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Chapter 72. The Patent Law

§ 1. Basic Provisions

Article 1345. Patent Rights

1. Intellectual rights to inventions, utility models and industrial designs are patent rights.

2. The author of an invention, utility model or industrial design owns the following rights:

1) an exclusive right;

2) the right of attribution.

3. In the cases envisaged by the present Code the author of an invention, utility model or industrial design also owns other rights, including a right to obtain a patent, a right to a fee for a service invention, utility model or industrial design.

 

Article 1346. The Effect of Exclusive Rights to Inventions, Utility Models and Industrial Designs on the Territory of the Russian Federation

The following is recognised on the territory of the Russian Federation: the exclusive rights to inventions, utility models and industrial designs certified by patents issued by the federal executive power body charged with intellectual property matters or by patents effective on the territory of the Russian Federation in accordance with international treaties of the Russian Federation.

 

Article 1347. The Author of an Invention, Utility Model or Industrial Design

The author of an invention, utility model or industrial design is the citizen by whose creative labour the relevant result of intellectual activity has been created. Unless otherwise proven, the person mentioned as the author in a patent application filed for an invention, utility model or industrial design shall be deemed the author of the invention, utility model or industrial design.

 

Article 1348. The Co-Authors of an Invention, Utility Model or Industrial Design

1. The citizens who have created an invention, utility model or industrial design shall be deemed co-authors.

2. Each of the co-authors shall be entitled to use the invention, utility model and industrial design at his own discretion, except as otherwise envisaged by agreement between them.

3. The relationships of the co-authors that have to do with the distribution of incomes from the use of the invention, utility model and industrial design and with disposing of the exclusive right to the invention, utility model and industrial design are subject respectively to the rules of Item 3 of Article 1229 of the present Code.

The co-authors shall jointly dispose of a right to obtain a patent to the invention, utility model and industrial design.

4. Each of the co-authors shall be entitled to take measures on his own to protect his rights to the invention, utility model and industrial design.

 

Article 1349. The Objects of Patent Rights

1. The objects of patent rights are the results of intellectual activities in the area of science and technology that meet the requirements established by the present Code as applicable to inventions and utility models, and the results of intellectual activities in the area of design that meet the requirements established by the present Code as applicable to industrial designs.

2. Inventions comprising information constituting a state secret (secret inventions) are covered by the provisions of the present Code, except as otherwise envisaged by the special rules of Articles 1401-1405 of the present Code and the other legal acts enacted in accordance with them.

3. Utility models and industrial designs comprising information constituting a state secret shall not have legal protection in accordance with the present Code.

4. The following shall not be objects of patent rights:

1) human cloning techniques and a clone thereof;

2) the techniques for modifying the genetic integrity of human embryo cells;

3) the uses of human embryos for industrial and commercial purposes;

4) the results of intellectual activities cited in Item 1 of this article, if they go counter to the public interest and humane and moral principles.

 

Article 1350. The Conditions for Patentability of an Invention

1. A technical solution in any area is protected as an invention if it relates to a product (including a device, substance, strain of microorganisms, plant or animal cell culture) or a method (the process of carrying out actions in respect of a material object by material means), in particular, to the application of a product or method for a particular purpose.

An invention is provided with legal protection if it is novel, has an inventive step and is industrially exploitable.

2. An invention is novel if is it not known from the state of the art.

An invention has an inventive step if for a specialist is does not obviously ensue from the state of the art.

The state of the art with respect to invention includes any information that has become available to the public in the world before the priority date of the invention.

When the novelty of an invention is being assessed the state of the art shall also include all patent applications filed for inventions, utility models and industrial designs by other persons in the Russian Federation if they have earlier priority dates and if any person is entitled to read the documents related thereto in accordance with Item 2 of Article 1385 or Item 2 of Article 1394 of the present Code, and the inventions, utility models and industrial designs patented in the Russian Federation.

3. The disclosure of information concerning an invention by the author of the invention, by an applicant or any person that has received this information from them directly or indirectly (in particular, as a result of showing an invention at an exhibition) which made the essence of the invention available to the general public shall not be deemed a circumstance precluding the recognition of the invention's patentability, provided a patent application has been filed with the federal executive power body charged with intellectual property matters within six months after the date of the information disclosure. The burden of proving the existence of the circumstance due to which the information disclosure does not preclude the recognition of the invention's patentability shall be borne by the applicant.

4. An invention is deemed industrially exploitable if it can be used in industry, agriculture, public health and other branches of the economy or in the social sphere.

5. The following shall not be deemed inventions, in particular:

1) discoveries;

2) scientific theories and mathematical methods;

3) solutions concerning only the appearance of articles and aimed at meeting aesthetical needs;

4) the rules and methods of games and of intellectual or economic activities;

5) computer programmes;

6) solutions consisting in the presentation of information only.

In accordance with the present item these objects cannot be deemed inventions only when a patent application for an invention concerns these objects per se.

6. No legal protection shall be provided to the following as inventions:

1) varieties of plants, breeds of animals and the biological methods for producing them, that is, the methods consisting in full of cross-breeding and selection, except for microbiological methods and products made by such methods;

2) integrated circuit layout-designs.

 

Article 1351. The Conditions for the Patentability of a Utility Model

1. A technical solution relating to an apparatus is protected as a utility model.

A utility model is given legal protection if it is novel and industrially exploitable.

2. A utility model is deemed novel if the aggregate of its significant features is not known from the state of the art.

The state of the art in respect of a utility model includes all data that have become generally available worldwide before the priority date of the useful model. The state of the art also includes (upon condition of an earlier priority) all the patent applications filed for an invention, utility model or industrial design by other persons in the Russian Federation if any person is entitled to read the documents related thereto in accordance with Item 2 of Article 1385 or Item 2 of Article 1394 of this Code, and the inventions and utility models patented in the Russian Federation.

3. The disclosure of information concerning a utility model by the author thereof, applicant or any other person that has directly or indirectly obtained this information from them (in particular, as a result of showing the utility model at an exhibition) making information on the essence of the utility model available to the general public shall not be deemed a circumstance precluding the recognition of patentability of the utility model, provided that a patent application for the utility model was filed with the federal executive power body charged with intellectual property matters within six months after the information disclosure. The burden of proving the existence of the circumstances due to which information disclosure does not preclude the recognition of patentability of the utility model shall be borne by the applicant.

4. A utility model is industrially exploitable if it can be used in industry, agriculture, public health and other branches of the economy or in the social sphere.

5. As utility models shall not be deemed, in particular, the objects cited in Item 5 of Article 1350 of this Code.

In compliance with this item, the possibility of classifying the cited objects as utility models shall be only excluded in instances when a patent application for a utility model concerns the cited objects as such.

6. Legal protection as to a utility model shall not be provided to the objects cited in Item 6 of Article 1350 of this Code.

 

Article 1352. The Conditions for the Patentability of an Industrial Design

1. As an industrial design shall be protected the appearance solution of a factory-made or home-made article.

An industrial design shall enjoy legal protection if it is novel and original in terms of its significant features.

Seen as the significant features of an industrial design shall be the features determining the aesthetic details of the appearance of an article, including the form, configuration, decoration, colour and line pattern, the outline of an article, the texture or finish of the material an article is made of.

The features determined solely by the technical function of an article shall not be deemed the protected features of an industrial design.

2. An industrial design shall be deemed novel if the aggregate of its significant features reflected on images of the article's appearance is not known from the information that was made available to the public worldwide before the priority date of the industrial design.

3. An industrial design shall be deemed original, if its significant features are stipulated by the creative nature of the article's features, in particular if it is not known from the data that have become generally available worldwide before the priority date of an industrial design what is the solution of the appearance of an article of similar purpose making upon an informed consumer the same general impression as the industrial design shown on images of the article's appearance.

4. When the novelty and originality of an industrial design is being established, account shall also be taken (upon condition of an earlier priority) of all the applications for inventions, utility models and industrial designs and applications for the state registration of trademarks and service marks filed in the Russian Federation by other persons and with whose documents any person is entitled to be familiarised in compliance with Item 2 of Article 1385, Item 2 of Article 1394 and Item 1 of Article 1493 of this Code.

The disclosure of information about an industrial design by the author thereof, an applicant or any person that has directly or indirectly received this information from them (in particular as a result of showing an industrial design at an exhibition) which made information on the essence of the industrial design available to the general public shall not be deemed a circumstance precluding the recognition of patentability of the industrial design, provided that a patent application for the industrial design was filed with the federal executive power body charged with intellectual property matters within 12 months after the information disclosure. The burden of proving the existence of the circumstances due to which the disclosure of information does not preclude the recognition of patentability of the industrial design shall be borne by the applicant.

5. No legal protection shall be granted to the following as to industrial designs:

1) solutions whose all features are exclusively due to the technical function of an article;

2) solutions that can mislead the article's consumer, in particular in respect of the article's manufacturer or the place of manufacture of the article or of the goods for which the article serves as the tare, packing or label, in particular the solutions which are identical to the objects cited in Items 4 to 9 of Article 1483 of this Code, or those making the same general impression or comprising the cited objects, if the rights to the cited objects had originated before the priority of an industrial design, except if the legal protection of an industrial design is requested by the person enjoying the exclusive right to such object.

The provision of legal protection to the industrial designs which are identical to the objects cited in Item 4, Subitems 1 and 2 of Item 9 of Article 1483 of this Code or make the same general impression or comprise the cited objects shall be allowed by approbation of the owners or of the persons authorised by owners or of the holders of rights to the cited objects.

 

Article 1353. The State Registration of Inventions, Utility Models and Industrial Designs

The exclusive right to an invention, utility model or industrial design is recognised and protected on the condition of the state registration of the relevant invention, utility model or industrial design, such registration serving as grounds for the federal executive power body charged with intellectual property matters to issue a patent for the invention, utility model or industrial design.

 

Article 1354. The Patent for an Invention, Utility Model or Industrial Design

1. A patent for an invention, utility model or industrial design certifies the priority of the invention, utility model or industrial design, the authorship of, and the exclusive right to the invention, utility model or industrial design.

2. Protection of intellectual rights to an invention or utility model is granted under a patent within the scope defined by the invention or utility model claim respectively contained in the patent. A description and drawings (Item 2 of Article 1375 and Item 2 of Article 1376) may be used for the purpose of construing the invention claim and the utility model claim.

3. Protection of intellectual rights to an industrial design shall be granted under a patent within the scope defined by the aggregate of significant features of the industrial design which are reflected on images of the article's appearance contained in the industrial design's patent.

 

Article 1355. Provision of State Incentives for Creating and Using Inventions, Utility Models and Industrial Designs

The state shall provide incentives for the creation and use of inventions, utility models or industrial designs, and grant privileges in accordance with the legislation of the Russian Federation to their authors and also to the patent holders and licensees that use the relevant inventions, utility models or industrial designs.

