Changes to practice relating to patents and utility models

On February 25, 2014, the Russian State Duma passed a federal law introducing amendments to the provisions of Parts I, II and IV of the Russian Civil Code. The amendments will be effective from October 1, 2014.

The amendments relate to such topics as patents, utility models, designs, trademarks and licence agreements. This article will give an overview of the most important changes relating to patent and utility model prosecution. The amended provisions will apply only to new applications filed on or after October 1, 2014. Pending applications will be examined according to the current legislation.

Utility models—term and examination

Currently, a Russian utility model provides a reasonably strong form of protection for a new and industrially applicable product. Utility models are granted without examination, and can be kept in force for 13 years—which is longer than the typical maximum term of protection in European countries. After the forthcoming amendments, utility models filed on or after January 1, 2015 will have a maximum term of protection of ten years. The Russian IP office (Rospatent) will also conduct a substantive examination of utility model applications in order to determine the novelty.

The substantive examination will be conducted automatically, and filing a separate request for examination will not be required. Based on the examination results, Rospatent will issue either an acceptance or a rejection decision. There will be no Office Action or other notifications from the examination division requiring action from the applicant; the prosecution will be kept as streamlined as possible. The applicant’s right to appeal against a rejection decision will not be changed.

"Good news for all applicants is that it will finally be possible to amend the claims based on features indicated in the drawings."

The new provisions will make utility models less attractive than before. We recommend that applicants file utility models now to get them registered before the new provisions take effect. After the provisions have taken effect, we recommend applicants conduct their own novelty search prior to filing.

Insufficient disclosure

At the moment, a Russian patent or utility model cannot be invalidated solely on the grounds of insufficient disclosure. After the forthcoming amendments, an insufficient disclosure of the claimed invention will serve as grounds for invalidation.

Patents—voluntary amendments

One amendment inspired by the European Patent Convention limits the applicant to only one opportunity to make voluntary amendments to the description and claims. After receiving a search report relating to a Russian patent application, the applicant will have the right to amend the description and claims once. No time limit for the voluntary amendment has currently been given. After the voluntary amendment, only the amendments necessary to overcome the objections raised in an Office Action are allowed.

Good news for all applicants is that it will finally be possible to amend the claims based on features indicated in the drawings. At present, the addition of any features without literal support in the description is not accepted.

The forthcoming amendments also clarify the Office Action response due dates. A new strict term is introduced, which is three months from the issuance date of the Office Action.

One particularly interesting new provision gives the applicant an opportunity to convert a patent or utility model application to a design patent application and vice versa. At this stage, no details are available regarding the formalities of the conversion. However, any addition of new subject matter will not be accepted when converting applications.

Summary

The forthcoming changes to the Russian Civil Code affect patent and utility model prosecution. The applicant will be allowed to amend the patent application based on the drawings, while being limited to only one voluntary amendment. On the other hand, the possibilities to argue for the inventiveness of a claim will be somewhat restricted.

The amendments serve as one further step in an attempt to modernise Russian IP legislation and bring it closer to that of Western jurisdictions. The practice will be largely defined by the amended regulations, as was shown in 2008 when the Civil Code part IV in its present form came into force.

Erik Goussev is a patent attorney specializing in patent legislation and patenting processes in Russia and Eurasian countries at Papula-Nevinpat. He can be contacted at: erik.goussev@papula-nevinpat.com