How the ongoing electronic IP revolution is shaping Russian IP practice

5 minute read
12 November 2020

This article was originally published on IAM Media.

Among various changes to the IP system in recent years, Russia recently introduced legal protection for geographical indications, which runs parallel with the earlier appellations of origin system and is designed to be easier to obtain. A few minutes after midnight on the day that the new system became effective (27 July 2020), Gowling WLG filed the first ever Russian application of this kind for a brand of famous Californian wines. Needless to say, the application was electronic, which would not have been possible just a few years ago – demonstrating just one example of the extent of the electronic revolution that has been taking place in Russian IP practice over the past decade.

Current state of affairs

In terms of electronic processes, Russia currently accepts:

  • electronic filings of all applications – patents, utility models, design patents, trademarks, appellations of origin or GIs can all be filed either on paper or electronically;
  • electronic publications – including publication of new trademark applications within a few days after filing;
  • electronic correspondence during prosecution up to the grant and payment of the final fee – any correspondence may be made either electronically or on paper; if the application was filed on paper, the applicant can later switch to electronic communications or vice versa, while in case of appeals filed on paper, an electronic copy must be provided;
  • electronic filing of post-grant actions – oppositions, assignments and licence recordal, maintenance, renewals and other post-grant correspondence may be filed electronically or on paper; in the case of post-grant oppositions filed on paper, an electronic copy must be provided;
  • online participation in Russia Patent and Trademark Office (Rospatent) hearings of both appeals and oppositions;
  • electronic filings with the courts – this applies to both initial complaints and further submissions;
  • electronic access to court databases – including texts of most decisions and rulings;
  • limited electronic access to case files for parties;
  • online participation in court hearings on a limited basis; and
  • court decisions in electronic form with the e-signatures of judges.

Changes scheduled for 2021

As of 17 January 2021, Russia is also due to have:

  • electronic letters patent;
  • electronic trademark and other certificates; and
  • 3D models in patent applications.

Although it remains unclear whether it will be possible to file pre-grant oppositions (protests) electronically, this also seems likely.

Implications of electronic processes

There are several immediate implications of this impressive switch to electronic.

First, given that examiners now deal with electronic files, rather than having to print every document, examinations are generally quicker. Even with full substantive examination on both absolute and relative grounds, today's typical turnover for examination of trademark applications can be as little as five months, even without requesting an accelerated procedure. One wonders in that case whether due regard is being accorded to senior foreign applications claiming the benefit of Paris Convention priority.

Second, geographical location plays a smaller role in any matter. The switch to electronic requires fewer visits to both Rospatent and the courts. This, in turn, reduces the need for a representative to be physically present in a particular city and allows greater geographical distribution of work among IP lawyers living across Russia. It lowers travel time and costs and accords more flexibility to Russian IP lawyers and cost savings to their clients.

Third, electronic processes arguably give rise to risky business practices. For example, a budget alternative legal service provider (ALSP) might secure a patent or trademark filing project at an extremely low price. The client may not be aware that the ALSP has an arrangement, for a nominal fee, with a registered local agent who has rented out their e-signature to the ALSP. In that scenario, even though it appears to Rospatent that a duly qualified practitioner is managing the process, in fact the electronic signature is being used by backroom administrative staff as a matter of routine. Such arrangements are feasible in the Russian and Eurasian patent and trademark offices as they have comparable electronic means. These practices greatly decrease the quality of services and at times end up in the unrecoverable losses of abandoned applications. For this reason, anyone alerted to an unusually low price point should confirm that the firm has a real office in Russia with a credible number of Russia-admitted patent and trademark attorneys.

The electronic revolution looks set to provide exciting opportunities now and in the years ahead, as Russia continues to be a leader in the digital workplace.

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