 

§ 2. Patent Rights

Article 1356. The Right of Attribution in Respect of an Invention, Utility Model or Industrial Design

The right of attribution, i.e. the right of being recognised as the author of an invention, utility model or industrial design is unalienable and unassignable, for instance, when this right or the exclusive right to the invention, utility model or industrial design is transferred to another person and when the right of using it is granted to another person. The waiver of this right is null and void.

 

Article 1357. The Right to Obtain a Patent for an Invention, Utility Model or Industrial Design

1. The right to obtain a patent for an invention, utility model or industrial design initially is owned by the author of the invention, utility model or industrial design.

2. The right to obtain a patent for an invention, utility model or industrial design may pass to another person (successor) or may be assigned thereto in the cases and on the grounds established by law, including in line of universal succession or under a contract including a labour contract.

3. A contract of alienation of a right to obtain a patent to an invention, utility model or industrial design shall be concluded in writing. The non-observance of the written form shall cause the invalidity of the contract.

4. Except as otherwise envisaged by agreement of the parties to a contract of alienation of a right to obtain a patent for an invention, utility model or industrial design, the risk of non-patentability shall be borne by the acquirer of the right.

 

Article 1358. The Exclusive Right to an Invention, Utility Model or Industrial Design

1. The patent holder shall own the exclusive right to use the invention, utility model or industrial design in accordance with Article 1229 of this Code in any manner that does not conflict with the law (the exclusive right to an invention, utility model or industrial design), for instance, by the methods described in Item 2 of this article. The patent holder may dispose of the exclusive right to the invention, utility model or industrial design.

2. The following in particular, shall be deemed to be the use of an invention, utility model or industrial design:

1) the import onto the territory of the Russian Federation, manufacture, application, offer for sale, sale, other introduction into civil law transactions or storage for such purposes of the product in which the invention or utility model is used or of an article in which the industrial design is used;

2) committing the actions described in Subitem 1 of this item in respect of a product directly made by a patented method. If the product made by the patented method is novel, then an identical product shall be deemed produced by the patented method, unless otherwise proven;

3) committing the actions described in Subitem 1 of this item in respect of an apparatus in whose functioning (operation) the patented method is automatically implemented;

4) committing the actions provided for by Subitem 1 of this item in respect of the product intended for application in compliance with the purpose thereof cited in the formula of an invention, when the invention is protected in the form of the product's use for a particular purpose;

5) the implementation of the method in which the invention is used, for instance, by means of applying the method.

3. An invention shall be deemed used in a product or in a method if the product contains and the method uses each feature of the invention that had been stated in an independent item of the formula of the invention contained in the patent, or a feature equivalent thereto, and that had become known as such in the given field of technology before the invention's priority date.

A utility model shall be deemed used in a product if the product contains each feature of the utility model stated in an independent item of the formula of the utility model contained in the patent.

When establishing the use of an invention or utility model, the formula of the invention or utility model shall be interpreted in compliance with Item 2 of Article 1354 of this Code.

An industrial design shall be deemed used in an article if this article contains all the essential features of the industrial design or the totality of the features making on an informed consumer the same general impression as the patented industrial design, provided that the article has a similar purpose.

4. If in the use of an invention or utility model all the features are also used that are stated in an independent item of the formula of another invention contained in the patent, or the feature which is equivalent thereto that had become known as such in the given field of technology before the priority date of another invention, or each feature stated in an independent point of the formula of another utility model contained in the patent or, when using an industrial design, each essential feature of another industrial design or the totality of features of another industrial design making upon an informed consumer the same general impression as the industrial design, provided that an article has a similar purpose, another invention, another utility model or another industrial design shall be also deemed to be used.

5. If the owners of a patent for an invention, utility model or industrial design are two and more persons, the relationships between/among them respectively shall be governed by the rules of Items 2 and 3 of Article 1348 of this Code, irrespective of whether any of the patent owners is the author of this result of intellectual activity or not.

 

Article 1358.1. A Dependent Invention, Dependent Utility Model and Dependent Industrial Design

1. An invention, utility model and industrial design whose use in a product or method is impossible without using another invention, utility model and industrial design protected by a patent and having an earlier priority shall be deemed a dependent invention, dependent utility model and dependent industrial design.

Seen as a dependent invention shall be, in particular, an invention protected in the form of application for a particular purpose of the product in which another invention protected by the patent and having an earlier priority is used.

An invention or utility model related to a product or method shall be also deemed to be dependent, if the formula of such invention or such utility model differs from the formula of another patented invention or another patented utility model with an earlier priority solely by the purpose of the product or method.

2. An invention, utility model and industrial design may not be used without a permit of the holder of the patent to another invention, another utility model and another industrial design with respect to which they are dependent ones.

 

Article 1359. Actions Not Deemed an Infringement of the Exclusive Right to an Invention, Utility Model or Industrial Design

The following are not deemed an infringement of the exclusive right to an invention, utility model or industrial design:

1) the use of a product in which the invention or utility model is used, and the use of an article in which the industrial design is used, in the design, in auxiliary equipment or in the operation of vehicles (water, air, road and rail means of transport) or spacecraft of foreign states, provided these vehicles or spacecraft are temporarily or incidentally located on the territory of the Russian Federation and the said product or article is used solely for the needs of the vehicles or spacecraft. Such action shall not be deemed an infringement of the exclusive right in respect of vehicles or spacecraft of the foreign states that grant the same rights in respect of the vehicles or spacecraft registered in the Russian Federation;

2) the carrying out of scientific research of a product or method in which the invention or utility model is used or of scientific research of an article in which the industrial design is used or the carrying out of an experiment in respect of such product, method or article;

3) the using of the invention, utility model or industrial design in emergency circumstances (natural calamities, disasters, accidents), with the patent holder being notified of this use as soon as possible and with commensurate compensation being paid henceforth to the patent holder;

4) the use of the invention, utility model or industrial design for meeting personal, family, household or other needs other than entrepreneurial activity, unless profit-making or making earningsis the purpose of the use;

5) the one-off manufacturing of medicines with the use of the invention in a chemist's shop on a physician's prescription;

6) the importation onto the territory of the Russian Federation, the application, offer for sale, sale, another introduction in civil-law transactions or storage for such purposes of a product in which the invention or utility model is used or of an article in which the industrial design is used, if the product or article has been earlier introduced in civil-law transactions on the territory of the Russian Federation by the patent holder or by another person by permission of the patent holder, or without a permit thereof, but upon condition that such introduction in civil law transactions was rightfully effected in the instances established by this Code.

 

Article 1360. Using an Invention, Utility Model or Industrial Design in the Interests of National Security

In the interests of national security the Government of the Russian Federation is entitled to permit the use of an invention, utility model or industrial design without the consent of the patent holder, with the patent holder being notified as soon as possible and with a commensurate compensation being paid to the patent holder.

 

Article 1361. The Right of Prior Use of an Invention, Utility Model or Industrial Design

1. A person that prior to the priority date of an invention, utility model or industrial design (Articles 1381 and 1382) had been properly using on the territory of the Russian Federation an identical solution or a solution that only differs from the invention by the equivalent features (Item 3 of Article 1358) created independently of the author or had made the necessary preparations for this shall retain the right of further free use of the identical solution without broadening the scope of the use (the right of prior use).

2. The right of prior use may be assigned to another person only with the enterprise in which the use of the identical solution took place or the necessary preparations were made for it.

 

Article 1362. The Compulsory Licence for an Invention, Utility Model or Industrial Design

1. If an invention or industrial design is not used or is insufficiently used by the patent holder within four years after the issuance of the patent, and a utility model within three years after the issuance of the patent, which leads to the insufficient provision of the relevant goods, works or services in the market, any person willing and ready to use the invention, utility model or industrial design -- if the patent holder refuses to conclude a licence contract with this person on terms meeting the prevailing practices -- is entitled to file a claim with the court for the patent holder to issue a compulsory simple (non-exclusive) licence for the use of the invention, utility model or industrial design on the territory of the Russian Federation. In its claim the person shall set out terms for the provision of the licence, including the scope of use of the invention, utility model or industrial design, the amount of, procedure and term for, payment.

Unless the patent holder proves that his/its non-use or insufficient use of the invention, utility model or industrial design was due to a good reason, the court shall take a decision on granting the licence specified in Paragraph 1 of the present Item and on the terms for the granting thereof. The sum total of payments for the licence shall be set in the court's decision as at least equal to a licence price determined in comparable circumstances.

A compulsory simple (non-exclusive) licence may be terminated in a judicial procedure at a claim of the patent holder, if the circumstances due to which the licence has been issued are no longer existing and it is unlikely that they are going to appear again. In this case the court shall establish a term and procedure for termination of the compulsory simple (non-exclusive) licence and of the rights that have come into being due to the receipt of the licence.

Granting in compliance with the rules of this item of a compulsory simple (non-exclusive) licence for the use of an invention pertaining to the technology of semi-conductors shall be allowed solely for its non-commercial use in the state, social and other public interests or for changing a situation which is recognised in the established procedure as a failure to satisfy the requirements of the antimonopoly legislation of the Russian Federation.

2. Unless a patent holder cannot use an invention to which he/it has an exclusive right, without infringing on the rights of the holder of another patent (first patent) for an invention or utility model which has refused to conclude a licence contract on terms complying with the prevailing practices, the holder of the patent (second patent) is entitled to file a claim with a court against the holder of the first patent for the issuance of a compulsory simple (non-exclusive) licence for the use of the invention or utility model of the holder of the first patent on the territory of the Russian Federation. In the claim the holder of the second patent shall indicate his/its terms for granting such licence thereto, including the scope of use of the invention or utility model, the amount of, procedure and term for, payment.

If the patent holder having an exclusive right to such dependent invention manages to prove that it is an important technical achievement and that is has significant economic advantages over the invention or utility model of the holder of the first patent, the court shall take a decision on granting a compulsory simple (non-exclusive) licence thereto. The right of using the invention protected by the first patent obtained under such licence shall not be assigned to other persons, except for the case of alienation of the second patent.

The sum total of payments for a compulsory simple (non-exclusive) licence shall be set in the court's decision as at least equal to a licence price determined in comparable circumstances.

When a compulsory simple (non-exclusive) licence is granted in accordance with the present item, the holder of the patent for the invention or utility model which may be used under the right granted on the basis of the said licence also has the right to obtain a simple (non-exclusive) licence for the use of the dependent invention in connection with which the compulsory simple (non-exclusive) licence was issued, on terms complying with the prevailing practices.

3. Under the court decision described in Items 1 and 2 of the present article the federal executive power body charged with intellectual property matters shall grant state registration of granting and termination of the right to use an invention, utility model or industrial design under the terms of the compulsory simple (non-exclusive) licence.

 

Article 1363. The Effective Term of Exclusive Rights to an Invention, Utility Model and Industrial Design

1. The exclusive right to an invention, utility model, industrial design, and to the patent certifying this right shall be effective, provided that the requirements established by this Code are satisfied, from the day when the patent application was filed with the federal executive power body charged with intellectual property matters, or, in the event of a divisional application (Item 4 of Article 1381), from the date when the initial application is filed:

20 years for inventions;

10 years for utility models;

5 years for industrial design.

