Work to do: why Russia needs an IP court

01-02-2012

Valentina Orlova

In 2011, intellectual property in general, and trademarks in particular, have continued to be in the spotlight for Russian lawmakers, courts, administrative authorities and rights holders alike.

Russia’s principal achievement in 2011 was to adopt a federal constitutional law to set up an Intellectual Rights Court (IRC). In fact, the idea of creating a court to hear disputes over IP rights is nothing new. Under the Russian Federation Patents Law and the Russian Federation Law On Trademarks, Service Marks and Geographical Indications, passed as early as 1992, Russia created a prototype of such a court, a Higher Patents Chamber.

For a number of reasons, however, neither the Higher Patents Chamber, nor any similar court, was ever created.

In 2003 and 2004, Rospatent, Russia’s IP authority, the Office of the Attorney General, and the Russian Academy of Justice carried out a study into the prospects of setting up a specialised IP court in Russia. The study found that the proposal was viable. It also included suggestions as to the court’s responsibilities, selection of judges, and even the technical aspects of its work.

This idea received fresh impetus in 2009 and 2010. Opinions were mixed, but the experience of IP litigation, especially when it came to copyright and related rights, was probably one of the key reasons why the IRC bill was passed.

It is difficult to say whether there have been few or many court rulings on IP disputes. Speaking at a round table that discussed the creation of the IRC, Anton Ivanov, chairman of the Supreme Arbitration Court, told the audience that the IRC would comprise 30 judges. According to Ivanov, that head count would match the judges’ actual workload and the total average annual number of cases which could potentially fall under the court’s jurisdiction.

Ivanov also pointed out that this number was expected to grow given, among other things, that the judges of the IRC would have greater professional expertise.

“THE ISSUE OF HOW JUDGES SHOULD BE TRAINED TO SERVE ON THE IRC IS HIGH ON THE AGENDA. IT IS PARTICULARLY PROBLEMATIC WITH PATENT DISPUTES, WHICH REQUIRE SPECIALIST KNOWLEDGE.”

The issue of how judges should be trained to serve on the IRC is high on the agenda. It is particularly problematic with patent disputes, which require specialist knowledge in a variety of scientific and technical fields (including chemistry, physics, biotechnology, state-of-the-art manufacturing technology, technical solutions and related software, etc). The judges who sit in foreign IP courts include experts in a range of fields, and not just lawyers.

In Russia, only those with university degrees in law are eligible to become judges. As litigants often question the impartiality of expert witnesses, plans are being considered to arrange for technical experts to be on the court’s staff. State educational institutions, such as the Russian State IP Academy and Russian Academy of Justice, are in a position to run special training courses to prepare staff to work in the IRC.

The jurisdiction of the IRC will, of course, be rather limited. It will be a specialised state commercial (‘arbitration’) court with original and cassation jurisdiction to hear disputes involving the enforcement of intellectual rights. Such disputes will include only a very limited number over copyright and related rights. However, many IP experts believe that it will be only a matter of time before the court’s jurisdiction is expanded to include more types of such disputes.

Practical experience with Part 4 of the Russian Civil Code has shown that it needs to be supplemented with additional provisions and, in some cases, amended. Some of the code’s provisions, especially those that are new to Russian IP law, are not sufficiently clear. As a result, courts have offered differing interpretations of the legislation when hearing disputes.

This highlighted a need for clarifications from Russia’s supreme courts. Such clarifications were provided in a joint resolution of the Plenum of the Supreme Court and Plenum of the Supreme Arbitration Court, dated March 26, 2009: On certain issues that have resulted from the entry into force of part four of the Russian Civil Code.

The clarifications cover all types of IP protected in Russia and a significant number of aspects involved in their protection and enforcement, for example: the copying levy payable to authors, performers and producers of phonograms; ways to dispose of IP rights, including pledging and licensing; procedure and conditions for paying compensation for infringement of IP rights; specifics of enforcing know-how; and situations where trademark protection is discontinued.

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Valentina Orlova is head of IP practice at the Pepeliaev Group. She can be contacted at: v.orlova@pgplaw.ru

IRC, Rospatent