Patent strategies for foreign companies
A timely and comprehensive patent strategy can contribute substantially to a foreign company's success in the Russian market. If a foreign company sees itself as an active and long-term market player in Russia and has intellectual property that may be used there, it cannot afford to ignore the issue of patent rights. Otherwise, it risks losing its market and, at worst, may face infringement challenges as a result of the misappropriation of its rights in Russia.
The first step for such a company is to find a Russian patent attorney or patent agent who does not handle patent matters for its competitors - this should ensure that the company does not become an 'unlucky' secondary client. Companies should weigh the possible advantages of working with reliable and experienced firms with a good reputation in this field, and should be aware that less established firms may offer attractive prices, but may lack relevant experience.
When developing a new product that will be sold in Russia, it is vital to perform 'freedom to operate' investigations in order to gain an accurate picture of the risks associated with third-party rights. Unfortunately, most companies ignore this form of analysis - a serious mistake that can destroy a business.
Not all technical solutions can be protected under the Patent Law. Russian law recognises three forms of patent:
Patents for inventions serve to protect products and methods. Use of a known product or method in respect of a novel function can also be protected.
Patents for utility models protect devices only. Methods cannot be protected in this way.
Patents for industrial designs protect the appearance of articles or devices.
The law excludes the following from patent protection:
human cloning techniques;
techniques for modifying the genetic qualities of human embryo cells;
the use of human embryos for industrial and commercial purposes; and
other developments that are inconsistent with the public interest or humane and moral principles.
The following cannot be considered inventions if they are the sole object of an independent claim in a patent application for an invention (eg, if they are the only element distinguishing the claimed invention from prior art):
scientific theories and mathematical methods;
solutions that are limited to the appearance of articles and are intended to serve a purely aesthetic purpose;
the rules or methods of games or intellectual or economic activities;
- computer programs; and
- solutions consisting solely of the presentation of information.
The law provides for a number of exceptions to patentability. The following cannot be protected as inventions:
- plant varieties, animal breeds and the biological methods of producing them, except for microbiological methods and products produced by such methods; and
- integrated circuit layout designs.
The following cannot be protected as utility models:
solutions that are limited to the appearance of articles and serve a purely aesthetic purpose; and
integrated circuit layout designs.
The following cannot be protected as industrial designs:
solutions that are due exclusively to the technical function of an article;
architectural objects (except for small architectural forms), industrial or hydraulic engineering constructions or other immovable structures; and
unstable fluids, gases or free-flowing or similar substances.
Patent protection can be sought for any object not listed above, under one or more types of patent. The most popular type is the patent for invention. Patents for utility models and industrial designs are not widely used for a number of reasons - primarily because these options are less well known and understood.
Duration of patents
A patent for a utility model is valid for a maximum of 13 years and may help to protect practically any modification and improvement of a known device (or a known product that can be considered a device) - some food and pharmaceutical products also qualify.
A patent for an industrial design is valid for a maximum of 25 years and may help to protect the appearance of almost any original article, device or product. Industrial designs are commonly used to protect consumer goods - they have broad application for packaging, the appearance of electronic devices, food products and the shape of original elements that are used to repair or refit a main device (eg, components for cars).
Russia has two patent systems for inventions: national and regional. The regional patent system is based on the Eurasian Patent Convention 1995, which enables one Eurasian patent to cover the nine members of the Commonwealth of Independent States (CIS). Russia is a member state of the convention.
Russian and Eurasian patents for inventions can be obtained to protect an invention in Russia, but use of a patented invention and patent infringement must be considered according to national patent law. Utility models and industrial designs are not covered by the convention and can be protected only under national patent law.
A patent application for an invention must be considered in terms of the patentability requirements of novelty, inventive step and industrial applicability. Of these, inventive step is the most frequent cause of problems. Under the Patent Law, an invention is regarded as meeting the requirement for inventive step if no prior art has been revealed whose features coincide with the distinguishing features of the application, or if such solutions have been revealed, but there is no proven anticipation of the claimed technical effect of the distinguishing features.
The inventive step criterion is analysed in three stages:
revealing the closest prior art document;
choosing the features of an independent claim that are distinguishing features and analysing their technical effect; and
revealing prior art documents in respect of the distinguishing features and technical effect.
If the distinguishing features or their technical effect are not known from prior art, the invention meets the inventive step requirement. Obviousness must be proved by prior art information that has been published or otherwise publicly disclosed.
