Design patent practice in Russia

David: Hello from Moscow. I'm David Aylen. 

Ksenia: I'm Ksenia Mamontova. 

David: We'd like to tell you a little bit about design patent protection in Russia. First, the legal framework. Part 4 of the Civil Code sets out the protection for all forms of intellectual property including design patents. The Hague System for obtaining industrial designs was introduced in Russia in February of 2018. This means that there are three possible ways to consider obtaining design patent rights in Russia. The first is direct national filings. The second is using the international system via Hague and the third is the soon to be introduced Eurasian Patent Design System, which will cover Russia and many other regions. Now let's talk about the basics. Ksenia?

Ksenia: Thanks. The term patents in Russia includes inventions, utility matters and industrial designs. Generally speaking in order to be patentable in Russia the design should constitute an eligible subject matter, be it novel and regional. The design should be new and original in its essential features such as shape, configuration, outline, the texture or finish of the material and so on. There is an absolute novelty requirement. Also there is a 12 month grace period for disclosures made by applicant or authors. Total term of protection for industrial design patent is 25 years from the filing date or the international registration date for Hague designs. This period comes in 5 year fractions meaning that the design should be renewed each 5 years. Examination of industrial design application takes place in two distinct stages. The examination as to formalities and substantive examination. There is no requirement to request examination. It is automatic. For Hague filings, the formalities are checked at the international stage. Russian Patent Office cannot refuse on formalities grounds to register an international application that designates Russia. Also, the Russian requirement to provide a written description as a part of the industrial design application is not applicable to international design filings. Convention priority might be granted on the in case there is certified copy of priority application is submitted to the Russian Patent Office. This requirement applies to both direct and Hague filings. There is a unity of the design requirement which is applicable for both direct and Hague filings but with some differences. Direct filings are screened for unity at the formality stage when it is possible to argue the objection. Hague applications do not enjoy this privilege. At the substantive examination stage, designs are checked for unity again, novelty and originality. The unity objection now could be overcome only by choosing a single design or a group of designs which meets the requirement of unity. The excluded designs may be filed as divisional applications directly at the Russian Patent Office. In case of substantive objection for Russian direct filing, the Russian Patent Office will issue of a section prior to issuance of a final refusal and the applicant will have an opportunity to provide arguments and additional documents within a set period of time. For Hague applications, in case of substantive objection, the Russian Patent Office issues a refusal which can only be appealed at the time for patent disputes. Normally design patent applications are not published before grant. However, the applicant has an option to request a publication once it has completed examination for formalities. The purpose of early publication is to be in a position to claim compensation from the publication date compared to the registration date. It should be noted that if the applicant chooses to publish application earlier, any third party has the right to review the persecution file and can submit an informal letter of protest or written observations. As for international design applications, the option for the deferred publication is not available for applications designating Russia. 

Thinking about timeline for Russia direct filings, it takes from 6 to 12 months on average from filing registration for Russian design filings. If no objection are raised, the formality stage here usually lasts about a month. Substantive examination allows for 5 to 7 months after which a notice of allowance is issued. After payment of the final fees registration usually happens within a month. The timeline for Hague System filings is essentially the same, from 6 to 12 months. Formalities are checked at the international phase after which the application is registered and published. Russian IP Office has 12 months to issue statement of grant of protection or notice of refusal. 

David: I'd like to tell you a little bit about infringement and validity. The important thing to note here is that it's a life ... system. What that means is that infringement and validity are tested in separate venues. Infringement proceedings start in the commercial courts and go on appeal to the Commercial Court of Appeal. There's a further appeal to the IP Court and with leave to the Supreme Court. On the other hand, validity is tested at the first instance in the Patent Chamber, which is a ... judicial body within the Patent Office. On appeal from that decision, it goes to the IP Court and further on appeal to the Presidium of the IP Court and with leave, which rarely happens to the Supreme Court. 

Thanks for tuning in. Remember there are three basic ways to obtain a design patent in Russia. The first is international filing. The second is Hague System filing and the third is the soon to be introduced Eurasian filing. Thank you very much.