The protection of a patented exclusive right may be only exercised after the state registration of an invention, utility model, industrial design and the issuance of the patent (Article 1393).

2. If more than five years have elapsed from filing a patent application for an invention relating to such product as a medicine, pesticide or agrochemical substance, which requires that permission be secured in the procedure established by law, up to the receipt of the first permission for using it, the effective term of the exclusive right to the relevant invention and the patent certifying this right shall be extended on the basis of an application of the patent holder by the federal executive power body charged with intellectual property matters.

The said term shall be extended by the period that has elapsed since filing the patent application for an invention to the date of receipt of the first permission to use the product, less five years, but at most for five years. In this case, the effective term of the patent for the invention shall not be extended by a term exceeding five years.

A term-extension application shall be filed by the holder of a patent within the effective term of the patent before the expiry of six months after the receipt of the first permission to use the product or the date of issuance of the patent, whichever of these terms expires latest.

The patent holder may be asked for additional materials, if without them the consideration of an application is impossible. The additional materials may be presented within three months from the date of forwarding such request. If the patent holder does not present the requested materials within this term or does not file a petition for extension of the term, an application shall be rejected. The term fixed for presenting additional materials may be extended by the federal executive power body in charge of intellectual property matters by at most 10 months.

When extending on the basis of Paragraph One of this item the effective term of an exclusive right, an additional patent shall be issued containing the totality of the features of the patented invention describing the product for whose use a permit has been obtained.

3. The effective term of the exclusive right to an industrial design and the patent certifying this right may be repeatedly extended on the basis of an application of the patent holder by five years but in total at most by 25 years from the date of filing a patent application with the federal executive power body charged with intellectual property matters or, in the event of filing a divisional application (Item 4 of Article 1381), from the date of filing the initial application.

4. The procedure for issuance and operation of an additional patent for and invention and for extending the effective term of a patent for an invention or industrial design shall be established by the federal executive power body charged with normative legal regulation in the area of intellectual property.

5. The exclusive right to an invention, utility model, industrial design and the patent certifying this right shall be deemed invalid or shall be terminated ahead of time on the grounds and in the procedure provided for by Articles 1398 and 1399 of this Code.

 

Article 1364. The Passing of an Invention, Utility Model, Industrial Design into the Public Domain

1. Upon the expiry of the effective term of the exclusive right the invention, utility model, industrial design shall pass into the public domain.

2. An invention, utility model, industrial design that has passed into the public domain may be freely used by any person without anybody's consent or permission and without a fee being paid for the use thereof.

 

§ 3. Disposing of the Exclusive Right to an Invention, Utility Model or Industrial Design

Article 1365. The Contract of Alienation of the Exclusive Right to an Invention, Utility Model or Industrial Design

1. Under a contract of alienation of the exclusive right to an invention, utility model, industrial design (contract of alienation of a patent) one party (patent holder) shall assign or undertake to assign his/its exclusive right to the relevant result of intellectual activity in full to the other party, that is, to the acquirer of the exclusive right (acquirer of the patent).

2. The alienation of the exclusive right to an industrial design is not allowable, if it could cause consumers to be misled in respect of goods or the producer thereof.

 

Article 1366. A Public Offer for Concluding a Contract of Alienation of a Patent for an Invention

1. An applicant being the sole author of an invention, before adoption on the basis of the application of the decision on the patent's issuance or on the refusal to issue the patent, or on declaring the application withdrawn, may file an application to the effect that if a patent is issued he/it undertakes to conclude a contract of alienation of the patent on the terms complying with the prevailing practices with any citizen of the Russian Federation or Russian legal entity which is the first to express such a will and notifies accordingly the patent holder and the federal executive power body charged with intellectual property matters. If the cited application exists, the patent duties envisaged by this Code shall not be collected from the applicant for the patent application for the invention and for the patent issued under the application. The duties paid before filing the cited application shall not be returned.

The federal executive power body charged with intellectual property matters shall publish information on the said application in its gazette.

2. A person that has concluded a contract for alienation of a patent for an invention with the holder of the patent on the basis of his/its application described in Item 1 of the present article shall pay all the patent duties from which the applicant (patent holder) was relieved. Henceforth, patent duties shall be paid in the established procedure.

The state registration of transfer of the exclusive right to the acquirer under a contract of patent's alienation shall be effected with the federal executive power body in charge of intellectual property matters upon condition of paying all the patent duties of which the applicant (patent holder) has been relieved.

3. Unless within two years after the publication of information on the issuance of a patent for an invention in respect of which the application specified in Item 1 of the present article has been made the federal executive power body charged with intellectual property matters has received a notice in writing of the intention to conclude a contract for alienation of the patent, the holder of the patent may file a petition with the said federal body withdrawing his/its application. In this case, the patent duties specified by the present Code from which the applicant (patent holder) was relieved shall be payable. Henceforth, patent duties shall be paid in the established procedure.

The federal executive power body charged with intellectual property matters shall publish information on the withdrawal of the application specified in Item 1 of the present article in its gazette.

 

Article 1367. A Licence Contract on Granting a Right to Use an Invention, Utility Model or Industrial Design

Under a licence contract one party, the patent holder (licensor) shall grant or undertakes to grant within the limits established by the contract to the other party (licensee) the right to use an invention, utility model or industrial design certified by a patent.

 

Article 1368. An Open Licence for an Invention, Utility Model or Industrial Design

1. The holder of a patent may file an application with the federal executive power body charged with intellectual property matters on the possibility of granting any person the right to use the invention, utility model or industrial design (open licence).

In this case, the rate of patent duty for keeping the patent for the invention, utility model or industrial design in effect shall be cut by 50 per cent starting from the year following the year of publication by the federal executive power body charged with intellectual property matters of information on the open licence.

The licence terms on which a right to use the invention, utility model or industrial design may be granted to any person shall be announced by the patent holder to the federal executive power body charged with intellectual property matters which shall publish on the patent holder's account relevant information on the open licence. The patent holder shall conclude a licence contract on the terms of a simple (non-exclusive) licence with a person expressing his/its design to use the said invention, utility model or industrial design.

2. If within two years after the publication of information about the open licence the patent holder has not received offers in writing to conclude a licence contract on the terms in his/its application, then upon the expiry of two years he/it may file a petition with the federal executive power body charged with intellectual property matters withdrawing his/its open licence application. In this case, a patent duty for keeping the patent in effect shall be additionally paid for the period that has elapsed since the publication of information on the open licence, and henceforth it shall be payable in full. The said federal body shall publish information on the withdrawal of the application in its gazette.

 

Article 1369. The Form of a Contract of Disposing of the Exclusive Right to an Invention, Utility Model and Industrial Design and State Registration and the State Registration of Transfer of an Exclusive Right, Its Pledge and Granting of the Right to Use an Invention, Utility Model and Industrial Design

1. A contract on alienation of a patent, a licence contract, and also other contracts whereby one disposes of the exclusive right to an invention, utility model or industrial design shall be concluded in writing. Failure to observe the written form thereof shall entail the contract's invalidity.

2. The alienation and pledge of the exclusive right to an invention, utility model or industrial design, or granting under a contract of the right to their use are subject to state registration in the procedure established by Article 1232 of this Code.

 

§ 4. An Invention, Utility Model and Industrial Design Created in the Line of Execution of a Service Assignment or When Works Were Performed under a Contract

Article 1370. The Service Invention, Service Utility Model and Service Industrial Design

1. An invention, utility model or industrial design created by an employee in the course of his duties or a specific assignment of the employer shall be deemed a service invention, utility model or industrial design.

2. The right of attribution in respect of a service invention, service utility model or service industrial design is owned by the employee (author).

3. The exclusive right to a service invention, service utility model or service industrial design and the right of obtaining a patent are owned by the employer, except as otherwise envisaged by a labour contract or civil law contract between the employee and the employer.

4. Unless a contract between the employer and the employee comprises agreement to the contrary (Item 3 of the present article), the employee shall notify in writing the employer that a result that can be legally protected has been created in the course of execution of his duties or of a specific assignment.

Unless within four months after being notified by the employee files a patent application for the relevant service invention, service utility model or service industrial design with the federal executive power body charged with intellectual property matters, assigns the right of obtaining a patent to the service invention, service utility model or service industrial design to another person or notifies the employee that information on the relevant result of intellectual activity is kept secret, the right to obtain a patent for the invention, utility model or industrial design shall be returned to the employee. In this case within the effective term of the patent the employer shall be entitled to use the service invention, service utility model or service industrial design at the employer's production facilities on the terms of a simple (non-exclusive) licence, with remuneration being paid to the holder of the patent of which the rate, terms and payment procedure are defined by a contract between the employee and the employer, or by a court in the case of a dispute.

If the employer obtains a patent for the service invention, service utility model or service industrial design or decides to keep information about the invention, utility model or industrial design secret and notify the employee accordingly or assigns the right of obtaining a patent to another person or does not receive a patent on an application filed by the employer for reasons under the employer's control, the employee shall be entitled to a fee. The amount of the fee, the terms and procedure for the employer to pay it shall be defined by a contract between the employer and the employee, or by a court in the case of a dispute.

Paragraph 4 is abrogated.

The right to remuneration for a service invention, service utility model or service industrial design shall be inseparable and shall pass over to the author's heirs for the remaining effective term of the exclusive right.

5. An invention, utility model or industrial design created by an employee through the use of money, technical or other material means of the employer but other than in the line of duty or a specific assignment of the employer shall not be deemed service. The right to obtain a patent and the exclusive right to such invention, utility model or industrial design are owned by the employee. In this case the employer is entitled at his/its own discretion to claim a free-of-charge simple (non-exclusive) licence for the use of the created result of intellectual activity for his/its own needs for the whole effective term of the exclusive right or compensation for the expenses incurred by the employer in connection with the creation of the invention, utility model or industrial design

 

Article 1371. An Invention, Utility Model or Industrial Design Created When Works Have Been Performed under a Contract

1. The right to receiving a patent and the exclusive right to an invention, utility model or industrial design created in the course of performance of a contractor's contract or a contract of performance of research and development or technological works which did not directly require the creation thereof are owned by the contractor (performer), except as otherwise envisaged by a contract between the contractor and the customer.

In this case the customer is entitled, except as otherwise envisaged by the contract, to use the invention, utility model or industrial design so created for the purposes for which the relevant contract was concluded, on the terms of a simple (non-exclusive) licence during the whole effective term of the patent without an additional fee being charged for the use. If the contractor (performer) assigns the right to obtain a patent or to alienate the patent proper to another person, the customer shall retain the right of using the invention, utility model or industrial design on the said terms.

2. If under the contract between the contractor (performer) and the customer the right to obtain a patent or the exclusive right to the invention, utility model or industrial design is assigned to the customer or to a third person designated by the customer the contractor (performer) is entitled to use the created invention, utility model or industrial design for his/its own needs on the terms of a free-of-charge simple (non-exclusive) licence during the whole effective term of the patent, except as otherwise envisaged by the contract.