The features of dependent claims may be used to amend the corresponding independent claim in an invalidation action if:
such amendments allow a new patent to be granted; and
the Chamber for Patent Disputes - the administrative body dealing with invalidation actions against patents and trademarks in Russia - does not reject the amendments (eg, if the amendments cannot make the amended invention patentable).
Thus, it is advisable to protect an invention (and a utility model) using several dependent claims, which may help to obtain a new patent in the event of an invalidation action. Furthermore, it is advisable to make an initial determination of the technical effect of the claimed invention based on its distinguishing features in order to increase the chances of obtaining and preserving a patent.
Russian patents for industrial designs are substantially different from those in most other jurisdictions. The scope of patent protection for an industrial design is defined by images and essential features characterising the design's appearance.
The Patent Law provides that an industrial design is deemed to be used in a product if the product contains all the essential features of the industrial design set forth in the drawings and identified in the list of essential features. A person or legal entity using a patented industrial design without the patent owner's consent is considered a patent infringer.
Therefore, Russian industrial designs must contain both drawings and a list of essential features. Precisely defining the correct scope of essential features is vital, as any superfluous features in the list may reduce the effectiveness of the exclusive right. In order to demonstrate patent infringement, all features on the list must be identifiable in the infringing product; therefore, the absence of any one feature will result in a finding of non-infringement. The 'confusing similarity' criterion (as applied to trademarks) does not apply to patent infringement relating to industrial designs.
As regards inventions and utility models, the doctrine of equivalents can be used for the features of granted claims for invention or utility models in the event of infringement.
The average waiting time for the Patent Office's first action in respect of an application for an invention is 10 to 12 months from the beginning of the substantive examination, compared with four to six months for a utility model and six to eight months for an industrial design.
Patent applications filed under the Patent Cooperation Treaty (PCT) procedure must enter Russian (ie, national) or Eurasian (ie, regional) phases within 31 months of the earliest priority date. A PCT application filing date is considered a national/regional filing date.
Power of attorney is not required if a patent application is filed by a registered Russian patent attorney. This provision helps to simplify the filing procedure.
A request for a substantive examination of a claimed invention must be filed within three years of the filing date. This term can be reinstated within 12 months if it is missed.
Patent applications for inventions are considered by Russian patent examiners according to the field of invention. The examiner performs an information search to determine whether the claimed invention meets the patentability requirements. The applicant may be requested to provide additional information and comments to demonstrate patentability.
The claims and the list of essential features may be amended at any time - and any number of times - during examination, but amendments should be supported by the original description or claims (for an invention) and by the original drawings (for an industrial design).
Depending on the results of the examination, the applicant receives a decision to grant a patent or a refusal, if an invention or industrial design fails to meet one or more of the patentability requirements. The latter decision may be appealed before the Chamber for Patent Disputes and subsequently in court.
One or more divisional patent applications may be filed before the patent is registered or while a refusal remains subject to appeal. Amendments regarding obvious technical mistakes can be made at any time - for example, the Russian translation can be corrected during the examination and during the patent's term of validity. Amendments concerning the patent holder, addresses or representatives must be registered, along with the assignment deed and licence agreements.
A patented invention, utility model or industrial design may not be used without permission. In the event of patent infringement, civil, criminal and administrative proceedings are available.
Russia does not have a specialist patent court. Patent infringement claims are heard by the civil courts (for individuals) or by arbitrazh (ie, commercial) courts (for commercial organisations). However, a dedicated IP court may start work as early as 2012.
The law provides that a patent holder is entitled to apply to a court to seek termination of the unauthorised use of a patented invention, utility model or industrial design, and to demand compensation for damage caused by the infringement of an exclusive right.
A patent infringement claim must be filed with the court in the place of the defendant's domicile. Civil proceedings in Russia do not provide for 'discovery' as the term is understood in the United States, for example. Thus, the evidence collected before filing an action must be as complete as possible. A party to a trial may file a motion for the provision of evidence which, if the judge grants such motion, may help to obtain additional evidence that the party is otherwise unable to obtain
Evidence must be submitted to confirm the patent infringement and the fact that it involves commercial use (eg, advertising, selling, offering for sale or storing the allegedly infringing product). Written evidence, material evidence, oral arguments, expert conclusions, testimony, audio and video records and other documents and materials can be used as evidence. However, evidence must be legally obtained and must relate directly to the case.
The judge weighs evidence based on his or her analysis. One of the main pieces of evidence in a patent infringement case is the opinion of a court-appointed expert. As the judges who consider patent infringement cases are not technical experts, they usually rely heavily on such opinions. The parties provide the court with lists of expert candidates and questions; the court is responsible for deciding which expert or experts to appoint for the examination.
