of the agreement meet the requirements of the legislation. Only the provisions relating directly to disposing the intellectual property rights are checked.

As consequence of introduction of said amendments to legislation there is no need to file an original agreement for the purposes of state recordal. It is currently sufficient to file a request with indication of the required information. On the basis of powers of attorney the request may be filed by a patent attorney on behalf of the parties to the agreement. Such approach simplifies the procedure of disposing the intellectual property rights, making it possible to accelerate the process of preparing the required documents and to lower the associated expenses, connected with forwarding the original agreements and, in corresponding cases, with translating the documents into Russian.

On the other hand the possibility to file an original agreement together with the request is also saved. The original with a recordal mark is not returned to the applicant. It remains deposited in the materials of the case as a reference copy. In case of a loss of a party’s copy or in case of occurrence of any controversies on the agreement content, each of the parties may request a copy thereof certified by the Rospatent.

Thus, in case an agreement reflects only the fact of disposing the right to the objects of intellectual property, it may be sufficient to file a request on the basis of the powers of attorney from the parties to the agreement. In case an agreement contains some other provisions intended to regulate substantial aspects of the parties’ relationship, filing an original of the agreement for registration will make it possible for parties to improve protection of their rights and interests.

Both variants of the procedure have the same legal force, and both parties are responsible for accuracy of the data, indicated in the agreement or in the request.

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