3. In accordance with Item 4 of Article 1370 of the present Code a fee shall be paid to the author of the invention, utility model or industrial design described in Item 1 of the present article who is not the holder of the patent.

 

Article 1372. An Industrial Design Created to Order

1. The right to obtain a patent and the exclusive right to an industrial design created under a contract which had the creation thereof as its subject matter (to order) are owned by the customer, except as otherwise envisaged by a contract between the contractor (performer) and the customer.

2. If according to Item 1 of the present article the right to obtain a patent and the exclusive right to an industrial design is owned by the customer the contractor (performer) is entitled, except as otherwise envisaged by a contract, to use the industrial design for his/its own needs on the terms of a free-of-charge simple (non-exclusive) licence for the whole effective term of the patent.

3. If according to a contract between the contractor (performer) and the customer the right to obtain a patent and the exclusive right to the industrial design is owned by the contractor (performer), the customer is entitled to use the industrial design for the purposes for which the relevant contract has been made on the terms of a free-of-charge ordinary (non-exclusive) licence for the whole effective term of the patent.

4. In accordance with Item 4 of Article 1370 of the present Code a fee shall be paid to the author of an industrial design created to order who is not the holder of the patent.

 

Article 1373. An Invention, Utility Model and Industrial Design Created When Works Have Been Performed under a State or Municipal Contract

1. The right to obtain a patent and the exclusive right to an invention, utility model or industrial design created when works were performed under a state or municipal contract for state or municipal needs are owned by the organisation performing the state or municipal contract (contractor), unless according to the state or municipal contract these rights are owned by the Russian Federation, the subject of the Russian Federation or the municipal formation on whose behalf the state or municipal customer is acting or jointly by the contractor and the Russian Federation, the contractor and the subject of the Russian Federation or the contractor and the municipal formation.

2. If under a state or municipal contract a right to obtain a patent and an exclusive right to an invention, utility model or industrial design is owned by the Russian Federation, a subject of the Russian Federation or a municipal formation then the state or municipal customer may file a patent application within six months after the customer was notified in writing by the contractor that a result of intellectual activity had been obtained capable of being entitled to legal protection as an invention, utility model or industrial design. Unless within the said term the state or municipal customer files the application, the contractor shall have the right to obtain a patent.

3. If under a state or municipal contract a right to obtain a patent and an exclusive right to an invention, utility model or industrial design is owned by the Russian Federation, a subject of the Russian Federation or a municipal formation, the contractor shall either acquire all rights by means of concluding the relevant agreements with his/its employees and third persons or ensure the acquisition thereof to be transferred to the Russian Federation, the subject of the Russian Federation or the municipal formation respectively. In this case the contractor is entitled to compensation for the expenses he/it has incurred in connection with the acquisition of the relevant rights from third persons.

4. If a patent for an invention, utility model or industrial design created when works were performed under a state or municipal contract for state or municipal needs is owned according to Item 1 of the present article by a person other than the Russian Federation, a subject of the Russian Federation or a municipal formation then if requested by the state or municipal customer the holder of the patent shall grant to the person designated by the customer a free-of-charge simple (non-exclusive) licence for the use of the invention, utility model or industrial design for state or municipal needs.

5. If a patent for an invention, utility model or industrial design created when works were performed under a state or municipal contract for state or municipal needs is obtained jointly in the name of the contractor and the Russian Federation, the contractor and the subject of the Russian Federation or the contractor and the municipal formation then the state or municipal customer is entitled to grant a free-of-charge simple (non-exclusive) licence for the use of the invention, utility model or industrial design for the purpose of carrying out works or product delivery for state or municipal needs, having notified the contractor accordingly.

6. If the contractor that has obtained a patent for an invention, utility model or industrial design in accordance with Item 1 of the present article in his/its name decides that the patent be terminated before the due date then he/it shall notify accordingly the state or municipal customer, and on the request thereof transfer the patent free of charge to the Russian Federation, the subject of the Russian Federation or the municipal formation.

If a decision it taken on early termination of a patent obtained in accordance with Item 1 of the present article in the name of the Russian Federation, a subject of the Russian Federation or a municipal formation the state or municipal customer shall notify the contractor accordingly and in his/its request transfer the patent thereto on a free-of-charge basis.

7. The author of the invention, utility model or industrial design mentioned in Item 1 of the present article not being a patent holder is entitled to a fee according to Item 4 of Article 1370 of the present Code.

 

§ 5. Obtaining a Patent

1. The Patent Application, Its Amendment and Revocation

Article 1374. Filing a Patent Application for an Invention, Utility Model and Industrial Design

1. A patent application for an invention, utility model or industrial design shall be filed with the federal executive power body charged with intellectual property matters by a person entitled to obtain a patent according to the present Code (applicant).

2. The patent application for an invention, utility model or industrial design shall be filed in the Russian language. The other documents of the application shall be filed in the Russian language or in another language. If the documents of the application are filed in another language a translation thereof into Russian shall be attached to the application.

3. The patent application for an invention, utility model or industrial design shall be signed by the applicant, or if filed through a patent agent or another representative, by the applicant or his/its representative filing the application.

4. The requirements applicable to patent application documents for an invention, utility model or industrial design shall be established on the basis of the present Code by the federal executive power body charged with normative legal regulation in the area of intellectual property.

5. Abrogated from October 1, 2014.

 

Article 1375. The Patent Application for an Invention

1. A patent application for an invention (invention application) shall relate to one invention or a group of invention interconnected to the extent that they form a united inventive concept (the concept of unity of an invention).

2. The invention application shall comprise the following:

1) a patent application including an indication of the author of the invention and of the applicant, that is, of the person entitled to receive a patent, and also the place of residence or location of each of them;

2) a description of the invention that discloses its essence to the extent which is sufficient for making the invention by an expert in a given field of technology;

3) the invention claim clearly expressing the essence thereof and fully based on its description;

4) drawings and other materials if required for understanding the essence of the invention;

5) a synopsis.

3. The date of filing of the invention application is the date when the federal executive power body charged with intellectual property matters receives an application comprising a patent application, a description of the invention and drawings if the description contains reference thereto, and the date of receipt of the last document if the said documents were not filed simultaneously.

 

Article 1376. The Patent Application for a Utility Model

1. A patent application for a utility model (a utility model application) shall relate to one utility model (the requirement for unity of a utility model).

2. The utility model application shall comprise the following:

1) a patent application including an indication of the author of the utility model and of the applicant, that is, of the person entitled to receive the patent, and also the place of residence or location of each of them;

2) a description of the utility model that discloses its essence to the extent which is sufficient for making the utility model by an expert in a given field of technology;

3) the formula of the utility model related to a single technical solution clearly showing its essence and fully based on its description;

4) drawings if required for understanding the essence of the utility model;

5) a synopsis.

3. The date of filing of the utility model application is the date when the federal executive power body charged with intellectual property matters receives an application comprising a patent application, a description of the utility model and drawings if the description contains reference thereto, and the date of the last of documents if said documents were not filed simultaneously.

 

Article 1377. The Patent Application for an Industrial Design

1. A patent application for an industrial design (industrial design application) shall relate to one industrial design or a group of industrial designs interrelated to the extent of forming a united creative concept (the concept of unity of an industrial design).

2. The industrial design application shall comprise the following:

1) a patent application with an indication of the author of the industrial design and of the applicant - of the person enjoying the right to receive the patent, and also the place of residence or location of each of them;

2) a set of images of the article that provide the complete idea of the essential features of the industrial design that determine the specifics of the article's appearance;

3) a general view drawing of the article and assembly chart, if they are required for disclosing the essence of the industrial design;

4) a description of the industrial design;

5) abrogated from October 1, 2014.

3. The date of filing of the industrial design application is the date when the federal executive power body charged with intellectual property matters receives an application comprising a patent application and a set of the article's images giving a full idea of the essential features of an industrial design that determine the specifics of the article's appearance, and the date of receipt of the last of the documents if these document were not filed simultaneously.

 

Article 1378. Amending the Documents of the Application for an Invention, Utility Model or Industrial Design

1. An applicant is entitled to make in the documents of the application for an invention, utility model or industrial design, additions, updates and corrections by means of filing additional materials at the request of the federal executive power body in charge of intellectual property matters, until the decision on issuing a patent, or on refusing to issue a patent, or on declaring the application withdrawn is taken on the application, unless these additions, updates and corrections change the essence of the application for the invention, utility model or industrial design.

After receiving a report on an information search carried out in the procedure established by Items 2 - 4 of Article 1386 of this Code an applicant is entitled to present once at the own initiative thereof the modified formula of an invention that does not change the essence of the invention and to make the appropriate amendments to the description thereof.

2. The additional materials are deemed to change the essence of an application for an invention or utility model in one of the following instances, if they contain the following:

another invention that does not satisfy the requirement for the integrity of the invention in respect of the invention or a group of inventions accepted for consideration or other utility model;

the features which are subject to inclusion into the formula of an invention or utility model and which are not disclosed in the documents of an application which are provided for by Subitems 1 - 4 of Item 2 of Article 1375 or Subitems 1-4 of Item 2 of Article 1376 of this Code and presented as of the date of filing the application;

an indication of the technological result which is ensured by an invention or utility model and is not connected with the technological result contained in the same documents.

3. Additional materials shall change an application in respect of an industrial design on its merits, if they contain images of an article on which the following is shown:

another industrial design that does not satisfy the requirement of the integrity of an industrial design in respect of an industrial design or a group of industrial designs accepted for consideration;

the essential features of an industrial design are presented that are absent on the images presented as of the date of filing the application or the images of an article are presented from which the essential features of an industrial design available on the images presented as of the date of filing an application are deleted.

4. Changes in the data on the author, on the applicant, in particular when transferring the right to receive the patent to another person or as a result of changing the author's name, the name or denomination of the applicant, as well as the correction of clear and technical mistakes may be made by the applicant in the documents of the application on the own initiative thereof prior to registration of an invention, utility model or industrial design.

5. The changes made by an applicant to the documents of the application for an invention shall be taken into account when publishing data on the application, if such changes are presented to the federal executive power body in charge of intellectual property matters within 15 months from the date of filing the application.

 

Article 1379. Transforming an Application for an Invention or Utility Model or Industrial Design

1. Until the publication of information on an invention application (Item 1 of Article 1385) but not later than the date of a decision on the issuance of a patent, or, when adopting the decision on the refusal to issue the patent for an invention or declaring an application withdrawn, before the possibility of filing an objection against this decision provided for by this Code, the applicant is entitled to transform it into a utility model or industrial design application by means of filing the appropriate application with the federal executive power body charged with intellectual property matters, except if the applicant has filed an application on the proposal to make a contract of the patent's alienation provided for by Item 1 of Article 1366 of this Code.

2. The transformation of a utility model application into an invention or industrial design or an industrial design application into an invention or utility model application shall be permitted on the basis of an application filed with the federal executive power body charged with intellectual property matters until the date of a decision on the issuance of a patent, or if a decision on refusing to issue a patent or on declaring an application withdrawn is taken, until the possibility of filing an objection against this decision provided for by this Code is exhausted.

