True or False? Design Protection in Russia and Eurasia22 September 2022
Based on numerous publications in the media one may conclude that the IP rights of foreign companies are no longer protected in Russia and existing IP rights will be unenforceable. Of course, this is not the case and it does not correspond to reality at all.
Intellectual property in Russia is not “cancelled" and there are no restrictions for foreign applicants in connection with the filing of applications for registration of designs patents, trademarks and invention patents, or for foreign right holders to perform actions to maintain protected intellectual property rights.
Most of misconception comes from wrong translation and wrong understanding of legal acts adopted by the Russian President and Russian Government during the first half of the year. Besides, the Office of Foreign Assets Control ("OFAC") of the US Department of Treasury added fuel to the flames since it de facto prohibited certain payments (taxes, fees, etc.) in favor of the Russian Patent Office as it involves the Russian Central Bank into transactions. The sunset provision was introduced by OFAC’s General License 13 issued on March 2, 2022 which authorized such payments for a limited time through 12:01 a.m. eastern daylight time, June 24, 2022.
On May 25, 2022 OFAC issued a soothing new GL13A that replaced and superseded in its entirety GL13 and prolonged the authorization for payments by eastern daylight time, September 30, 2022, which, however, still creates uncertainty by establishing the said time limits.
In the meantime, the most promising GL31 was issued on May 5, 2022 by OFAC that specifically authorized transactions related to intellectual property, namely:
- The filing and prosecution of any application to obtain a patent, trademark, copyright, or other form of intellectual property protection;
- The receipt of a patent, trademark, copyright, or other form of intellectual property protection;
- The renewal or maintenance of a patent, trademark, copyright, or other form of intellectual property protection; and
- The filing and prosecution of any opposition or infringement proceeding with respect to a patent, trademark, copyright, or other form of intellectual property protection, or the entrance of a defense to any such proceeding.
This new GL31 does not establish specific time limits for payments that indicates OFAC encourages business to take all necessary actions to register, maintain and protect their intellectual property rights in Russia.
The mentioned circumstances are especially relevant for the proper registration and protection of exclusive rights to designs because failure to timely filing of an industrial design application will result, in particular, to the loss of the opportunity to claim conventional priority on the basis of first filing in one of the Member-States to the Paris Convention for the Protection of Industrial Property, as well as to the loss of novelty (if a design application is filed more than 12 months after the disclosure of information about design).
In turn, the lack of proper protection of an industrial design, as well as other intellectual property rights, can have most negative consequences for foreign companies, since such a situation can provoke potential infringers to use the intellectual property of third parties without the possibility of effective counter-actions. If business decides to leave the market or suspend business activity in the country the IP rights remain the sole instrument that could help fighting against counterfeits, copycats and other infringements.
There are three main ways to obtain registration for exclusive rights to an industrial design in Russia, namely: filing a national design application, filing an international design application through the Hague System and filing a Eurasian design application.
National design application
An application for the national industrial design patent must be filed with the Russian Patent Office. It should be noted that the design of both, an integral or composite product, and an independent part of the product can be protected as an industrial design. In addition, legal protection may also be granted in relation to a group of products that form a single creative concept and constitute a set. Within the framework of one design application, legal protection may be granted for variants of a design that differ in insignificant features and / or features that determine the combination of colors (provided that all industrial designs of the group belong to the same class of the International Classification of Industrial Designs).
When filing a design application as an image of a product for which legal protection is sought, it is allowed to submit a 3D model of the product in electronic form (in STEP, U3D, PRC, OBJ or STL formats). The advantage of submitting a 3D model is the ability to display all the essential features of an industrial design based on a single image.
At the same time, presentation of two-dimensional images does not lose its relevance, since in this case the applicant can choose the views of representation of the design, display options for transforming the product (if legal protection is requested for several types of product transformation), and also apply a dotted line to display on the image of the product those parts (elements), the legal protection of which is not claimed.
Crucial features of the national procedure for patenting industrial designs in Russia:
- procedure includes both, formal examination of the application and a substantive examination conducted by the Russian Patent Office, in particular, the examiner checks the claimed design for compliance with such patentability criteria as novelty and originality;
- low official fees (moreover, the amount of official fees is reduced by 30% in case of electronic filing);
- electronic interaction with the applicant during the procedure, the issuance of a patent in electronic form (a patent on paper can be still issued at the request of the applicant);
- possibility of submitting a 3D model as an image of an industrial design.
