International report - Government increases official fees charged by Rospatent 01 Nov 17
Gowling WLG (International) Inc - Russia
As of October 6 2017, administrative fees charged by the Russian Patent and Trademark Office (Rospatent) have been increased by Decree 1151. The decree has also introduced fees not previously charged by Rospatent.
Some of the new fees for patent and trademark registration, maintenance and renewal are one-and-a-half to two times higher than those set previously. For example, the registration of a trademark application and its formal examination was $47 before the decree and is now $60, plus $17 for each international trademark over Class 5. For patent applications, the fee was $29, plus $4 for each claim over Class 25 and is now $77, plus $17 for each claim over Class 10.
Formerly free Rospatent services which now carry fees include:
- conversions of a challenged patent for invention into a patent for a utility model (approximately $26); and
- substantive examinations of utility models (approximately $26).
The revenue generated from the increased and newly introduced fees should cover Rospatent’s expenses for rendering services to applicants and inventors, as well as eliminate the claimed imbalance between fee amounts and the actual efforts by Rospatent officials. Another justification for increasing the fees forwarded by Rospatent representatives was that the experience of Eurasian Economic Union (EAEU) members, where official fees for the same procedures are higher, created unequal conditions for applicants in EAEU countries.
The decree not only raised the nominal amounts of official fees and broadened some grounds for charging such fees, but also eliminated some fees and introduced discounts for others. For example, fees for amendments and corrections to the name and address of an applicant in a trademark application or the description of a trademark have been removed. The decree also aims to incentivise electronic application filing and provides for a 30% discount for applicants that file patent or trademark applications or apply for other office actions electronically. Principal trademark fees are also differentiated according to the number of classes covered by the application or registration.
The 2014 amendments to the Civil Code changed the procedure for industrial design term extension: its effective term can be prolonged for five years, up to a total of 25 years. The decree has finally brought the procedure for paying official fees in line with the Civil Code. According to the new procedure, the maintenance fees for industrial designs should be paid once every five years during the patent term for applications filed after January 1 2015.
The decree has also amended some of the periods during which official fees must be paid. Before October 6 2017, the registration fees for an invention, utility model, industrial design or trademark should have been paid within four months from the day of Rospatent’s notice of allowance. The decree requires that registration fees be paid within two months from the day on which Rospatent issues an invoice for a particular office action, which is effectively two months after the notice of allowance.
The Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs will soon enter into force in Russia (for further details please see “Russia signs up to international design registration at long last”). Decree 1152 of September 23 2017 introduced official fees for designating Russia as a country where protection of an industrial design is sought, which is $207, plus approximately $43 for every industrial design of the group of industrial designs over Class 2.
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