Gowling WLG (International) Inc - Russia
Although international agreements harmonise the underlying principles of patenting among countries, each jurisdiction’s patent laws still have their own peculiarities, such as restricting the filing of international applications with other patent offices for national security purposes. This is why it is essential to understand the unique traits of the IP laws of the country in which an invention was created before seeking the legal protection of an invention in another country.
Russia has a first-to-file requirement. According to Article 1,395 of the country’s Civil Code, the application for an invention or utility model created in this country can be filed in a foreign state or with an international organisation six months after filing an application at the Russian Patent and Trademark Office (Rospatent). This is providing that Rospatent does not notify the applicant that the application contains secret state information. An application can be filed outside of Russia earlier than this six months, but only after conducting – upon the request of an applicant – an expedited check for state secrets.
This means that first, if an invention was created in Russia, the application must be filed initially in Russia as a national, Eurasian or Patent Cooperation Treaty (PCT) application. In other words, a foreign company that owns a business in Russia and has employees who created an invention and reside in Russia is legally obligated to file an application in Russia. Second, to file an application outside of Russia, an applicant must either wait for six months for the state-secret check to pass or request an expedited check beforehand. The expedited state secret check takes no longer than three months.
In the meantime, there is a gap between the Russian law and regulations under which the state-secret check is performed for the applications filed by Russian entities or inventors only. Practically speaking, this means that applications filed by a foreign applicant (company) are not subject to a state-secret check, even though these applications must first be filed in Russia. Practically speaking, it is advisable to wait six months in such cases and then file outside of Russia. Another avenue would be to request an expedited state-secret check and obtain formal confirmation that the application is not subject to a security check and can be filed in other countries.
Bearing in mind that the Russian Federation is a PCT contracting state and a member state of the Eurasian Patent Organisation, applicants must meet at least one of the three requirements at the first filing stage before proceeding with the application outside Russia:
- filing a national patent application with Rospatent;
- filing a Eurasian patent application with Rospatent as a receiving office; and
- filing a PCT application with Rospatent as an international receiving office.
In all three cases, applications can be filed in English. However, if the applicant wants to proceed with Russian or Eurasian patent applications, a Russian translation should be submitted within three to four months after filing, with an available option for the extension of this term.
For those applicants who are interested in patenting in several countries, the direct filing of a PCT application may be preferable. Although it is significantly more expensive than a Russian application, filing a PCT application helps to avoid an extra stage of filing in Russia. It is also worth noting that an applicant may choose Rospatent or the EPO as an international search authority for the PCT application.
In all three cases, Rospatent carries out the state-secret analysis and it is possible to request an expedited analysis and receive notification that the application can be filed outside Russia.
Russian law does not specify precisely how to determine whether an invention has been created in Russian territory. In practice, documents such as labour or research contracts are taken into account and should be considered by foreigners who have businesses in Russia that can potentially create new inventions.