Offices & Countries / Russia / Industrial Designs / FAQ

	Industrial Designs Official Fees Filing requirements FAQ

1. How long a Design Patent is valid?

An industrial design patent shall be valid till expiration of the 10th year from the date of filing of the application with the Federal Executive Body in the Field of Intellectual Property. The term of an industrial design validity may be extended by the Federal Executive Body in the Field of Intellectual Property at the request of the applicant for the period no more than 5 years.

2. What determines the scope of a legal protection?

The scope of legal protection secured by an industrial design patent shall be defined by the set of its essential features as shown on the depictions of the article and specified on the list of the essential features of the industrial design

3. What are patentability conditions?

An industrial design shall be granted legal protection if it is new and original.

4. Disclosure of information?

Disclosure of information that otherwise would affect the patentability of the industrial design claimed in the application shall not do so where the information was disclosed, during the six months preceding the date of filing of the application with the Federal Executive Body in the Field of Intellectual Property, by the author, the applicant or by any person having obtained the information directly or indirectly from them. The burden of proof of the foregoing shall be on the applicant.

5. What may be patented as Designs?

The following subject matter shall be granted legal protection as industrial design: an artistic and technical solution of an industrially manufactured or handcrafted article, defining its outward appearance.

6. What may not be patented as Designs?

The following shall not be recognized as patentable industrial designs:

- solutions that are determined exclusively by the technical function of an article;
- solutions that relate to architectural works (with the exception of minor architectural forms) and industrial, hydraulic and other stationary structures;
- subject matters of unstable shape made of liquid, gaseous and dry substances and the like;
- articles that are contrary to the public interest, humanitarian principles or morality.

7. Who is a Design Author?

A natural person whose creative work resulted in the industrial design shall be recognized as the author thereof.

8. Who may be a Patent Owner?

A patent shall be granted to: - the author of the invention, utility model or industrial design; - the employer in the cases provided for in point 2 of this Article; - the successors in title of the indicated persons.

9. What consitutes an infringement of the Patent Owner rights?

No other persons have the right to use a patented industrial design without authorization of the patent owner, in particular, to perform the following actions, except for the cases when such actions, according to the Patent Law, do not constitute an infringement of the exclusive right of the patent owner

10. Non-use and consequences?

Where a patent owner or the persons, to whom the patent rights were assigned, have failed to use or has insufficiently used a patented industrial design within a four-year period from the date of the patent grant, which causes insufficient supply of the respective goods or services on the market, any person who wishes and is ready to use the patented industrial design shall have the right, subject to the patent owner's refusal to conclude a license contract on the terms as per customary practice, to take a legal action against the patent owner, claiming the grant of a non-exclusive compulsory license to use such an industrial design on the territory of the Russian Federation, specifying in the claim the proposed license contract terms, including the scope of use as well as the amount, scheme and schedule of payments. Where the patent owner fails to prove that non-use or insufficient use of the industrial design was due to a legitimate reason, the court shall make a decision to grant the license specifying the terms of the license contract. The sum of the payments shall not be less than the value of a license, usually determined under comparable circumstances. The validity of the non-exclusive compulsory license may be terminated judicially at a request of the patent owner provided that the reasons that caused the grant of such license cease to exist and they are not likely to come to existence again. In this case the court shall establish the scheme and time for cessation of the rights arising out of the non-exclusive compulsory license with regard to the person to whom that license was granted.

11. Assignment of a Patent, Compulsory registration?

A patent owner may assign the exclusive right to an industrial design (to assign a patent) to any natural or legal person. An agreement of assigning the exclusive right (patent assignment agreement) shall be registered with the Federal Executive Body in the Field of Intellectual Property, failing which it shall be deemed null and void.

12. Inheritance of a Patent?

The industrial design patent and also the right to obtain the same shall be transferable by succession.

13. What does not constitute an infringement of the Patent Owner rights?

The following acts shall not be recognized as infringement of the exclusive rights of the patent owner: - the use of an article where an industrial design is used, in the construction, in the equipment or in the operation of a transport means of foreign countries (sea vessels, aircrafts, vehicles or railroad transport or space ships), provided that these transport means entered the territory of the Russian Federation on a temporary basis or accidentally and the said product or article is used exclusively for the needs of the transport means. Such action shall not be recognized as infringement of the exclusive rights of the patent owner with regard to the transport means of the foreign countries affording reciprocal rights with regard to the transport means registered with the Russian Federation; - the scientific research of an article incorporating a patented industrial design, conducting experiments on this product, process or article; - the use of the patented industrial designs in cases of emergency (natural disasters, catastrophes, accidents) while promptly advising the patent owner of such use and further paying him an equitable compensation; - the use of a patented industrial design for satisfying private, family, household needs or other needs, provided that they are used for not profit making purposes; - import into the territory of the Russian Federation, use, offer for sale, sale, any other form of marketing or storage for said purposes of an article incorporating a patented industrial design, provided that this product or article had been earlier marketed on the territory of the Russian Federation by the patent owner or by another person authorized by the patent owner.

