An interview with Boris Simonov

Russia’s intellectual property office has undergone fundamental changes while its longserving director general, Dr Boris Simonov, has been at the helm. Responsible for granting patents, trademarks, industrial designs and utility models, the Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) has recently had its name changed.

A May 24 presidential decree allowed Rospatent to drop ‘patents and trademarks’ from its name, and it is now answerable to the government itself, rather than the Ministry of Education and Science.

The same presidential decree forced the Ministry of Justice to hand over control of the Federal Agency for the Legal Protection of Intellectual Property, an agency that is responsible for protecting the rights of the Russian defence industry and recovering losses from the illegal production of Russian weapons abroad, to Rospatent.

The changes are intended to streamline the country’s intellectual property operation by merging two public bodies. It is hoped that the merger will consolidate government resources and strengthen the state’s control over the use of IP.

During Simonov’s seven-year stewardship, Rospatent has been charged with protecting and exploiting the results of civil scientific and technical activities that have benefited from federal funding. Before Simonov’s appointment as director general in 2002, Rospatent’s Patent Dispute Chamber was created to hear appeals against examiner decisions on patents, utility models, trademarks and industrial designs.

Part IV of the Civil Code of the Russian Federation came into force in January 2008. The country intended to unify its legal regulation and practices in intellectual property. Simonov says that combining IP legal norms in one statute has “allowed a number of codification challenges to be addressed, which are important for the stability of law and implementation thereof ”.

“Defining the most fundamental intellectual property rules in the Civil Code is intended to ensure uniformity of legal regulation in this area, mainly in relation to the use of exclusive rights in civil circulation and liability for their infringement," he adds.

Quality time

The quality and timeliness of Rospatent’s services may be considered fundamental issues to its customers, but these remain unaffected by legislative change. Russian legislation does not provide for the quality of a patent and makes no mention of the “so-called ‘reliability of the patent’”, Simonov says.

“The relevant assessment can be given indirectly in consideration of other factors, such as a number of the appeals filed before the Chamber of Patent Disputes for invalidation of patents.” He explains that the Civil Code outlines an exhaustive list of grounds under which a patent may be invalidated and voided. “In particular, these grounds include non-alignment of a patented object to the requirements of patentability relating to a particular object of the patent law,” Simonov says.

“Practice shows that the procedure for challenging the validity of a patent is initiated, as a rule, by businesses as a countermeasure [to] legal actions brought by rights holders against infringement of their exclusive rights.” Rospatent is working to improve this situation, says Simonov, because it wants to encourage foreign patenting through Patent Prosecution Highway (PPH) pilot programmes.

“Rospatent has developed and is now implementing a set of measures aimed at improving the public services delivery in respect to the legal protection of patent rights,” he says. Rospatent’s customers can expect to wait, on average, 9.6 months for a patent application decision; 1.2 to 1.6 months for utility model application decisions; and 5.8 months for an industrial design application decision.

But Simonov stresses that these figures are only true when the application is drafted correctly. “The term of [an]...application processing from the start of examination [to] making a decision largely depends on its quality,” he says. Simonov says that foreign filers regularly make mistakes in their patent applications that significantly add to pendency times.

This is despite the Civil Code of the Russian Federation requiring foreigners and foreign legal entities to use patent attorneys registered with Rospatent when dealing with the agency.

“The documents confirming payment of fees for the registration of inventions or utility models, or for the entrance of an international application filed under the PCT into the national phase in Russia, as well as the fees for various [application] amendments...are not submitted in due time," Simonov says.

Poor-quality translations also cause problems. “Very often the examiners are dealing with the poor quality of translations of the description or claims of the invention, which distorts the essence of the invention,” he says. “This is especially true [of] the complicated technical fields, such as biotechnology.”

Simonov hopes that Rospatent’s work on legislative changes and improvements to application requirements, as well as the professional development of Russian patent attorneys, will minimise the number of errors made in foreign applications.

A specialised patent court is a new legislative change that could help foreign patent owners during litigation. Draft legislation is currently with the State Duma of the Russian Federation. The draft says that the specialised patent court will be a part of Russia’s arbitration court system.

Simonov says that there is currently a lack of uniformity in the application of law by administrative and judicial bodies, and IP owners often have to go through all of the judicial stages. But the new system is intended to improve the situation. He also says that Russian judges “[on] the basis of these conclusions, make a decision about the presence or absence of the infringement”.

“As a result, the number of cases in which judgments are made based on inaccurate expertise is sufficiently large.” Patent filers prefer specialised patent courts because they tend to avoid this outcome. “It seems that the judges who specialise in a narrow field can more easily and accurately assess a specific category of patent law,” Simonov says.

Institutional improvements

The Federal Institute for Industrial Property (FIPS) is Rospatent’s examination arm, and its training academy, the Russian State Academy for Intellectual Property, is responsible for examiner development. Simonov says that enhancing the professional skills of FIPS examiners is one Rospatent’s primary concerns.

FIPS’s leading specialists have developed training programmes as “close to the practice of application examinations as possible”, he says. “As a rule, training programmes relate to the issues of legal regulation in the area of legal protection of the results of intellectual activity, implementation of legislation or legislative amendments,” he adds.

Simonov says that examiner development could yield improvements in the quality of trademark application examinations. Rospatent has received between 50,000 and 57,000 trademark applications annually over the last five years. Given the “sustainable level of applications” that the office receives, Simonov says that Rospatent can focus on service quality rather than attracting trademark filings.

“This applies proximately to the quality of examination of the trademark claimed,” he says. “As well as to the adoption of a new standard of interaction between applicants and the office using...modern means of communication.”

Rospatent is improving examination quality during the training of newly recruited examiners, Simonov says. His office also actively promotes the use of electronic trademark filing and applicant interaction systems by trademark applicants and attorneys. Innovative and international Rospatent recognises the importance of innovation through research and development and pays “great attention” to it in Russia, Simonov says.

The Central Patent Collection provides inventors and researchers with unrestricted access to patent information. Rospatent also organises and runs conferences, seminars and roundtables as a means of promoting the importance of intellectual property. Simonov says that examiners exchange practical experiences during these events.

He adds that patent attorneys, inventors, examiners, government representatives, members of the judiciary, universities, academic and research institutions, international organisations and representatives of foreign countries can all benefit from attending them.

On the international front, a government resolution also allows Rospatent to work with the World Intellectual Property Organization so that it can bring its experience to the table during consultations on international IP policy. Rospatent has increased its stock as a granting authority, gaining International Searching Authority and International Preliminary Examination Authority status under the PCT.

Rospatent participates in bilateral working groups with the EU, China, the US and France, enabling information and advice on best practices to be easily exchanged, Simonov says. His office also regularly exchanges patent documents with more than 60 patent offices and organisations.

Russia is making progress as it tries to create an environment that is suitable for protecting and exploiting intellectual property. Rospatent is being trusted with more and more responsibility, and seems to be justifying that trust. Simonov has played an important role in this by providing continuity in a time of rapid upheaval and hastily made decisions.