An international design application
Another option for obtaining a legal protection for design in Russia is filing an international design application through the Hague System for the International Registration of Industrial Designs, indicating Russia as the country where the applicant wishes to obtain legal protection.
By designating Russia in an international design application as the country where the applicant wishes to obtain the design protection, one should keep in mind some peculiarities taking into account the declarations that the Russian Federation made when joining the Hague system.
Some features that you need to pay attention to:
- Russian law does not provide for deferment of publication of a design application, therefore, where the Russian Federation is designated in an international design application, it is not possible for an applicant to request the deferment of publication of the international registration;
- Russian law provides for the requirement of unity in relation to a group of industrial designs claimed in one design application; industrial designs of the group must meet the condition of single creative concept, that is, they must be a set of articles or variants of the design differing in insignificant features and / or features that determine the combination of colors;
- where a conventional priority claim was made in the international design application, the applicant must submit to the Russian Patent Office a certified copy of the first application in the original within three months from the date of publication of the international design application (currently the Russian Patent Office accepts electronic certified copies of the first applications issued by WIPO or EUIPO);
- change in ownership of an international design registration in the International Register shall not have effect in the Russian Federation until the applicant submits documents confirming the change to the Russian Patent Office.
Eurasian design application
The Eurasian design protection system is based on the Protocol on Protection of Industrial Designs to Eurasian Patent Convention (EAPC) entered into force in March, 2021.
The applications for Eurasian industrial designs (EAID) are accepted starting from June 01, 2021 and are to be filed with the Eurasian Patent Office (EAPO).
The EAID patent provides a unified protection in all countries where the Protocol entered into force, no additional validation by national Patent Offices is made (actually, the Protocol is valid for the following seven countries: Armenia, Azerbaijan, Belarus, Kyrgyzstan, Kazakhstan, Russia, Tajikistan).
The registration procedure (from filing Eurasian design application till publication of the granted Eurasian Patent) takes about 6-8 months (in case no opposition is filed) and the granted patent shall be valid within 25 years.
Crucial features of the Eurasian design protection system:
- application can include up to 100 designs in one application, provided they all belong to one and the same class of Locarno International classification;
- EAPO acceded to the WIPO DAS system and starting from December 01, 2021 the priority documents can be lodged using the DAS codes;
- application is published for opposition purposes in case the results of preliminary examination are positive (no deferment of publication provided);
- limited ex-officio substantive examination (in particular, novelty and originality of the claimed solution will be checked by the Eurasian Examiner only in case an opposition is filed by a third party after publication and only within the scope of information and materials submitted with the opposition);
- cost-effectiveness (in particular, the amount of official fees for filing, examination and registration/publication are lower than the official fees to be paid in case of use of the Hague system of international registration of Industrial Designs for the same designated countries);
- temporary legal protection is granted for the period starting from the publication of EAID application till publication of EAID patent and it is valid for the territory of all Member States;
- in case of refusal to grant a Eurasian patent for industrial design there is still the possibility to transform the Eurasian application into a national application in the Member State(s) per choice of the applicant;
- assignment of EAID patent is possible only in respect of all ofmber States where the EAID patent is valid.
The current geopolitical situation does not in any way affect the procedure of obtaining legal protection for industrial designs in Russia, so that any of the above three options for obtaining legal protection for designs are available. At that, applicants from foreign countries continue to be enjoy the same rights to obtain patents for industrial designs, as well as enforce other intellectual property rights, as provided to national applicants.
It should be noted that obtaining a patent for an industrial design shall allow the right holder to prevent others from selling the products with identical or similar design, including copycats. Moreover, according to the Russian law the right holder shall have the right to claim at his choice damages or statutory compensation from the infringer for the illegal use of the patented design.
In order to ensure more efficient protection of the design rights in Russia a temporary legal protection for the industrial design was introduced in the Russian Civil Code in 2018 and according to Article 1392 of the Civil Code a temporary legal protection shall be granted to the extent determined by the combination of the essential features of the industrial design reflected in the published design application from the date of publication of the application up to the date of publication of the granted patent, but not to exceed the extent determined by the combination of the essential features of the industrial design reflected in the published design application. A person who uses the claimed industrial design during the temporary legal protection period shall pay a monetary remuneration to the patentee after the patent is granted.
In the light of the above it seems reasonable to continue taking necessary actions for obtaining and maintaining legal protection and enforcement of industrial designs in Russia independently of the current business challenges and environment, otherwise counterfeit or copycat products can substitute genuine one on the market and the producer of the genuine product will have no legal options to prevent this.