Patenting and support of patent rights

Procedure for registering a patent 

Registration of a patent for an invention, utility model or industrial design is carried out through the Federal Service for Intellectual Property (Rospatent) in accordance with the procedure established by Part Four of the Civil Code of the Russian Federation and administrative regulations. 

1. Preparation of the application

The composition of the application depends on the type of object, but it necessarily includes: 

• application for the grant of a patent; 

• description of the object; 

• claims of the invention or model; 

• drawings (if they are necessary to understand the essence of the solution); 

• abstract (only for inventions); 

• information about the applicant and the author; 

• a document confirming the payment of the fee. 

Mistakes at this stage can lead to a refusal to register, so compliance with formal and substantive requirements for each document is required. 

2. Filing an application with Rospatent

The application is submitted electronically or on paper. The filing date is officially recorded and used to establish priority. For foreign legal entities, filing is possible only through a patent attorney registered in the Russian Federation. 

3. Formal examination

At this stage, Rospatent checks the completeness and correctness of the documents, the presence of grounds for accepting the application for consideration. In case of deficiencies, a request is sent to the applicant with a request for elimination. 

4. Substantive examination

• For inventions and industrial designs, a full examination is carried out, including verification of novelty, inventive step and industrial applicability. 

• For utility models, only a formal examination is carried out, without an assessment of the inventive step. 

5. Decision Making and Registration

In case of a positive conclusion of the examination, a decision is made to grant a patent. After payment of the relevant state fee, information about the patent is entered into the State Register of Inventions, Utility Models or Industrial Designs of the Russian Federation, depending on the object. 

6. Publication and grant of a patent

After registration, Rospatent publishes information about the granted patent in the official gazette. The applicant is sent a document of protection – a patent confirming the exclusive right.

Patent Term and Renewal 

The term of validity of a patent depends on the type of protected object and is established by the Civil Code of the Russian Federation. After the expiration of the base period, the exclusive right can be extended - subject to the established conditions and payment of the fee. 

Validity depending on the object

Renewal procedure

An application for renewal is submitted to Rospatent no later than the last day of the patent. For some properties, it is possible to file within a grace period of six months after the expiration of the deadline, subject to the payment of an increased fee. 

When extending a patent, the established state fee is paid. The amount depends on the type of property and the number of additional years. 

Payment of annual patent maintenance fees

Along with renewal, the patent owner is required to pay annual maintenance fees. Fees increase with each year of validity and must be paid before the end of the corresponding year. Failure to pay the fee entails the termination of the exclusive right, which can be restored within 3 years subject to a valid reason and payment of restoration fees.

Support of patent rights 

Patent support is a set of legal and administrative actions aimed at maintaining the legal protection of the object, updating data in registers and lawfully including the patent in economic circulation. Patent rights require regular accounting, renewal and correct execution of transactions. 

Maintaining the patent in force

The patent remains valid only if the annual fees are paid on time. The amount of the fee depends on the year of validity of the patent and the object of protection. Failure to meet the deadline for payment may result in the termination of the patent and the loss of exclusive rights. 

Making changes to patent information

The right holder is obliged to notify Rospatent of changes in the following information: 

• name or address of the organization; 

• reorganization (merger, affiliation, division); 

• change of contact person or address; 

• Changing information about the author. 

Changes are made upon application with the attachment of supporting documents and payment of the established fee. Untimely updating of information may lead to complications in the protection of rights or the conclusion of transactions. 

Transfer of Patent Rights

The rights to a patent can be transferred in full (under an alienation agreement) or in part (under a license agreement). Such agreements are subject to state registration with Rospatent. Until the moment of registration, the transfer of rights has no legal force in relation to third parties. 

The transfer of rights can be carried out: 

• as part of an M&A transaction; 

• to the authorized capital of another legal entity; 

• under a franchise agreement; 

• under a commercial concession agreement. 

Licensing and Rights Management

A license agreement can be exclusive or non-exclusive. The contract indicates: the scope of the transferred rights, territory, term, amount of remuneration, the right to processing. Registration of the agreement is necessary for it to enter into force. 