14. Right of a prior User?

Any person, whether a natural person or a legal entity, who, before the priority date of the patented industrial design and independently of the inventor, had conceived and was using in good faith in the territory of the Russian Federation a solution similar to the patented industrial design or was making the necessary preparations for such use, shall have the right to proceed with that use free of charge, provided that the scope thereof is not extended. The right of the prior user may only be transferred by the said prior user to another natural person or legal entity together with the production unit in which the use or the necessary preparations for use have been made.

15. License Agreement, Compulsory registration?

Any natural person or legal entity, which is not a patent owner, shall have a right to use a patented industrial design upon authorization from the patent owner (on the basis of a license contract). Under a license contract the patent owner (the licensor) grants, within the limits specified in the contract, the right to use the patented industrial design to another person (the licensee) and the latter undertakes to pay the licensor the amounts and (or) perform other acts stipulated in the contract. An exclusive license contract affords the licensee the right to use the industrial design within the limits specified in the contract, beyond which the licensor retains the said right; a non-exclusive license allows the licensor, while granting the licensee the right to use the industrial design, to retain all the rights deriving from the patent, including the right to grant licenses to third parties.

16. Concession of an open License?

A patent owner may file with the Federal Executive Body in the Field of Intellectual Property a statement to the effect that he undertakes to grant the right to use his industrial design to any person (open license). In this case the maintenance fee shall be reduced by 50% as from the year following the year of publication by the Federal Executive Body in the Field of Intellectual Property of the particulars of this Statement. The person wishing to use said industrial design shall conclude an agreement on payments with the patent owner. Where the patent owner has not received offers in writing to conclude such agreement on payments within two years as of the date of the publication he may file a request with the Federal Executive Body in the Field of Intellectual Property to withdraw the statement. The maintenance fee, in this case, shall be complemented to be fully paid for the period from the publication date, and shall be paid in full amount afterwards. The Federal Executive Body in the Field of Intellectual Property shall publish a notification of the statement withdrawal.

17. Responsibility for an unlawful use of the patented Design?

A patent owner shall have the right to demand:

- cessation of patent infringement;
- compensation of the imposed losses by the infringer according to the civil legislation;
- publication of the court decision for the purposes of protection his business reputation;
- realization of other measures protecting his rights as provided for by the legislation of the Russian Federation;
The exclusive licensee may also bring an action against the infringer of the patent, except where the license contract provides otherwise.

18. Who is entitled to file a Design Application?

An application for the grant of a patent for industrial design shall be filed with the Federal Executive Body in the Field of Intellectual Property by a person who has a right to a patent according to this Law (hereinafter referred to as the applicant). All correspondence with the Federal Executive Body in the Field of Intellectual Property may be carried out by the applicant, patent owner or any other interested person directly or through a patent attorney registered with the Federal Executive Body in the Field of Intellectual Property, or through other representative.

19. When representation of the Patent Attorney is necessary?

Natural persons residing outside the territory of the Russian Federation, or foreign legal persons or their patent attorneys shall correspond with the Federal Executive Body in the Field of Intellectual Property through patent attorneys registered with the Federal Executive Body in the Field of Intellectual Property. The natural persons residing outside the territory of the Russian Federation or foreign legal persons may file applications, pay patent fees and make other transactions directly in accordance with an international treaty, to which the Russian Federation is a party, provided that such actions are stipulated by said treaty.

20. Design Application requirements?

The industrial design application shall contain:

- the request for the grant of a patent, stating the name of the author or authors of the industrial design and the person (or persons) in whose name the patent is sought, and the addresses of their residences or places of business;
- a set of depictions of the article, providing full and detailed views of its outward appearance;
- a general view drawing of the article, its ergonomic diagram, assembly diagram where indispensable for the understanding of the disclosure of the industrial design;
- a description of the industrial design;
- a list of essential features of the industrial design.

The industrial design application shall be accompanied by proof of payment of the prescribed patent fee or of circumstances affording entitlement to exemption from payment of the patent fee, or to a reduction of its amount or to a postponement of the payment. The filing date of the industrial design application shall be the date of receipt by the Federal Executive Body in the Field of Intellectual Property of the application, containing a request for the grant of a patent, a set of depictions, a description and a list of the essential features of the industrial design, or the date of receipt of the latest of the mentioned documents, if the documents were filed on different dates.

21. How a Priority is determined?

The priority of an industrial design shall be determined by the date of filing of the application with the Federal Executive Body in the Field of Intellectual Property. The priority of an industrial design may be determined by the filing date of the first application in any State party to the Paris Convention for the Protection of Industrial Property (hereinafter referred to as the Convention priority) provided that the industrial design application has been filed with the Federal Executive Body in the Field of Intellectual Property within six months, from said date. Where an application claiming Convention priority cannot, for reasons beyond the applicant's control, be filed within the prescribed time limit, the latter may be extended for a period not exceeding two months. See also Art .20 of the Russian Patent Law.

