Offices & Countries / Russia / Utility Models / FAQ

	Utility Models Official Fees Filing requirements FAQ

1. Validity of utility model patent

A utility model patent shall be valid till expiration of the 5th year from the date of filing of the application with the Russian PTO. The term of the utility model patent may be extended by the Russian PTO at the request of the applicant for the period no more than 3 years.

2. How the scope of a legal protection is determined

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 or the utility model claims.

3. Utility models which can not be granted legal protection

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

4. Patentability conditions

A utility model shall be considered as meeting the criteria of patentability if it is new and industrially applicable.

5. Disclosure of information

Disclosure or information that otherwise would affect the patentability of the utility model 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 Russian PTO, 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. Matters protected as utility model

A technical proposal relating to a device shall be protected as a utility model.

7. Matters NOT protected as utility model

The following shall not be granted legal protection as utility models:

• proposals only concerning the outward appearance of manufactured articles and intended to satisfy aesthetic requirements;
• topographies of integrated circuits;
• proposals that are contrary to the public interest, humanitarian principles or morality.

8. Utility model author

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

9. Who qualifies as a patent owner

A patent shall be granted to:

• the author of the invention, utility model or industrial design;
• the employer (see item 2 Art. 8 of the Patent Law);;
• the successors in title of the indicated persons.

10. How the infringement of patent owner rights is determined

The patent owner holds the exclusive right to the utility model. No other persons have the right to use a patented utility model 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 of non-use

Where a patent owner or the persons, to whom the patent rights were assigned, have failed to use or has insufficiently used a patented utility model within a three-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 utility model 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 utility model 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 utility model 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 patent

A patent owner may assign the exclusive right to a utility model (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 the Russian PTO, failing which it shall be deemed null and void.

13. Inheritance of a patent

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

14. Acts that shall not be recognized as infringement of 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 utility model 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 utility model conducting experiments on this product, process;
• the use of the patented utility models 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 utility model 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 a utility model 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. Rights of prior use

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

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

17. Concession of open license

A patent owner may file with the Russian PTO a statement to the effect that he undertakes to grant the right to use his utility model 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 Russian PTO of the particulars of this Statement. The person wishing to use said utility model 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 Russian PTO 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 Russian PTO shall publish a notification of the statement withdrawal.

18. Responsibility for unlawful use of patented utility model

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 qualifies as an applicant

An application for the grant of a patent for utility model shall be filed with the Russian PTO by a person who has a right to a patent according to this Law (hereinafter referred to as the applicant).

All correspondence with the Russian PTO may be carried out by the applicant, patent owner or any other interested person directly or through a patent attorney registered with the Russian PTO, or through other representative.

20. When representation of 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 Russian PTO through patent attorneys registered with the Russian PTO. 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. Requirements for utility model application The utility model application shall contain:

• the request for the grant of a patent, stating the names of the author (or authors) and the person (or persons) in whose name the patent is sought, and the addresses of their residences or places of business;
• the description, disclosing the claimed utility model in sufficient detail for it to be made;
• the claims, stating the essential features of the utility model and fully supported by the description;
• the drawings, if they are needed for understanding of the essence of the utility model;
• the abstract.

The utility model 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 utility model application shall be the date of receipt by the Russian PTO 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. Determination of priority The priority of a utility model shall be determined by the date of filing of the application with the Russian PTO. The priority of a utility model 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 or the utility model application has been filed with the Russian PTO within 12 months, and in the case of an industrial design application 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 Patent Law. 23. Tasks of examination A utility model application filed with the Russian PTO shall be examined to ascertain the presence of the documents, provided for by Art. 17(2) of the Patent Law, the compliance of these documents with the defined requirements, compliance with the requirement of unity of the utility model and also to verify that the claimed solution may be granted legal protection as a utility model. Verification of the claimed utility model patentability as per the criteria defined by Arti. 5(1) of the Patent Law shall not be carried out. 24. Objections against formal and substantive decisions of examination 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 Russian PTO (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 Russian PTO within two months following the date of receipt by the applicant of the decision made on the invention application. 25. Publication of granted patent The Russian PTO 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 utility model and a representation thereof. The full list of the published particulars shall be determined by the Russian PTO. 26. Invalidation of granted patent A patent for utility model may be revoked entirely or in part at any time during its period of validity in the following cases:

• the patented utility model do not meet the patentability criteria established by the Patent Law;
• the claims of the utility model, 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 utility model if the application contained the claims on its filing date, or in the depictions of the article.
• the patent was granted, whereas there were several applications for similar utility models having the same priority date, breaching the conditions indicated in Art. 19(7) of the Patent Law.
• 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 the Patent Law, is an author or a patent owner, was not indicated as such.

27. Possibility to contest the granted patent A patent for utility model 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 utility model that has been revoked entirely or in part shall be cancelled. Where the patent is revoked in part a new patent shall be granted. 28. Premature termination of patent validity Validity of a patent for utility model shall expire prematurely:

• at the request of the patent owner filed with the Russian PTO, as of the date of receipt of such request. Where the patent is granted for a group of utility models 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 utility models indicated in the Statement;
• in the event of failure to pay the annual maintenance patent fee for a utility model within the prescribed time limit, - as of the date of expiration of the prescribed time limit for the annual maintenance patent fee payment.

29. Settlement of disputes at the court The following disputes shall be settled through court proceedings:

• on the authorship of a utility model;
• on the identification of the patent owner;
• on infringements of the exclusive right to a utility model;
• on the conclusion and execution of agreements of assignment of exclusive rights (assignment agreements) and license contracts for the use of a utility model;
• 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 the Patent Law to the author of a utility model;
• on the amount, terms and the scheme of payment of the compensations under the Patent Law;
• other disputes arising out of the patent rights protection.

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