3. The transformation of an application for an invention, utility model or industrial design in compliance with Items 1 or 2 of this article shall be allowed, if the priority and date of filing the transformed application subject to the requirements of Item 3 of Article 1375, Item 3 of Article 1376, Item 3 of Article 1377, Item 3 of Article 1381 or Article 1382 of this Code remain unchanged.

 

Article 1380. Withdrawing an Invention, Utility Model or Industrial Design Application

An applicant is entitled to withdraw his/its invention, utility model or industrial design application until the state registration of the invention, utility model or industrial design in the relevant register.

 

2. The Priority of an Invention, Utility Model and Industrial Design

 

Article 1381. Establishing the Priority of an Invention, Utility Model or Industrial Design

1. The priority of an invention, utility model or industrial design shall be established by the date when the invention, utility model or industrial design application is filed with the federal executive power body charged with intellectual property matters.

2. The priority of an invention, utility model or industrial design may be established by the date when additional materials are received, if they are provided by the applicant as an independent application filed before the expiry of three months after the applicant's receipt of a notice from the federal executive power body charged with intellectual property matters stating that additional materials could not be taken into account because they were deemed to change the essence of the solution declared, unless as of the date of filing of the independent application the application containing the said additional materials has been withdrawn or deemed withdrawn.

3. The priority of an invention, utility model or industrial design shall be established by the date when an earlier invention, utility model or industrial design application is filed by the same applicant with the federal executive power body charged with intellectual property matters that discloses these inventions, utility models or industrial designs, provided that the earlier application is not withdrawn, or declared withdrawn and on the basis of it the invention, utility model or industrial design was not registered in the appropriate register as of the date of filing the application in which the priority is sought and, with this, the application for an invention in which the priority is sought is filed within 12 months from the date of filing an earlier application, while an application for a utility model or industrial design - within six months from the date when an earlier application is filed.

Once an application seeking priority is filed the earlier application shall be deemed withdrawn.

Priority shall not be established by the date of filing of an application whereby an earlier priority has been sought.

4. The priority of an invention, utility model or industrial design under a divisional application shall be established by the date when the same applicant filed with his/its initial application the federal executive power body charged with intellectual property matters disclosing the invention, utility model or industrial design or if a right exists to establish an earlier priority, by the initial application by the date of that priority, unless the initial invention, utility model or industrial design application had not been withdrawn or deemed withdrawn, provided the divisional application had been filed before the completion of the appeal envisaged by the present Code against the decision on refusing to issue a patent under the initial application or the date of registration of the invention, utility model or industrial design if a decision on issuing a patent was taken on the initial application.

5. The priority of an invention, utility model or industrial design may be established on the basis of several applications filed earlier or of additional materials to such applications, given the observance of the conditions set out in Items 2, 3 and 4 of the present article and Article 1382 of the present Code respectively.

 

Article 1382. The Convention Priority of an Invention, Utility Model or Industrial Design

1. The priority of an invention, utility model or industrial design may be established by the date of filing of the first application for the invention, utility model or industrial design in a member state of the Paris Convention for the Protection of Industrial Property (conventional priority), provided an application for the invention or utility model is filed with the federal executive power body charged with intellectual property matters within 12 months after the said date or an application for the industrial design within six months after the said date. If due to reasons beyond the applicant's control an application seeking a convention priority could not be filed within the said term, that term may be extended by the federal executive power body charged with intellectual property matters by up to two months.

2. An applicant wishing to exercise the right of convention priority in respect of an industrial design application shall notify the federal executive power body charged with intellectual property matters accordingly within two months after the filing of the application and present an attested copy of the first application specified in Item 1 of the present article within three months after filing the application whereby a convention priority is sought with the said federal body.

If an attested copy of the first application is not filed within the cited time, the right of propriety, nevertheless, may be recognised by the federal executive power body charged with intellectual property matters on the applicant's petition filed with the same the federal executive power body charged with intellectual property matters before the expiry of the cited time period. The petition may be allowed on condition that a copy of the first application has been requested for by the applicant at the same patent office with which the first application is filed within eight months from the date of filing the first application and is presented with the federal executive power body charged with intellectual property matters within two months from the date when it is received by the applicant.

3. An applicant wishing to exercise the right of convention priority in respect of an application with respect to invention or utility model shall notify the federal executive power body charged with intellectual property matters accordingly and file a copy of the first application with that federal body within 16 months after it was filed with the patent department of a member state of the Paris Convention for the Protection of Industrial Property.

If within the said term no attested copy of the first application is filed, the priority right may nevertheless be recognised by the federal executive power body charged with intellectual property matters on the applicant's petition filed by him/it with that federal body within the said term, provided a copy of the first application was requested by the applicant from the patent department to which the first application has been submitted, within 14 months after the filing of the first application, and was submitted to the federal executive power body charged with intellectual property matters within two months after its receipt by the applicant.

The federal executive power body charged with intellectual property matters is only entitled to demand of an applicant to present a translation into Russian of the first application for an invention or utility model, if the verification of validity of a claim for the priority of the invention or utility model is connected with establishing the patentability of the declared invention or utility model.

 

Article 1383. The Consequences of the Coincidence of Priority Dates of an Invention, Utility Model or Industrial Design

1. If an expert examination has established that various applicants have filed applications for identical inventions, utility models or industrial designs, and that these applications have one and the same priority date then a patent for an invention, utility model or industrial design may be issued only on one of these applications to the person designated by agreement among the applicants.

Within 12 months after forwarding a relevant notice by the federal executive power body charged with intellectual property matters, the applicants shall inform that federal body of the agreement reached by them.

When a patent is issued on one of the applications all the authors mentioned in the application shall be deemed co-authors in respect of the identical inventions, utility models or industrial designs.

If applications for identical inventions and/or utility models or identical industrial designs having one and the same priority date have been filed by one and the same applicant, a patent shall be issued on the application chosen by the applicant. The applicant shall notify of its choice within the term and in the procedure set out in Paragraph 2 of the present article.

Unless within the established term the federal executive power body charged with intellectual property matters receives from the applicants the said notice or petition for extension of the established term in the procedure set out in Item 6 of Article 1386 of the present Code, the applications shall be deemed withdrawn.

2. In the event of coincidence of the priority dates of an invention and a utility model identical thereto for which patent applications have been filed by one and the same applicant when a patent is issued under one of the applications a patent under the other application shall be possible only on the condition that an application for termination of that patent is filed with the federal executive power body charged with intellectual property matters by the owner of the earlier patent for the identical invention or identical utility model. In this case the patent issued earlier shall be terminated starting from the date of publication of information on the issuance of the patent on the other application in keeping with Article 1394 of the present Code. Information on the issuance of the patent for the invention or the utility model and information on the termination of the earlier patent shall be published simultaneously.

 

3. The Expert Examination of a Patent Application. The Temporary Legal Protection of an Invention

Article 1384. The Formal Expert Examination of an Invention Application

1. A formal expert examination shall be carried out in respect of an invention application received by the federal executive power body charged with intellectual property matters to verify the availability of the documents mentioned in Item 2 of Article 1375 of this Code, and their compliance with established requirements.

2. The federal executive power body charged with intellectual property matters shall immediately notify an applicant of a positive result of a formal expert examination of an application for an invention after the completion of the formal expert examination.

3. If the invention application does not comply with the established requirements applicable to application documents, the federal executive power body charged with intellectual property matters shall send a request to the applicant asking him/it to file corrected or missing documents within three months of the receipt of the request. Unless the applicant files the documents so requested within the established term or files a petition for extension of the term, the application shall be deemed withdrawn. The term may be extended by the said federal executive power body by up to ten months.

4. If when conducting a formal expert examination of the invention application it is established that it is filed in breach of the concept of unity of invention (Item 1 of Article 1375), the federal executive power body charged with intellectual property matters shall propose that the applicant within three months after the receipt of the relevant notice state which of the inventions declared is to be examined, and if necessary amend the application documents. The other inventions declared by means of that application may be formalised under divisional applications. Unless within the established term the applicant notifies which of the inventions declared is to be examined and if necessary files the relevant documents, the invention indicated in the invention claim first shall be considered.

5. If when conducting a formal expert examination of an invention application it is established that the additional materials filed by an applicant change the application on its merits, the rules of Paragraph Three of Item 6 of Article 1386 of this Code shall apply.

 

Article 1385. The Publication of Information on an Invention Application

1. Upon the expiry of 18 months after the date of the filing of an invention application that has passed a formal expert examination with a positive result the federal executive power body charged with intellectual property matters shall publish information on the invention application in its gazette. The composition if the details published shall be determined by the federal executive power body charged with normative legal regulation in the area of intellectual property.

The author of the invention is entitled to refuse to be mentioned as such in the published information on the invention application.

At a petition of the applicant filed before the expiry of 12 months after the date of filing of the invention application the federal executive power body charged with intellectual property matters may publish information on the application before the expiry of 18 months after the date of filing thereof.

No publication shall take place if before the expiry of 15 months after the filing of the invention application it is withdrawn or deemed withdrawn or the invention is registered on the basis of the application.

2. After the publication of information on the invention application any person is entitled to acquaint themselves with the documents of the application, unless the application is withdrawn or deemed withdrawn as of the date of publication of information concerning it. The procedure for reading application documents and for the issuance of copies of such documents shall be established by the federal executive power body charged with normative legal regulation in the area of intellectual property.

3. When information is published on an invention application that has been withdrawn or deemed withdrawn as of the date of publication, such information shall not be included in the state of the art for the subsequent applications of the same applicant filed with the federal executive power body charged with intellectual property matters until the expiry of 12 months after the publication of information on the invention application.

 

Article 1386. The Expert Examination of an Invention Application on the Merits Thereof

1. At a petition of an applicant or third persons that may be filed with the federal executive power body charged with intellectual property matters when an invention application is filed or within three years after filing the application, provided a formal expert examination is completed in respect of the application with a positive result, the invention application shall undergo an expert examination on the merits thereof. The federal executive power body charged with intellectual property matters shall notify the applicant of the third persons' petitions received.

The term for filing a petition for an expert examination of an invention application on the merits thereof may be extended by the federal executive power body charged with intellectual property matters at a petition of the applicant filed before the expiry of the term, by up to two months.

Unless a petition for expert examination of the invention application on the merits thereof is filed within the established term, the application shall be deemed withdrawn.

2. The expert examination of an invention application on the merits thereof includes the following:

information retrieval concerning the declared invention to assess the state of the art subject to which the invention patentability will be verified;

verifying the compliance of the declared invention with the requirements established by Item 4 of Article 1349 of this Code and with the patentability conditions set out by Paragraph One of Item 1, Items 5 and 6 of Article 1350 of this Code.

verifying the sufficiency of disclosing the essence of the declared invention in the documents of the application provided for by Subitems 1-4 of Item 2 of Article 1375 of this Code and presented as of the date when it is filed for making the invention by an expert in the given field of technology;

verifying the compliance of the declared invention with the conditions of the patentability provided for by Paragraph Two of Item 1 of Article 1350 of this Code.

