Gowling WLG (International) Inc - Russia
Statistics show that Russia was among the top 10 designated member states of the Hague Agreement in 2018, with 1,547 international applications in the country’s first year. This is highly indicative of international applicants’ strong interest in using the Hague System to protect their design rights in Russia.
While the Hague System permits the registration of up to 100 designs with 74 contracting parties, which covers 91 countries, through the filing of a single international application, there are some aspects to consider when registering a design application in Russia in order to make the registration process smoother. Further, applicants must be aware of the differences between Russian national and international application examination procedures.
Similarities and differences
The examination procedure for national and international design registrations designating Russia are similar. The main difference is that the Russia Patent and Trademark Office (Rospatent) cannot refuse a design on the basis of non-compliance with formality requirements. This includes requirements relating to the form or content of the international application and are deemed to be satisfied following the examination carried out by the international office. Accordingly, the requirement to provide a written description as part of the industrial design application does not apply to international design registrations, whereas it does for direct national filings.
Similar to national filings, there is a requirement to submit the original (paper) certified copy of the priority application to Rospatent if convention priority is claimed. The term for submission is three months from the publication date of the international design registration, which corresponds to the three months from the filing date for national applications. If the term is missed, the priority date will be granted according to the international filing date. A priority document can be submitted without involving a local patent attorney. If further correspondence is required, the non-resident applicant must be represented by a Russian patent attorney.
Another issue relates to the unity requirement of the industrial design and the procedure for overcoming objections based on non-compliance. The unity requirement is deemed to be met if the industrial design application relates to either one or to a group of industrial designs so closely associated as to form a single creative concept. The group of designs conforms to the unity requirement if it comprises a set or package of products and a separate product from this; or of variants of the same design that differ in non-essential features and/or a colour scheme. All the designs of the group should belong to the same Locarno international class.
National applications are tested twice for compliance with the unity requirement as follows:
- At the formalities examination stage, when the applicant has the option to argue against the examiner’s opinion on non-compliance. The applicant may choose to provide defensive arguments, thereby allowing examination to proceed with regard to all of the industrial designs in the single application.
- At the substantive examination stage, when the applicant’s only option is to choose one of the designs or a group of designs that comply with the unity requirement.
In the case of an international design registration, if a refusal is issued on the grounds of non-compliance with the unity requirement, the applicant’s only option is to choose one of the designs or a group of designs that comply with this. The time limit for responding to a refusal related to non-compliance is three months (non-extendable). The excluded design may be captured in a divisional application submitted directly to Rospatent as a national application with all the applicable formality requirements, including the earlier mentioned requirement for a written description of the industrial design.
Similar to national applications, if the response to a refusal is not submitted in a timely manner with regard to the unity requirement, examination automatically proceeds for the design (or a group of designs) first mentioned in the application.
In other aspects, the examination procedure for international registrations includes the same tests for compliance with patentability requirements for industrial designs as national filings, primarily focusing on assessing whether the design includes proper subject matter and meets the novelty and originality requirements.
If there is a substantive objection for an international registration (other than in relation to the unity requirement), Rospatent issues a refusal, which can then be appealed to the Chamber for Patent Disputes within seven months. This procedure is stricter than for national filings, wherein Rospatent might send office correspondence prior to the issuance of the refusal allowing the applicant to provide arguments and additional documents within a three-month period (extendable by 10 months).
There are other key aspects to consider when designating Russia as a contracting state for international design registrations under the Hague Agreement:
- Individual fees are charged instead of a standard fee for designating Russia, as well as fees for further renewals.
- It is not possible to designate Russia and request deferred publication of the international design simultaneously.
- The period in which a refusal can be issued is extended to 12 months instead of six.
- The international registration in Russia becomes effective in this country when the Statement of Grant of Protection is issued.
- The total term of validity of an industrial design registration is 25 years, beginning from the international application filing date, with an initial term of five years.
- Any change in ownership should be registered at Rospatent in order to come into effect in Russia.