PATENT
PROCEEDINGS FAQ

Russian Civil Code provides patent protection for products (including a device, substance, microorganism strain, culture of cells of plants or animals) and methods (a process of conducting actions on a material object with the help of material means). Methods comprising of surgical and therapeutic treatments as well as computer-related solutions are patentable. Business methods and software are not patentable. Methods of cloning a human being, methods of modifying the genetic integrity of cells of a human being's embryonic line, the use of human embryos for industrial and commercial purposes, may not be objects for patentability.

An employer is entitled to file applications and obtain patents for all inventions made by its employee throughout the course of their scheduled work. Independent contractors - natural persons - are not employees, so the right for the invention should be declared in the contract of independent contractors. If an invention is created under a work and labor contract, or under a contract of scientific or technological research, which did not directly envision the creation of the specific invention, the right to obtain a patent and the exclusive right for such invention shall belong to the contractor (performer), unless the labor contract provides otherwise. In case of multiple inventors, all or any of them may be patent owner(s), depending on agreement amongst the inventors.

At any time, patent ownership may be transferred in full by an alienation or assignment agreement, or in part by a license agreement. All such agreements must be recorded in the Russian PTO Registry and are not valid until recorded.

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Intellectual Property FAQ

Patent Proceedings FAQ



1. Types of protectable inventions

Russian Civil Code provides patent protection for products (including a device, substance, microorganism strain, culture of cells of plants or animals) and methods (a process of conducting actions on a material object with the help of material means). Methods comprising of surgical and therapeutic treatments as well as computer-related solutions are patentable. Business methods and software are not patentable. Methods of cloning a human being, methods of modifying the genetic integrity of cells of a human being's embryonic line, the use of human embryos for industrial and commercial purposes, may not be objects for patentability.
2. Patent ownership

An employer is entitled to file applications and obtain patents for all inventions made by its employee throughout the course of their scheduled work. Independent contractors - natural persons - are not employees, so the right for the invention should be declared in the contract of independent contractors. If an invention is created under a work and labor contract, or under a contract of scientific or technological research, which did not directly envision the creation of the specific invention, the right to obtain a patent and the exclusive right for such invention shall belong to the contractor (performer), unless the labor contract provides otherwise. In case of multiple inventors, all or any of them may be patent owner(s), depending on agreement amongst the inventors.

At any time, patent ownership may be transferred in full by an alienation or assignment agreement, or in part by a license agreement. All such agreements must be recorded in the Russian PTO Registry and are not valid until recorded.
3. Patenting timetable and costs

After a patent application is filed and the filing fee is paid, the preliminary examination takes approximately 2-3 months. In the case of a positive result of the formal examination, a request for a substantive examination should be submitted within 3 years from the filing date. After the request for substantive examination is accepted (provided that the examination fee is paid), the first office action from the Russian PTO is usually received within 10-12 months. A response to the office action should be filed within 2 month after receipt of said office action, but the term of response can be extended up to 12 months (provided that the appropriate fee is paid). After an official notification on the readiness to grant a patent is issued and granting and publication fee is paid, the patent is usually published within 4-6 months. Overall, the process from filing the application to receiving a patent is approximately two years.

The costs of patenting an invention may vary greatly depending on the complexity and the volume of the application. The official fees for filing, substantive examination, and patent granting, amount from 1000 to 1500 USD. As for Official Fees, please take notice of the Russian Statute of Fees enacted on December 30, 2008, which stipulates that fees are established in Russian Rubles. Attorney fees may vary from 1500 to 5000 USD. The costs may be significantly higher in appeal or opposition proceedings.

It is obligatory that the applicant discloses prior art within the description in the Russian patent application and to indicate the closest prior art. If the applicant neglected to provide prior art references, the examiner may require the applicant to include such information in the application. The lack of such information in the application may not influence the validity of a granted patent.

An applicant may file one or more divisional application(s) if the first application is not finally refused, withdrawn or if a patent is not registered (Art. 1381 of the Russian CC). If the applicant wishes to use the priority of the first application, the divisional application(s) may not claim any new matters.

A decision of refusal from the examining departments may be appealed with the Patent Dispute Chamber of the Russian Patent Office. A decision of refusal from the Patent Dispute Chamber may be appealed in a court of justice, namely in the Moscow civil court.

In the Russian Federation, a granting of a patent may be disputed and opposed in the Russian Patent Dispute Chamber, only after the patent is granted. Measures for opposing a patent application, which is currently under examination, are not available.

Although the Russian patent office requires priority disputes between applicants of the same invention to be resolved, it does not provide any mechanism for resolving such conflicts. Art.1383 of the Russian Civil Code stipulates that if in the process of examination it is established that different applicants have filed applications for identical inventions and claim the same priority date, a patent may be granted to only one of the applications and to the applicant, who is determined by an agreement between the applicants. If such an agreement is not submitted to the Russian PTO with 12 months after the notification from the Russian PTO, all applications are deemed withdrawn. The 12-month term can be extended in the same way as other extendable terms, i.e. by 10 months. If such an agreement is timely submitted to the Russian PTO, upon the patent granting, all of the inventors indicated in the agreement shall be recognized as co-authors with respect to identical inventions.

A granted patent may be modified with respect of its claims only via the decision of the Patent Dispute Chamber of the Russian PTO and only if a third party has not initiated an infringement procedure. The Russian courts of justice may not amend the patent claims during an infringement lawsuit.

Generally the duration of patent protection in the Russia Federation is 20 years from the patent application's filing date. If an invention is related to therapeutic means, a pesticide or an agrochemical, which needs governmental authorization for use, and if more than 5 years have elapsed from the patent application filing date until the date of obtaining such an authorization, the term of validity can be extended by a petition of the patent owner. The total extension for the patent protection can be up to 5 years.
A utility model is valid for 10 years from the utility model's filing date and can be extended up to 3 years by a petition from the owner of the utility model.

In the Russian Federation, a requirement of 'absolute novelty' for the patentability of intellectual property is established. For inventions, there are no exceptions from the 'absolute novelty' requirement. For utility models, a prior art may include information on means of the same function as the claimed model, which are published worldwide, and information on the use thereof, only on the territory of the Russian Federation, not worldwide.

The legal standard for an inventive step, which is established by Article 1350 of the Russian Civil Code, is drafted very general and laconic: "An invention has an inventive step, if a specialist determined that it does not obviously follow from prior art". Prior art may include technical solutions from any technical field in order to anticipate any separate feature(s) of the claimed invention.