The federal executive power body charged with intellectual property matters shall forward to an applicant a report on the information retrieval.

No information retrieval shall be carried out in respect of the objects cited in Item 4 of Article 1349 and in Items 5 and 6 of Article 1350 of this Code and the federal executive power body charged with intellectual property matters shall notify an applicant thereof.

A procedure for carrying out information retrieval and for filing a report on it shall be established by the federal executive power body charged with normative legal regulation in the area of intellectual property.

3. If a petition for holding an expert examination of an invention application on its merits is filed simultaneously with filing an application and no earlier priority is claimed in the application than the date of filing the application, the federal executive power body charged with intellectual property matters shall forward to an applicant a report on information retrieval before the expiry of seven months from the starting date of an expert examination of the application on its merits.

The time period for forwarding to an applicant a report on information retrieval may be extended by the federal executive power body charged with intellectual property matters, if there is a need for requesting from other organisations the source of information which is missing in the records of the cited federal executive power body or the declared invention is described so that it makes impossible to make the information retrieval in the established procedure. The cited federal executive power body shall notify an applicant of the extension of the time period for forwarding a report on information retrieval and the reasons for its extension.

4. The applicant and third persons are entitled to petition for an information retrieval concerning an invention application that has undergone a formal expert examination with a positive result in order to assess the state of the art subject to which the patentability of the declared invention is to be assessed. The procedure and conditions for such information retrieval and provision of information on the results thereof shall be established by the federal executive power body charged with normative legal regulation in the area of intellectual property.

5. In respect of an invention application published in the procedure established by Article 1385 of this Code the federal executive power body in charge of intellectual property matter shall publish a report on the information retrieval effected in the procedure established by Items 2 and 4 of this article.

After publishing data on an invention application any person is entitled to present the observations thereof in respect of the compliance of the declared invention with the patentability terms established by Article 1350 of this Code. Such persons shall not take part in the proceedings concerning the application. Observations shall be taken into account when adopting a decision on an application in the procedure established by Article 1387 of this Code.

A procedure for and term of informing an applicant of the results of holding an information retrieval and publication of a report on such retrieval shall be established by the federal executive power body charged with normative legal regulation in the area of intellectual property.

6. In the course of an expert examination of an invention application on the merits thereof the federal executive power body charged with intellectual property matters may request additional materials from the applicant (including a modified invention claim) without which the expert examination or adoption of the decision on issuance of the invention patent is impossible. In this case, additional materials without a change in the essence of the invention shall be provided within three months after forwarding the request or copies of the materials contradicting the application, provided the applicant has asked for the said copies within two months of the request of the said federal body is forwarded. Unless within the established term the applicant provides the requested materials or files a petition for extension of this term, the application shall be deemed withdrawn. The term established for the applicant to submit the materials requested may be extended by the said federal body by at most ten months.

If it is established while holding an expert examination of an application on its merits that the requirement for the unity of an invention is not satisfied, the provisions of Item 4 of Article 1384 of this Code shall apply.

If an applicant has filed additional materials, it shall be verified whether they have changed the essence of an application or not (Article 1378). Additional materials in the part thereof that changes an application on its merits shall not be taken into account when considering an invention application. Such materials may be presented by an applicant as an independent application. The federal executive power body in charge of intellectual property matters shall notify an applicant thereof.

 

Article 1387. The Decision on Issuance of a Patent for an Invention, on Refusing to Issue It or on Declaring an Application Withdrawn

1. If as a result of an expert examination of an invention application on the merits thereof it is established that the declared invention expressed in the invention claim proposed by the applicant does not refer to the objects cited in Item 4 of Article 1349 of this Code, meets the conditions of patentability set out in Article 1350 of this Code and the essence of the declared invention in the application documents provided for by Subitems 1-4 of Item 2 of Article 1375 of this Code and filed as of the date of its submission is disclosed fully enough for making the invention, the federal executive power body charged with intellectual property matters shall take the decision on issuing a patent for the invention with this invention claim. The decision shall contain the date of filing the invention application and the priority date of the invention.

If in the course of the expert examination of an invention application on the merits thereof it is established that the declared invention expressed in the invention claim proposed by the applicant does not comply with at least one requirement or condition of patentability cited in Paragraph One of this item or the application documents cited in Paragraph One of this item do not satisfy the requirements provided for by this paragraph, the federal executive power body charged with intellectual property matters shall take a decision on refusing to grant a patent.

Until taking the decision on refusing to issue a patent the federal executive power body charged with intellectual property matters shall send a notice to the applicant of the results of verification of patentability of the invention declared with a proposal for presenting its arguments concerning the reasons set out in the notice. The applicant's reply containing arguments concerning the reasons set out in the notice may be presented within six months from the date when the notice is forwarded thereto.

2. The invention application shall be deemed withdrawn under the provisions of this chapter on the basis of a decision of the federal executive power body charged with intellectual property matters.

3. The decisions of the federal executive power body charged with intellectual property matters on issuance of the patent for an invention, on refusing to grant a patent for the invention or on deeming the invention application withdrawn may be challenged by the applicant by means of filing his/its objection with the cited federal executive power body within seven months after forwarding by it to the applicant the corresponding decision or copies of the materials requested from the cited federal executive power body which are opposed to the application and are cited in the decision on the refusal to issue the patent, provided that the applicant has requested copies of these materials within three months from the date of sending the decision adopted in respect of the invention application.

 

Article 1388. The Applicant's Right to Read Patent Materials

The applicant is entitled to read all the materials relating to invention patenting to which reference is made in the requests, reports, decisions, notices or other documents received by the applicant from the federal executive power body charged with intellectual property matters, except for the application documents which are not available for familiarisation to any person (in particular of the application cited in the notice provided for by Paragraph Two of Item 1 of Article 1383 of this Code), if data on such application are not published. Copies of the patent documents requested by the applicant from the said federal body shall be sent thereto within one month after receipt of the request.

 

Article 1389. The Renewal of Term in the Case of Laches Concerning the Expert Examination of an Invention Application

1. If the applicant misses the main term or extended term for filing documents or additional materials at the request of the federal executive power body charged with intellectual property matters (Item 3 of Article 1384 and Item 5 of Article 1386), the term for filing a petition for expert examination of an invention application on the merits thereof (Item 1 of Article 1386) and the term for filing an objection with the cited federal executive power body (Item 3 of Article 1387) may be renewed by the said federal executive power body, provided the applicant presents proof of a good reason for missing the term.

The terms provided for by Item 3 of Article 1384, Items 1 and 6 of Article 1386 of this Code shall be renewed in compliance with the provisions of this chapter on the basis of a decision of the federal executive power body charged with intellectual property matters on reversal of the decision on declaring the application withdrawn and renewing the term missed.

2. A petition for renewal of term in case of laches may be filed by the applicant within 12 months after the expiry of the established term. The petition shall be filed with the federal executive power body charged with intellectual property matters simultaneously with:

the documents or additional materials whose filing requires that the term be renewed or with a petition for extending the term for filing these documents or materials;

or with a petition for expert examination of the invention application on the merits thereof;

or with an objection with the federal executive power body charged with intellectual property matters.

 

Article 1390. Expert Examination of a Utility Model Application

1. A formal expert examination shall be carried out in respect of a utility model application received by the federal executive power body charged with intellectual property matters to verify the availability of the documents cited in Item 2 of Article 1376 of this Code and their compliance with established requirements.

Should the result of a formal expert examination be positive, an expert examination of a utility model application shall be conducted, this comprising the following:

information retrieval concerning the declared utility model to assess the state of the art object to which the utility model's patentability will be verified;

verifying the compliance of the declared invention with the requirements established by Item 4 of Article 1349 of this Code and with the patentability conditions set out by Paragraph One of Item 1, Items 5 and 6 of Article 1351 of this Code.

verifying the sufficiency of disclosing the essence of the declared utility model in the documents of the application provided for by Subitems 1-4 of Item 2 of Article 1376 of this Code and presented as of the date when it is filed for making the utility model by an expert in the given field of technology;

verifying the compliance of the declared utility model with the conditions of the patentability provided for by Paragraph Two of Item 1 of Article 1351 of this Code.

The information retrieval in respect of the objects cited in Item 4 of Article 1349 and Items 5 and 6 of Article 1351 of this Code shall not be conducted, and the federal executive power body charged with intellectual property matters shall notify an applicant thereof.

2. If as a result of an expert examination of a utility model application on the merits thereof it is established that the declared utility model expressed in the invention claim proposed by the applicant does not refer to the objects cited in Item 4 of Article 1349 of this Code, meets the conditions of patentability set out in Article 1351 of this Code and the essence of the declared invention in the application documents provided for by Subitems 1-4 of Item 2 of Article 1376 of this Code and filed as of the date of its submission is disclosed fully enough for making the invention by a expert in the given area of technology, the federal executive power body charged with intellectual property matters shall take the decision on issuing a patent for the utility model with this invention claim. The decision shall contain the date of filing the utility model application and the priority date of the invention.

If in the course of the expert examination of an utility model application on the merits thereof it is established that the declared object expressed in the claim proposed by the applicant does not comply with at least one requirement or condition of patentability cited in Paragraph One of this item or the application documents provided for by Subitems 1-4 of Item 2 of Article 1376 of this Code and filed as of the date of its submission do not disclose of the utility model fully enough for making the utility model by an expert in the given area of technology, the federal executive power body charged with intellectual property matters shall take the decision on refusing to grant a patent.

3. When conducting a formal expert examination of an application for a utility model and an expert examination of an application on its merits, the provisions provided for by Items 2-5 of Article 1384, Item 6 of Article 1386, Items 2 and 3 of Article 1387, Articles 1388 and 1389 of this Code shall apply, respectively.

4. If when considering by the federal executive power body charged with intellectual property matters a utility model application it is established that the data contained therein constitutes a state secret, the application documents shall be declassified in the procedure established by the legislation on state secrets. In so doing, the applicant shall be notified of the possibility of withdrawing the utility model application or of transforming it into an application for a secret invention. The consideration of the application shall be suspended pending the receipt from the applicant of the corresponding application or pending the application's declassification.

 

Article 1391. Expert Examination of an Industrial Design Application

1. An industrial design application received by the federal executive power body charged with intellectual property matters shall be subjected to a formal expert examination to verify the availability of the documents cited in Item 2 of Article 1377 of this Code and their compliance with established requirements.

If the result of the formal expert examination is positive, an expert examination of the industrial design application on the merits thereof shall be carried out, this including the following:

information retrieval concerning the declared industrial design to determine the generally accessible data subject to which the patentability thereof will be verified;

verifying the compliance of the declared industrial design with the requirements established by Article 1231.1, Item 4 of Article 1349 of this Code and with the patentability conditions set out by Paragraph One of Item 1, Item 5 of Article 1352 of this Code;

verifying the compliance of the declared industrial design with the conditions of the patentability provided for by Paragraph Two of Item 1 of Article 1352 of this Code.

