Offices & Countries / Russia / Inventions / FAQ

	Inventions Official Fees Filing requirements FAQ

1. How long an Invention Patent is valid?

An invention patent shall be valid till expiration of the 20th year from the date of filing of the application with the Federal Executive Body in the Field of Intellectual Property. The term of an invention patent relating to a medicinal substance, pesticide or agrochemical substance, the use of which requires obtaining a permission through a procedure as established by law, may be extended by the Federal Executive Body in the Field of Intellectual Property at the request of the patentee for the period calculated as the term between the application filing date and the date when the first such permission for use was obtained, reduced by five years. Whereas the extension period shall not exceed five years. The mentioned request shall be filed within the term of the patent before expiration of a six-month time limit from the date of obtaining such permission or from the date of the patent grant, depending on which of these two time limits expires later.

2. What determines the scope of a legal protection?

The scope of legal protection secured by an invention patent or a utility model patent shall be defined by the claims. A description and drawings may be used for interpretation of the invention claims.

3. For which Invention a Patent may not be granted?

No legal protection shall be granted under this Law for inventions containing information that has been declared secret by the State.

4. What are patentability conditions?

An invention shall be granted legal protection if it is new, involves an inventive step and is industrially applicable.

5. Disclosure of information?

Disclosure of information that otherwise would affect the patentability of the invention claimed in the application shall not do so where the information has been 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 inventor or 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.

6. What may be patented as Inventions?

The following shall be protected as an invention: technical proposal in any field, relating to a product (particularly to a device, substance, a microorganism strain, a culture of plant or animal cells) or a process (process of treating a physical object with physical means).

7. What may not be patented as Inventions?

The following, inter alia, shall not be recognized as inventions, within the meaning of this Law:

- discoveries, scientific theories and mathematical methods;
- proposals only concerning the outward appearance of manufactured articles and intended to satisfy aesthetic requirements;
- rules and methods of games, intellectual or economic activity;
- programs for computers;
- proposals only comprising presentation of information;
- In accordance with this point the above listed subject matters can not be recognized as inventions only when an application for invention patent relates to these subjects as such.

8. Who is an Invention Author?

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

9. Who may be a Patent Owner?

A patent shall be granted to:

- the author of the invention;
- the employer in the cases provided for in point 2 of this Article;
- the successors in title of the indicated persons.
10. What consitutes an infringement of the Patent Owner rights?

The patent owner holds the exclusive right to the invention. No other persons have the right to use a patented invention 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.

11. 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 invention 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 invention 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 invention 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 invention 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.

12. Assignment of a Patent, Compulsory registration?

A patent owner may assign the exclusive right to an invention (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.

13. Inheritance of a Patent?

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

14. 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 a product, where a patented invention 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 a product, a process incorporating a patented invention, conducting experiments on this product, process or article;
- the use of the patented inventions 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 invention for satisfying private, family, household needs or other needs, provided that they are used for not profit making purposes;
- occasional preparation of a medicine in a pharmacy in accordance with a medical prescription using a patented invention;
- import into the territory of the Russian Federation, use, offer for sale, sale, any other form of marketing or storage for said purposes of a product incorporating a patented invention, 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.

15. Right of a prior User?

Any person, whether a natural person or a legal entity, who, before the priority date of the patented invention, utility model or 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 invention, utility model or 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.

16. License Agreement, Compulsory registration?

Any natural person or legal entity, which is not a patent owner, shall have a right to use a patented invention 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 invention 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 invention 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 invention, to retain all the rights deriving from the patent, including the right to grant licenses to third parties.

17. 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 invention 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 invention 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.

18. Responsibility for an unlawful use of the patented Invention?

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.

19. Who is entitled to file a Patent Application?

An application for the grant of a patent for invention 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.

20. 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.

21. Patent Application requirements?

The invention application shall contain:

- the request for the grant of a patent, stating the names of the inventor (or inventors) and the person (or persons) in whose name the grant of a patent is sought, and the addresses of their residences or places of business;
- the description, disclosing the claimed invention in sufficient detail for it to be carried out;
- the claims, stating the essential features of the invention and fully supported by the description;
- the drawings or other material, where indispensable for the understanding of the disclosure;
- the abstract.

The invention 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 invention application shall be the date of receipt by the Federal Executive Body in the Field of Intellectual Property of an application, containing a request for the grant of a patent, a description and drawings, in case the latter are referred to in the description, or the date of receipt of the latest of the mentioned documents, if the documents were filed on different dates.

22. How a Priority is determined?

The priority of an invention 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 invention 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 invention application has been filed with the Federal Executive Body in the Field of Intellectual Property within 12 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.

23. What a formal examination establishes?

An invention application, filed with the Federal Executive Body in the Field of Intellectual Property, shall be subjected to the formal examination, wherein the presence of the documents as stipulated by Article 16 (2) of this Law is verified as well as their compliance with the requirements as defined for these documents.

24. When the Patent application's particulars are to be published?

On the expiration of an eighteen-month period from the invention application filing date, provided the formal examination was carried out with a favourable result, the Federal Executive Body in the Field of Intellectual Property shall publish particulars of the invention in the Official Gazette, except when before expiration of the twelve-month period the application was withdrawn or considered withdrawn or registration of the invention took place on its basis according to Article 26 of the Patent Law. The list of the published particulars shall be determined by the Federal Executive Body in the Field of Intellectual Property.

25. What a substantive examination establishes?

The substantive examination procedure shall include the information search with respect to the claimed invention for the purposes of determination of the state of the art and verifying the patentability of the claimed invention as provided for by Article 4 of the Patent Law.

26. 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.

27. Provisional legal protection?

An invention in respect of which an application has been filed shall enjoy provisional legal protection within the scope of the published claims during the period between the date of publication of the particulars of the application and the date of publication of the particulars of the patent grant, but within the scope not exceeding the Claims as presented in the decision to grant a patent for the invention.

28. 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 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.

29. When a Patent application may be converted into an Utility Model one?

Before the publication of the particulars of an invention application, but no later the issue date of the decision to grant a patent for the invention, the applicant shall have the right to convert such application into a utility model application by filing a respective petition, except when a statement provided for by Art. 13(3) of the Patent Law is attached to the application. Conversion of a utility model application into an invention application is allowed before the issue date of the decision to grant a patent, and, where the decision to refuse to grant a patent is made, - before the possibility to file an objection against such decision, as established by the Patent Law, is exhausted.

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

A patent for invention, utility model or industrial design may be revoked entirely or in part at any time during its period of validity in the following cases: 1) the patented invention, utility model or industrial design do not meet the patentability criteria established by the Patent Law; 2) the claims of the invention or utility model, or 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 inventions, utility models or industrial designs, having the same priority date, breaching the conditions indicated in Art. 19(7) of the Patent Law. 4) the patent was granted, where a person who, according to the Patent 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.

31. How to contest the granted Patent?

A patent for invention 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 Art. 29 of the Patent Law 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. The patent for invention that has been revoked entirely or in part shall be cancelled. Where the patent is revoked in part a new patent shall be granted.

32. When a Patent validity may be terminated prematurely?

Validity of a patent for invention, utility model or 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 inventions, utility models or 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 inventions, utility models or industrial designs indicated in the Statement; " in the event of failure to pay the annual maintenance patent fee for an invention, utility model or 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.

33. 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.

34. 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.