An interim or preliminary injunction may be sought, but Russian courts rarely grant such petitions in patent cases due to the potentially substantial losses that a defendant may incur and the unpredictable results of the case - for example, the claims may be rejected or the patent may be nullified or invalidated. As such, the courts tend to believe that the balance of hardship in such cases should favour the defendant.
It usually takes around six months to obtain a first instance judgment, as patent cases typically rely on forensic examination by independent patent experts to prove or refute the patent infringement claim. After the first court judgment has been handed down, an appeal can be filed with an appellate court, potentially followed by a cassation appeal with a federal court, which usually extends the timeframe by an additional six months. Thus, a patent infringement case may be finally resolved within 12 months, but the total period is often longer and depends on various factors.
The courts do not formally rely on case law, but judges often use available precedents and Supreme Court recommendations. Forensic examination is commonly used in patent infringement cases and the outcome of litigation depends directly on the results of the expert's conclusions.
Article 147 of the Criminal Code provides that illegal use of an invention, utility model or industrial design that results in gross damage is punishable by:
a fine of up to Rb200,000 or an amount equal to the defendant's salary or other income for up to 18 months;
compulsory works for a term ranging from 180 to 240 hours; or
up to two years' imprisonment.
If an organised group or conspiracy is responsible for such illegal use, it is punishable by:
fines of between Rb100,000 and Rb300,000 or an amount equal to the defendant's salary or other income for between one and two years;
between four and six months' arrest; or
up to five years' imprisonment.
As a rule, criminal liability may attach to individuals - for example, to the officer or director of an entity responsible for the unauthorised use of an invention, utility model or industrial design. For this category of offence, 'gross damage' is not defined by the Criminal Code (unlike the criminally punishable 'unauthorised use of copyright or trademarks'). As such, the determination of gross damage is fully within the discretion of the criminal investigation authorities and the courts. In general, use of a product covered by a patent, on a commercial scale, is likely to be recognised as having caused substantial damage to the owner of the patent in question.
In order to put pressure on infringers, a patent owner may seek to initiate a criminal case; if it is initiated, the police may seize all infringing products. The law enforcement authorities are reluctant to investigate IP infringement activities from scratch and prefer rights owners to present them with a basis of information and evidence. Private investigators may prove useful in obtaining the necessary information. Regular contact should be maintained with the enforcement authorities.
After collecting all necessary information regarding the alleged infringer and its infringing activity, a cease and desist letter should be sent to request cessation of the use of the patented invention, utility model or industrial design. If the alleged offender does not desist, the letter may be used in court to prove that the defendant knowingly and intentionally carried out its activities in violation of the IP right - a necessary condition of building a criminal case. Cease and desist letters in Russia are generally similar to those used in other countries.
The advantage of a criminal case is that - with the exception of the evidence collection process - the law enforcement authorities run the case, making it typically less expensive than a civil case. Moreover, the threat of criminal prosecution is a greater deterrent that any other type of legal proceeding. The disadvantage is that the patent owner yields control of the action. The enforcement authorities do not disclose information about the case to other parties until the case is ready to go to court. The investigation phase may last 12 months or more, during which time the patent owner is left uninformed. In practice, criminal IP cases are unusual and are brought more frequently by patent trolls against large companies than in normal circumstances.
Article 7.12(2) of the Code of Administrative Offences provides for the imposition of administrative fines for the illegal use of an invention, utility model or industrial design. Fines range from:
Rb1,500 to Rb2,000 for individuals;
Rb10,000 to Rb20,000 for officers of legal entities; and
Rb30,000 to Rb40,000 for legal entities.
Generally, administrative liability may be imposed on both a legal entity and the director or officer of the entity who was responsible for unauthorised use. However, this is unlikely to be a serious disincentive, given the relatively small fines involved.
Article 14.33 of the code governs acts of unfair competition involving the introduction into commercial circulation of goods that make illegal use of the results of intellectual activity or the related means of individualisation, including illegal use of an invention. Such illegal use is punishable by:
an administrative fine of Rb20,000 or disqualification for up to three years (in the case of an officer or director of a legal entity); or
up to 15% of the turnover of a company relating to the creation of the relevant goods (or the provision of the relevant works or services).
The civil enforcement option is likely to prove the most effective remedy against patent infringement in most cases, as a civil claim typically allows the claimant to retain the greatest control over the process. However, much may depend on the details of the case, and proceedings on the basis of criminal and administrative liability may be important avenues for the protection of business interests in Russia.