Accounting and tax accounting of patents

A patent can be accounted for as an intangible asset of the enterprise. It is subject to depreciation and can be the subject of pledge. When transferring rights, it is important to correctly determine the tax consequences (VAT, income tax, transfer pricing features in the international transfer of rights).

Reasons for refusal of registration and typical problems 

Patenting involves passing a formal and, in most cases, substantive examination. Refusal to register can be caused both by the objective impossibility of providing legal protection and by mistakes made at the stage of preparation and filing of the application. All the grounds for refusal are set out in Part 4 of the Civil Code of the Russian Federation and the regulations of Rospatent. 

Failure to meet the criteria for eligibility

• Inventions: lack of inventive step, unverifiable industrial applicability, description of a well-known technical solution. 

• Utility models: lack of novelty or industrial applicability. 

• Industrial designs: lack of originality, repetition of existing design. 

On this basis, a patent is refused even with correctly executed documents. 

Incorrectly chosen patentable object

Applicants often file an application as an invention while the solution meets the requirements of the utility model, or vice versa. This leads to a refusal or a significant delay in the procedure (up to the need to submit a new application). 

Errors in claims or description

• The formula may not be specific enough or legally incorrect; 

• Description does not allow us to understand the essence of the object; 

• Inconsistency between the formula, description and drawings; 

• Non-obvious contradictions between technical characteristics and declared properties. 

Re-patentability

Rospatent refuses to register if a similar solution is already described in a scientific publication, in another patent or has been claimed earlier. Such materials are considered to be "prior art" and can be found during a substantive examination. 

Formal violations

• incomplete set of documents; 

• no duty; 

• incorrect information about the applicant; 

• lack of a power of attorney when applying through an attorney; 

• incorrectly drawn up drawings and abstract. 

Formal errors can be eliminated in the process, but if they are not eliminated on time, the application is considered withdrawn. 

Eligibility Disputes

If the applicant is not the author or does not have documentary evidence of the rights to the result of intellectual activity (for example, the development was carried out by a contractor or an employee without proper registration), it is possible to challenge the patent in the future.

Protection of patent rights 

An exclusive right certified by a patent is protected by law from the moment of state registration. Violation of rights to a patented object entails civil, in some cases — administrative and criminal liability. 

Scope of the Exclusive Right

The copyright holder has the right to: 

• use the object at your discretion; 

• allow or prohibit use by third parties; 

• transfer rights in whole or in part; 

• to recover compensation for illegal use; 

• to demand the destruction of counterfeit products. 

The scope of protection is determined by the claims of the invention or the description of the utility model (design) included in the patent. 

Patent infringement

The violation is recognized as: 

• use of the patented solution without the consent of the copyright holder; 

• production, sale, import, storage of goods using a protected facility; 

• transfer of technology with the subject matter of patent protection included without a license. 

Violation can be both intentional and negligent. In both cases, sanctions are possible. 

Ways to protect rights

• Pre-trial procedure: sending a claim, negotiations, voluntary settlement; 

• Judicial protection: claims to the arbitration court, claims for the recovery of compensation, damages, termination of use, destruction of goods; 

• Other measures: publication of a court decision, inclusion in the customs register of IP objects (TROIS), blocking of infringing content on online platforms. 

The following is of key importance: 

• the presence of a patent confirming the exclusive right; 

• priority date; 

• the fact of using the object (for example, comparing the formula or drawings); 

• the presence of similarity in technical essence; 

• refusal of the offender to voluntarily cease violations. 

Liability for violation

In accordance with Article 1406.1 of the Civil Code of the Russian Federation, at the discretion of the right holder, the following may be collected: 

• compensation for losses (including lost profits); 

• compensation from 10,000 to 5,000,000 rubles; 

• compensation in the double amount of the cost of the right of use. 

In case of gross violations, it is possible to bring to administrative (the Code of Administrative Offenses of the Russian Federation) or criminal liability (Article 147 of the Criminal Code of the Russian Federation).