The information retrieval in respect of the objects cited in Subitem 4 of Item 4 of Article 1349 of this Code shall not be conducted, and the federal executive power body charged with intellectual property matters shall notify an applicant thereof.

2. If as a result of an expert examination of an industrial design application on the merits thereof it is established that the declared industrial design shown on images of an article's appearance does not refer to the objects cited in Article 1231.1 or Item 4 of Article 1349 of this Code and meets the conditions of patentability set out in Article 1352 of this Code, the federal executive power body charged with intellectual property matters shall take the decision on issuing a patent for the industrial design. The decision shall contain the date of filing the industrial design application and the priority date of the industrial design.

If in the course of the expert examination of a utility model application on the merits thereof it is established that the declared object does not comply with at least one requirement or condition of patentability cited in Paragraph One of this item, the federal executive power body charged with intellectual property matters shall take the decision on refusing to grant a patent.

3. When conducting a formal expert examination of an application for a utility model and an expert examination of an application on its merits, the provisions stipulated by Items 2-5 of Article 1384, Item 6 of Article 1386, Items 2 and 3 of Article 1387, Articles 1388 and 1389 of this Code shall apply, respectively.

 

Article 1392. The Temporary Legal Protection of an Invention

1. An invention for which an application has been filed with the federal executive power body charged with intellectual property matters shall enjoy temporary legal protection starting from the date of publication of information on the application (Item 1 of Article 1385) until the date of publication of information on the issuance of a patent (Article 1394), within the scope of the invention claim published but not exceeding the scope defined in the claim contained in the decision of the said federal body on the issuance of the patent for the invention.

2. The temporary legal protection shall be deemed non-existent if the invention application has been withdrawn or deemed withdrawn or if in respect of the invention application a decision has been taken to refuse to issue a patent and the possibility of appealing against this decision envisaged by the present Code has been exhausted.

3. A person that uses a declared invention during the period specified in Item 1 of the present article shall pay monetary remuneration to the patent holder after a patent is received. The amount of the remuneration shall be set by agreement of the parties or, in the case of a dispute, by a court.

 

4. The Registration of an Invention, Utility Model and Industrial Design, and the Issuance of a Patent

 

Article 1393. The Procedure for the State Registration of an Invention, Utility Model and Industrial Design, and the Issuance of a Patent

1. On the basis of the decision on issuing a patent for an invention, utility model or industrial design adopted in the procedure established by Item 1 of Article 1387, Item 2 of Article 1390, Item 2 of Article 1391 or Article 1248 of this Code, the federal executive power body charged with intellectual property matters shall enter the invention, utility model or industrial design into the relevant state register, i.e. the State Register of Inventions of the Russian Federation, the State Register of Utility Models of the Russian Federation and the State Register of Industrial Designs of the Russian Federation, and it shall issue a patent for the invention, utility model or industrial design.

If a patent has been sought in the names of several persons, a single patent shall be issued thereto.

2. The state registration of an invention, utility model or industrial design, and the issuance of a patent shall be completed, if the relevant patent duty has been paid. If an applicant has not paid the patent duty in the established procedure, the invention, utility model or industrial design shall not be registered, and the relevant application shall be deemed withdrawn on the basis of a decision of the federal executive power body charged with intellectual property matters.

Should the decision on issuance of a patent for an invention, utility model or industrial design be disputed in the procedure established by Article 1248 of this Code, the decision of declaring the application withdrawn shall not be taken.

3. The form of a patent for an invention, utility model or industrial design, and the composition of the details available therein shall be established by the federal executive power body charged with normative legal regulation in the area of intellectual property.

4. The federal executive power body charged with intellectual property matters shall enter on the basis of an application of the right holder in a patent issued for invention, utility model or industrial design and/or in the relevant state register the amendments related to the data on the right holder and/or author, in particular to the denomination or name of the right holder, the place of location or residence thereof, the author's name and address for correspondence, as well as the amendments aimed at correcting clear and technical errors.

5. The federal executive power body charged with intellectual property matters shall publish information in its gazette about any amendments made to entries in the state registers.

 

Article 1394. The Publication of Information on the Issuance of a Patent for an Invention, Utility Model or Industrial Design

1. The federal executive power body charged with intellectual property matters shall publish information in its official bulletin on the issuance of a patent for an invention or utility model, including the name of the author (unless the author has refused to be mentioned as such), the name or denomination of the holder of the patent, the title and invention or utility model claim.

The federal executive power body charged with intellectual property matters shall publish in its official bulletin data on the issuance of a patent for an industrial design, including the name of the author (unless the author has refused to be mentioned as such), the name or denomination of the holder of the patent, the name of the industrial design or an image of an article giving in full an idea about all the essential features of the industrial design.

The composition of the data to be published shall be defined by the federal executive power body charged with normative legal regulation in the area of intellectual property.

2. After information has been published according to the present article about the issuance of the patent for the invention, utility model or industrial design any person is entitled to read the documents of the application and the report on information retrieval.

The procedure for reading the documents of the application and the report on information retrieval shall be established by the federal executive power body charged with normative legal regulation in the area of intellectual property.

 

Article 1395. Patenting Inventions or Utility Models in Foreign States and in International Organisations

1. A patent application for an invention or utility model created in the Russian Federation may be filed in a foreign state or with an international organisation upon the expiry of six months after the filing of the relevant application with the federal executive power body charged with intellectual property matters, unless within the said term the applicant is notified that the application comprises information deemed a state secret. An invention or utility model application may be filed earlier than indicated above but after the completion of a verification of the application's comprising information deemed a state secret at the applicant's request. The procedure for carrying out such verification shall be established by the Government of the Russian Federation.

2. The patenting under the Patent Cooperation Treaty or the Eurasian Patent Convention of an invention or utility model created in the Russian Federation is admissible without the prior filing of a relevant application with the federal executive power body charged with intellectual property matters if the application has been filed in accordance with the Patent Cooperation Treaty (international application) with the federal executive power body charged with intellectual property matters as a receiving department and in that application the Russian Federation is referred to as the state in which the applicant intends to obtain a patent, and the Eurasian application has been filed through the federal executive power body charged with intellectual property matters.

In respect of the relevant application serving as a basis for seeking the priority for an international application filed with the federal executive power body charged with intellectual property matters the provisions of Paragraph Two of Item 3 of Article 1381 of this Code shall not apply.

 

Article 1396. The International and Eurasian Applications Having the Effect of the Applications Envisaged by the Present Code

1. The federal executive power body charged with intellectual property matters shall commence considering an international application for an invention or utility model which is filed in accordance with the Patent Cooperation Treaty and in which the Russian Federation is referred to as the state in which the applicant intends to obtain a patent for the invention or utility model, upon the expiry of 31 months after the priority date sought in the international application on condition of filing with the cited federal executive power body an application for issuance of a patent for the invention or utility model. At the applicant's request the international application shall be considered before the expiry of this time period.

Filing with the federal executive power body charged with intellectual property matters an application for issuance of a patent for an invention or utility model may be replaced by the presentation of the application in Russian contained in the international application or of a translation of such application into Russian.

Unless the said documents are filed within the established term, the effect of the international application in accordance with the Patent Cooperation Treaty shall be terminated in respect of the Russian Federation.

The time period for filing the cited documents missed by an applicant may be restored by the federal executive power body charged with intellectual property matters on condition that the reasons for failure to observe are specified.

2. The consideration of an Eurasian invention application having under the Eurasian Patent Convention the effect of an invention application envisaged by this Code shall be commenced from the day when the federal executive power body charged with intellectual property matters receives an attested copy of the Eurasian application from the Eurasian Patent Department.

3. The publication in the Russian language of an international application by the International Office of the World Organisation Intellectual Property Organisation under the Patent Cooperation Treaty or the publication of a Eurasian application by the Eurasian Patent Department in accordance with the Eurasian Patent Convention shall replace the publication of information on an application envisaged by Article 1385 of the present Code.

 

Article 1397. A Eurasian Patent and a Patent of the Russian Federation for Identical Inventions

1. If a Eurasian patent and a patent of the Russian Federation for identical inventions or an identical invention and utility model having the same priority date are owned by different patent holders, such inventions or the invention and utility model may be used only with the observance of the rights of all patent holders.

2. If a Eurasian patent and a patent of the Russian Federation for identical inventions or an identical invention and utility model having the same priority date are owned by the same person, that person may grant a right to any person to use the inventions or the invention and utility model under licence contracts concluded on the basis of these patents.

 

§ 6. Terminating and Reinstating a Patent

 

Article 1398. Declaring Invalid a Patent for an Invention, Utility Model or Industrial Design

1. A patent for an invention, utility model or industrial design may be declared invalid in full or in part if:

1) the invention, utility model or industrial design does not comply with the conditions of patentability established by this Code or with the requirements provided for by Item 4 of Article 1349 of this Code, as well as if an industrial design does not comply with the requirements provided for by Article 1231.1 of this Code;

2) the non-compliance of the documents of the application for an invention or utility model presented as of the date of its filing with the requirement for disclosing the essence of the invention or utility model fully enough for making the invention or utility model by an expert in a given field of technology;

3) the invention or utility model claim contained in the decision on issuance of the patent contains features which are not disclosed as of the date of filing the application in the documents presented as of this date (Item 2 of Article 1378) or the materials attached to the decision on issuance of a patent for an industrial design contain the articles' images comprising the essential features of the industrial design that lack the images presented as of the date of filing the application or the articles' images from which the essential features of the industrial design available on the images presented as of the date of filing the application are deleted (Item 3 of Article 1378);

4) the patent has been issued when there were several applications for identical inventions, utility models or industrial designs having one and the same priority date, in breach of the conditions envisaged by Article 1383 of this Code;

5) the patent has been issued with an indication therein as the author or patent holder of a person not being such in accordance with this Code or without an indication in the patent as the author or patent holder of the person being such in accordance with this Code.

2. The issuance of a patent for an invention, utility model or industrial design may be challenged by any person that has learned about the irregularities set out in Subitems 1-4 of Item 1 of this article, by means of filing an objection with the federal executive power body charged with intellectual property matters within its effective term fixed by Items 1-3 of Article 1363 of this Code.

The issuance of a patent for an invention, utility model or industrial design may be challenged with court by any person that has learned about the irregularities set out in Subitem 5 of Item 1 of this article within its effective term fixed by Items 1-3 of Article 1363 of this Code.

The issuance of a patent for an invention, utility model or industrial design may be also challenged with court by any person concerned upon the expiry of the effective term thereof on the grounds and in the procedure which are established by Paragraphs One and Two of this item.

