Registration and maintenance of intellectual property and rights

Types of Intellectual Property Objects and Their Legal Regime 

Registration of intellectual property rights 

State registration is required for the recognition of exclusive rights to certain objects, in particular, to inventions, trademarks, industrial designs, utility models, selection achievements, etc. 

Mandatory registration means that the exclusive right arises only after passing the established procedure and entering information into the relevant state register. Without this stage, protection of rights is not granted, and any actions to use or protect the object are not legally significant. For example, the right to a trademark arises from the date of state registration with Rospatent and is valid within the specified classes of the Nice Classification. 

Voluntary registration is provided, in particular, for computer programs and databases. Although the exclusive right to these objects arises at the time of their creation, registration with Rospatent serves as evidence of authorship and date of appearance, which is especially important when protecting rights in the event of disputes. 

Registration can be carried out nationally and internationally. International trademark registrations are carried out through the Madrid System, which is coordinated by the World Intellectual Property Organization (WIPO). For inventions and industrial designs, it is possible to file an international application under the PCT (Patent Cooperation Treaty) system, which allows the applicant to choose the countries in which patent protection will be valid. 

Registration is accompanied by an examination of the application aimed at establishing the compliance of the object with the established requirements. For inventions, utility models and industrial designs, formal and substantive proceedings are carried out; for trademarks – checking for identity and similarity with previously registered designations. Violation of formal requirements or lack of protectability may result in refusal of registration.

Examination and verification of intellectual property objects 

The examination makes it possible to assess the protectability of the object, determine the risks of refusal of registration and identify potential conflicts with the existing rights of third parties. 

Protectability is the ability of an object to meet the criteria for legal protection established by law. For example: 

• the invention must be new, have an inventive step and be industrially applicable; 

• trademark — to differ from previously registered designations and have distinctiveness; 

• industrial design – to have original external features that give the product individuality. 

As part of the examination, the following is carried out: 

• search check (for identity and similarity); 

• analysis of the legal status (whether there are already registered rights to a similar object); 

• assessment of the prospects for registration, taking into account the requirements of the Civil Code of the Russian Federation, the practice of Rospatent and court decisions. 

When conducting an examination of trademarks, special attention is paid to confusingly similar to existing designations. The presence of even a partial phonetic or visual match may be grounds for refusal of registration. 

For computer programs and databases, the originality of the structure and code is analyzed, the absence of borrowing from previously created products without the permission of the copyright holder is checked. 

Expertise is also relevant when concluding transactions where the IP object is the subject of a contract. In such cases, the legal purity of the object is assessed: the presence of rights, the absence of encumbrances, the possibility of legal transfer of rights to third parties.

Intellectual Property Rights Management 

The management of such rights involves their use, transfer, licensing, pledge, inheritance, as well as inclusion in the property complex of the enterprise. 

Transfer of Exclusive Rights

The transfer of rights can be carried out in the form of: 

• alienation agreement (full transfer of the exclusive right); 

• inheritance, if the rights continue to be valid after the death of the right holder; 

• contribution to the authorized capital of a legal entity; 

• donation (subject to the restrictions established by law). 

The transfer of exclusive rights is subject to state registration in cases where the object itself is registered (for example, a trademark, patent, industrial design). 

Licensing

A license agreement allows you to use an IP object within the limits established by the agreement. Possible: 

• exclusive license – the use is transferred to one person with a ban on use by others; 

• non-exclusive license – the copyright holder can grant licenses to several persons at the same time; 

• Simple (open) license does not require individual approval and can be offered to an unlimited number of persons (for example, in the form of an offer). 

The conclusion of a license agreement for registered objects is also subject to state registration. 

Encumbrance of rights

IP objects can be used as a security for obligations (for example, a pledge of an exclusive right). Such a transaction must be registered in the relevant register. 

Manage your rights portfolio

Large companies keep systematic records of IP objects, track the validity of rights, control the availability of licenses, timely renew registrations and conduct IP audits as part of corporate governance and M&A transactions.

Protection of intellectual property rights 

The protection of exclusive rights to intellectual property is regulated by the provisions of Chapter 69 of the Civil Code of the Russian Federation and includes both pre-trial and judicial mechanisms. Depending on the nature of the violation and the object, the provisions of the Code of Administrative Offenses and the Criminal Code of the Russian Federation may also be involved in the defense. 

Methods of protection:

• recognition of the right; 

• suppression of actions that violate the right or create a threat of its violation; 

• compensation for losses or payment of compensation; 

• seizure and destruction of counterfeit products; 

• publication of a court decision on the violation. 

The Civil Code allows for both in-kind restoration of the violated right (for example, termination of the illegal use of a trademark) and monetary compensation. At the discretion of the right holder, it can be determined either in the amount of losses or in a fixed amount from 10,000 to 5,000,000 rubles. 

Pre-trial procedure

In many cases, a pre-trial claim is a mandatory stage. This applies, in particular, to violations of copyrights, trademarks, patents. The claim indicates the nature of the violation, evidence, requirements for the cessation of illegal actions and the terms of compensation. If the claim is ignored, it is possible to apply to the arbitration court. 

Judicial protection

Competence in IP cases is attributed to arbitration courts. Disputes are considered according to the rules of Chapter 30 of the Arbitration Procedure Code of the Russian Federation, and if there is a foreign element, taking into account the rules of private international law. 

In practice, many categories of cases are considered by the Intellectual Property Court , a specialized court in the system of arbitration courts of the Russian Federation, which has the rights of a cassation and appeal instance in certain cases. 

Administrative and criminal liability:

• Article 14.10 of the Code of Administrative Offenses of the Russian Federation — illegal use of a trademark; 

• Article 7.12 of the Code of Administrative Offences of the Russian Federation – violation of copyright and related rights; 

• Article 180 of the Criminal Code of the Russian Federation - illegal use of means of individualization; 

• Article 146 of the Criminal Code of the Russian Federation - violation of copyright and related rights on a large scale. 

Penalties include fines, confiscation of products, suspension of activities and, in some cases, imprisonment.

Features for foreign rights holders 

Foreign legal entities that do not have a permanent presence in the Russian Federation have the right to register and protect intellectual property on an equal basis with Russian right holders. This is enshrined in the provisions of the Civil Code of the Russian Federation and international treaties to which Russia is a party (the Paris Convention for the Protection of Industrial Property, the Berne Convention and the TRIPS Agreement). 

Registration of IP objects by foreign companies in the Russian Federation

Registration of IP objects (trademarks, patents, computer programs, etc.) is carried out through a representative – a patent attorney registered with Rospatent. A foreign person may not independently submit documents without the participation of an attorney, except in cases provided for by international treaties. 

Documents submitted by foreign applicants must be legalized or apostilled in accordance with the established procedure, as well as translated into Russian with notarization. 

Madrid System (Trademark Registration)

The Madrid System allows you to file a single application for protection in several countries, including Russia, through WIPO. 

PCT (Patent Cooperation Treaty)

The PCT (Patent Cooperation Treaty) is used for the international registration of inventions and utility models. 

Hague System

The Hague System is designed for the registration of industrial designs. 

Applications filed through international mechanisms are considered by Rospatent as a national office, and after approval, the object receives protection in the territory of the Russian Federation. 

Law enforcement practice and protection of rights

Foreign right holders can protect their rights in the Russian jurisdiction, including: 

• send claims; 

• participate in court proceedings; 

• submit applications to the customs authorities for the inclusion of their IP objects in the customs register to combat counterfeiting. 

Despite the complexity of the procedures, the Russian system provides foreign companies with effective tools for registering, managing and protecting their intellectual property rights.