22. What a formal examination establishes?

An industrial design application filed with the Federal Executive Body in the Field of Intellectual Property shall be subjected to a formal examination to ascertain the presence of the documents as per Art. 18(2) of the Patent Law and to verify that these documents meet the established requirements.

23. What a substantive examination establishes?

In the case of a favourable result of the formal examination, the industrial design application shall be subjected to a substantive examination, which includes verification of the compliance of the claimed industrial design with the criteria of patentability as established by Article 6 of the Patent Law. When carrying out the formal examination and the substantive examination of the industrial design points 2, 3, 4, 5, 8, 9, 11 and 12 of Article 21 of the Patent Law shall be applicable.

24. Where the formal and substantive examination's decisions may be appealed to?

Where the applicant does not agree with the decision to refuse to grant a patent, with the decision to grant a patent or with the decision to withdraw the application, the applicant may file a respective objection with the Chamber of Patent Disputes of the Federal Executive Body in the Field of Intellectual Property (hereinafter referred to as the Chamber of Patent Disputes) within six months following the date of receipt of such decision or the documents cited in the notice of opposition, provided they were requested at the Federal Executive Body in the Field of Intellectual Property within two months following the date of receipt by the applicant of the decision made on the invention application.

25. Provisional legal protection?

The provisions of point 3 of this Article shall apply to industrial designs as of the date of receipt by the user of the applicant's notification to the effect that he has filed the application for the grant of a patent if said date is earlier than the date of publication of the particulars of the invention application, and earlier than the date of publication of the particulars of the patent grant in respect of utility models and industrial designs.

26. When the publication of the granted Patent are to be published?

The Federal Executive Body in the Field of Intellectual Property shall publish the particulars of the patent grant in the Official Gazette. The publication shall include the following information: name of the inventor (or inventors), unless he has (they have) waived his (their) right to be identified as such, name of the patent owner, the title and claims of the invention or utility model or a set of the essential features of the industrial design and a representation thereof. The full list of the published particulars shall be determined by the Federal Executive Body in the Field of Intellectual Property.

27. On which conditions the granted Patent may be invalidated?

A patent for industrial design may be revoked entirely or in part at any time during its period of validity in the following cases:

1) the patented industrial design do not meet the patentability criteria established by this Law;
2) the list of the essential features of the industrial design, as contained in the decision of patent grant, include elements that did not appear, on the filing date of the application, in the description of the invention or utility model and in the claims of the invention or utility model, if the application contained the claims on its filing date, or in the depictions of the article.
3) the patent was granted, whereas there were several applications for similar industrial designs, having the same priority date, breaching the conditions indicated in Article 19(7) of this Law.
4) the patent was granted, where a person who, according to this Law, is not an author or a patent owner, was indicated as such, or where a person who, according to this Law, is an author or a patent owner, was not indicated as such.

28. How to contest the granted Patent?

A patent for industrial design shall be revoked entirely or in part on the basis of a decision made as per the notice of opposition filed according to point 2 of this Article or on the basis of a court decision that came into force, including the court decision resulting from adjudgement arising from the grounds indicated in point 1(4) of Art. 29 of the Patent Law. The patent for industrial design that has been revoked entirely or in part shall be cancelled. Where the patent is revoked in part a new patent shall be granted.

29. When a Patent validity may be terminated prematurely?

Validity of a patent for industrial design shall expire prematurely:

- at the request of the patent owner filed with the Federal Executive Body in the Field of Intellectual Property, as of the date of receipt of such request. Where the patent is granted for a group of industrial designs and the request filed by the patent owner does not cover the whole group the patent validity shall only be terminated with respect to the industrial designs indicated in the Statement;
- in the event of failure to pay the annual maintenance patent fee for an industrial design within the prescribed time limit, - as of the date of expiration of the prescribed time limit for the annual maintenance patent fee payment.

30. Settlement of the disputes in the Court proceedings?

The following disputes shall be settled through court proceedings:

- on the authorship of an invention, utility model or industrial design;
- on the identification of the patent owner;
- on infringements of the exclusive right to an invention, utility model or industrial design;
- on the conclusion and execution of agreements of assignment of exclusive rights (assignment agreements) and license contracts for the use of an invention, utility model or industrial design;
- on the right of the prior user;
- on the right of the subsequent user;
- on the amount, terms and the scheme of payment of the remuneration in accordance with this Law to the author of an invention, utility model or industrial design;
- on the amount, terms and the scheme of payment of the compensations under this Law;
- other disputes arising out of the patent rights protection.

31. When the International treaties shall apply?

Where an international treaty to which the Russian Federation is party contains provisions different from those specified in this Law, the former shall prevail.