New IP legislation friendlier for rights holders
The Russian IP legislation has come of age quickly. In 1992, when the first Russian IP laws were adopted, they were among the first Russian laws (the Civil Code was adopted two years later). Even though they were passed quickly, the laws were of satisfactory quality because they were based on EU law. As the market economy was very new, the legislation, even though it contained provisions relating to enforcement, dealt well with registration of IP rights. Enforcement was less effective in the early years when the Russian Patent Office (then the Committee for Inventions and Discoveries) was well equipped to examine patent and trademark applications and conduct searches, so it took little effort to adapt to the new requirements.
Enforcement and infringement were non-existent during the first couple of years, largely because the shops were empty and because law enforcement bodies had no experience in curbing infringement in the market environment. Nevertheless, the market – however empty – quickly took off. At the same time, the IP laws were applied to business practice. The economic set-up was developed quickly and the application of the IP laws to business broadened. This highlighted their weaknesses, so discussions began to improve them. From 2002 to 2003 a sizeable package of amendments was passed, dealing with examination procedures and business practices.
As the market began to function normally, infringement occurred and the lack of enforcement measures became apparent. Thus, further amendments were made to the IP laws in 2008. These dealt with a variety of issues, such as the conceptual provisions of the legislation, the examination of IP rights by the Patent Office, the disposal of rights and enforcement. However, another major development also took place: the separate IP laws were combined to form Part IV of the Civil Code. Each law became a chapter of the Civil Code and a new chapter was added dealing with issues common to all IP rights. The Russian government attaches special importance to intellectual property, which may explain why the IP laws were included in the Civil Code while many other laws regulating aspects of the national economy remain outside it.
Routine work has continued to develop the IP legislation further. As before, the amendments were widely discussed by IP practitioners and the public. Finally, a package of proposals was submitted for consideration to the Duma and was signed by President Putin earlier in 2014. The new law will enter in force on October 1 2014. Other laws which affect IP rights were also amended.
The changes are intended to make the regime friendlier for rights holders. The result is a comprehensive set of laws which comply with the requirements of international law and practice. The fact that Russia is a signatory to most international agreements in the IP field further confirms this alignment with international standards.
The latest changes to the IP law concern all subject matters. The following are of note:
At present, a rights holder must submit the full text of the contract (or more concise information, according to the Singapore Agreement), which is often inconvenient for rights holders which do not want to disclose sensitive information. The new law allows them to provide only basic information about the deal, such as the parties, the subject matter and other formal details. The contract will be registered on that basic information and submission of the full contract will be optional.
- It is often difficult to calculate and prove damages in case of infringement. At present, the law allows a rights holder to claim compensation in the amount of up to $170,000 or double the licence fee usually charged in comparable circumstances without proving the amount of damages, but this applies only to trademarks. The new provisions, applicable in this case from January 1 2015, will allow patent holders to also claim compensation.
- The process to obtain a use patent will be streamlined: the law expressly provides that it will be possible to formulate the subject matter of the invention through use of a product.
- Third parties will be able to submit their observations on the patentability of an invention after publication of the application, and their observations shall be taken into account by the examiner.
- The amendments require the obligatory substantive examination of utility model applications before the grant of a patent. The substantive examination should tackle the issue of patent trolls, which obtain patents for utility models for established technical solutions.
- The term of validity for an industrial design will remain at 25 years; however, this will be granted in five-year periods (as of January 1 2015). Further, an application for an industrial design need no longer include the list of essential features of the industrial design. Instead, a set of pictures submitted with the application should give a comprehensive view of the essential features of the industrial design which define the aesthetic characteristics of the appearance of a product. This is in line with other countries' legislation.
- In order to reduce the number of appeals after trademark registration, the examiner will have to consider information received from third parties. At present, such information is only for information. Further, the amendments alter the calculation of time limits for the applicant's actions during examination of the application. The start date will be the date on which the Patent Office sends the document, rather than the date of receipt by the applicant. This will simplify the calculation of the time limits and enable the office to set the end date accurately. Finally, the deadline will be extended by one month.
- Missed deadlines will be easier to restore as the new law removes the need to confirm the reason for missing the deadlines (it will be sufficient to indicate the reason for the failure).
These changes should make the IP regime friendlier for rights holders.
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