3. During the time period while a patent for an invention is being disputed the patent holder is entitled to file an application for transforming a patent for an invention into a patent for a utility model, if the effective term of the patent for the invention has not exceeded the effective term of the patent for the utility model provided for by Item 1 of Article 1363 of this Code. The federal executive power body charged with intellectual property matters shall allow an application for transforming a patent for an invention into a patent for a utility model on condition of declaring the patent for the invention fully ineffective and of the utility model's compliance with the patentability requirements and conditions for utility models which are provided for by Item 4 of Article 1349, Article 1351, Subitem 2 of Item 2 of Article 1376 of this Code. The transformation shall not be effected, if a patent for an invention has been issued on the basis of the application in respect of which the proposal has been received to make a contract of the patent's alienation in the procedure established by Item 1 of Article 1366 of this Code, and this application is not withdrawn in compliance with Item 3 of Article 1366 of this Code as of the date when the application for the patent's transformation is filed.

In the event of transforming a patent for an invention into a patent for a utility model, the priority and date of filing the application shall be preserved.

4. A patent for an invention, utility model or industrial design shall be deemed invalid in full or in part under the decision of the federal executive power body charged with intellectual property matters adopted in accordance with Items 2 and 3 of Article 1248 of this Code or a court's decision that has come into force.

If a patent is deemed partially invalid, a new patent shall be issued for an invention, utility model or industrial design.

In the event of allowing an application for transforming a patent for an invention into a patent for utility model, a patent for the utility model shall be issued.

5. A patent for an invention, utility model or industrial design that has been declared invalid in full or in part shall be annulled from the date when the application for the patent was filed.

6. The licence contracts concluded on the basis of a patent for an invention, utility model or industrial design that was later deemed invalid shall remain effective in as much as they have been discharged as of the time when the decision on the patent's invalidity was issued.

7. Declaring a patent for an invention, utility model or industrial design as invalid shall mean the revocation of the decision of the federal executive power body charged with intellectual property matters on the issuance of the patent for the invention, utility model or industrial design (Article 1387) and the annulment of the entry made in the relevant state register (Item 1 of Article 1393).

 

Article 1399. The Early Termination of a Patent for an Invention, Utility Model or Industrial Design

A patent for an invention, utility model or industrial design shall be terminated before the due date:

on the basis of an application filed by the holder of the patent with the federal executive power body charged with intellectual property matters, as of the date of receipt of the application. If the patent is issued for a group of inventions, utility models or industrial designs, and the patent holder's application is not filed in respect of all the objects of patent rights included in the group the patent shall be terminated only in as much as it concerns the inventions, utility models or industrial designs indicated in the application;

if a patent duty was not paid when due for the maintenance of the patent for the invention, utility model or industrial design in effect, upon the expiry of the term established for the payment of the patent duty for the maintenance of the patent in effect.

 

Article 1400. Reinstating a Patent for an Invention, Utility Model or Industrial Design

1. A patent for an invention, utility model or industrial design terminated due to the fact that no patent duty has been paid within the established term when due for the maintenance of the patent in effect may be reinstated by the federal executive power body charged with intellectual property matters at the petition of the person who owned the patent or of the legal successor thereof. A petition for reinstatement of the patent may be filed with the said federal body within three years after the expiry of the patent duty payment term but before the expiry of the effective term of the patent envisaged by this Code.

2. The federal executive power body charged with intellectual property matters shall publish information in its gazette on the reinstatement of the patent for the invention, utility model or industrial design.

3. A person that started to use an invention, utility model or industrial design within the period between the termination of the patent for the invention, utility model or industrial design and the date of publication in the gazette of the federal executive power body charged with intellectual property matters of information on the reinstatement of the patent or that made the necessary preparations for it within the said period shall retain the right of further free-of-charge use thereof without the broadening of the scope of such use (right of after-use).

4. The right of after-use may be only transferred to another person jointly with the enterprise where an invention or a solution that only differs from the invention by the equivalent features (Item 3 of Article 1358), a utility model or industrial design was used or preparations for it were made.

 

§ 7. The Details of the Legal Protection and Use of Secret Inventions

 

Article 1401. Filing and Considering a Patent Application for a Secret Invention

1. The filing of a patent application for a secret invention (a secret invention application), the consideration and the handling of such application shall take place in the observance of the legislation on state secret.

2. Applications for secret inventions for which the secrecy classifications "special importance" or "top secret" have been established, and also the secret inventions deemed means of weaponry and military machinery and methods and means in the area of intelligence, counter-intelligence and operative search activities and for which the secrecy classification "secret" has been established shall be filed depending on the their topic with the federal executive power bodies, or the State Atomic Power Corporation Rosatom, the "Roscosmos" State Corporation on the Outer-Space Activity authorised by the Government of the Russian Federation (authorised bodies). Applications for other secret inventions shall be filed with the federal executive power body charged with intellectual property matters.

3. If it has been established when the federal executive power body charged with intellectual property matters considered an invention application that the information contained therein is classified as a state secret such application shall be classified as secret in the procedure established by the legislation on state secrets, and it shall be deemed a secret invention application.

It is prohibited to classify as secret an application filed by a foreign citizen or a foreign legal entity.

4. When a secret invention application is being examined the provisions of Articles 1384, 1386-1389 of the present Code shall be applicable respectively. In this case no information shall be published concerning the application.

5. While establishing the novelty of a secret invention the state of the art (Item 2 of Article 1350) shall also include -- if having an earlier priority -- the secret inventions patented in the Russian Federation and the secret inventions for which certificates of authorship have been issued in the USSR, unless the degree of secrecy established for these inventions exceeds that of the invention whose novelty is being assessed.

6. An objection against a decision taken on a secret invention application by the authorised body shall be considered in the procedure established by it. A decision taken on such objection may be challenged in court.

7. The secret invention applications are not subject to the provisions of Article 1379 of the present Code on the transformation of an invention application into a utility model application.

 

Article 1402. The State Registration of a Secret Invention and the Issuance of a Patent for It. Propagating Information on a Secret Invention

1. The state registration of a secret invention in the State Register of Inventions of the Russian Federation and the issuance of a patent for the secret invention shall be carried out by the federal executive power body charged with intellectual property matters, or if the decision on the issuance of a patent for the secret invention has taken by an authorised body, by that body. The authorised body that has registered a secret invention and issued a patent for a secret invention shall notify the federal executive power body charged with intellectual property matters accordingly.

The authorised body that has registered a secret invention and has issued a patent for it shall make amendments relating to the correction of obvious and technical errors in the patent for the secret invention and/or the State Register of Inventions of the Russian Federation.

2. No information shall be published on applications and patents for secret inventions and also on the amendments relating thereto made to the State Register of Inventions of the Russian Federation. Information about such patents shall be passed in accordance with the legislation on state secrets.

 

Article 1403. Changing the Degree of Secrecy and Declassifying Inventions

1. A change of the degree of secrecy and the declassification of inventions, and also the change and removal of secrecy stamps from the documents of a secret invention application or patent shall take place in the procedure established by the legislation on state secrets.

2. When the degree of secrecy of an invention is stepped up, the federal executive power body charged with intellectual property matters shall hand over the documents of the application for the secret invention according to their topic to the relevant authorised body. The further consideration of the application of which examination has not been completed by the said federal body shall be the responsibility of the authorised body. When the degree of secrecy of an invention is stepped down the further examination of the application for the secret invention shall be carried out by the same empowered body that had been considering it before.

3. When an invention is declassified, the authorised body shall hand over the declassified application documents it has to the federal executive power body charged with intellectual property matters. The further examination of the application of which examination has not been completed by the empowered body shall be the responsibility of the said federal body.

 

Article 1404. Deeming as Invalid a Secret Invention Patent Issued by an Authorised Body

An objection against the issuance by an authorised body of a patent for a secret invention on the grounds set out in Subitems 1-4 of Item 1 of Article 1398 of the present Code shall be filed with the authorised body and it shall be considered in the procedure established by it. A decision of the authorised body taken on the objection shall be confirmed by the head of that body, and it shall enter into force on the day when it is confirmed and it may be challenged in court.

 

Article 1405. The Exclusive Right to a Secret Invention

1. The use of a secret invention and the disposal of an exclusive right to a secret invention shall take place in the observance of the legislation on state secrets.

2. The transfer of the exclusive right under a contract of alienation of a patent and granting of the right to use a secret invention under licence contract are subject to the state registration with the agency that has issued the patent for the secret invention or with the legal successor thereof or, in the absence of the legal successor, with the federal executive power body charged with intellectual property matters.

3. In respect of a secret invention it is prohibited to make a public offer to conclude a contract of alienation of a patent and an open licence statement envisaged by Item 1 of Article 1366 and Item 1 of Article 1368 of the present Code respectively.

4. The compulsory licence envisaged by Article 1362 of the present Code shall not be granted in respect of a secret invention.

5. The following shall not be deemed a breach of the exclusive right of the holder of a patent for a secret invention: the actions envisaged by Article 1359 of the present Code, and also the use of the secret invention by a person who on legal grounds did not know or could not know of the existence of a patent for the invention. After the invention is declassified or after the said person is notified by the holder of the patent that the patent for the invention exists that person shall stop using the invention or conclude a licence contract with the holder of the patent, except for cases when a right of prior use existed.

6. The exclusive right to a secret invention is not subject to levy of execution.

 

§ 8. The Protection of the Rights of Authors and Patent Holders

 

Article 1406. Disputes Relating to the Protection of Patent Rights

1. Disputes relating to the protection of patent rights shall be considered by a court. Such disputes include, without limitation, disputes:

1) on the authorship of an invention, utility model or industrial design;

2) on the establishment of the patent holder;

3) on a breach of the exclusive right to an invention, utility model or industrial design;

4) on the conclusion, performance, amendment and termination of contracts of assignment of an exclusive right (alienation of a patent) and licence contracts for the use of an invention, utility model or industrial design;

5) on a right of prior use;

6) on a right of after-use;

7) on the amount of, term and procedure for paying, a fee;

8) abrogated from October 1, 2014.

2. In the cases specified in Articles 1387, 1390, 1391, 1398, 1401 and 1404 of the present Code the protection of patent rights is carried out on administrative lines in accordance with Items 2 and 3 of Article 1248 of the present Code.

 

Article 1406.1. Liability for Breaching the Exclusive Right to an Invention, Utility Model or Industrial Design

Should the exclusive right to an invention, utility model or industrial design be violated, the author or other right holder, along with the use of other applicable remedies and punitive sanctions established by this Code (Articles 1250, 1252 and 1253), are entitled to demand at the choice thereof of the violator payment of the following compensation instead of repair for damages:

1) in the amount from 10,000 to 5,000,000 roubles as determined at the discretion of the court on the basis of the nature of violation;

2) in the twofold cost of the right to use the invention, useful model or industrial design determined on the basis of the price normally charged under comparable circumstances for the legal use of the invention, useful model or industrial design in the way that the infringer has used.

 

Article 1407. The Publication of a Court's Decision on Infringement of a Patent

In accordance with Subitem 5 of Item 1 of Article 1252 of the present Code a patent holder is entitled to demand that a court's decision on the illegal use of an invention, utility model or industrial design or another infringement of his/its rights be published in the gazette of the federal executive power body charged with intellectual property matters.

 

Chapter 72. The Patent Law

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