1 May 2015Jurisdiction reportsIrmeli Nokkanen

Modernising the design patent system

In October 2014, the design protection system changed radically in Russia with changes to part IV of the Civil Code coming into force. A list of claimed essential features for design patent filings is no longer required, and the scope of protection is determined only on the basis of the pictures enclosed with the application.

This change modernises the Russian design protection system and brings it closer to Western systems. One aim behind this change was to make the Russian design protection system compatible with the Hague System. The US and Japan joined it this year, and it is estimated that Russia will join it within the next couple of years. The accession of the US and Japan is expected to boost further expansion of the Hague System.

For those interested in design protection in Russia, the national change means clear advantages: fewer requirements, and an easier and more cost-effective process. Russian patent attorneys have drafted lists of claimed essential features for applicants according to the requirements of the Russian legislation, and this has been time-consuming and meant additional costs for the applicants if compared to design protection in other countries.

For many applicants, it has also been difficult to understand why the list of claimed essential features is critical to the application when they have been accustomed to design protection normally being based only on pictures. For non-Russian speakers, it has also been difficult to check what actually has been protected in Russia because this cannot be known without reading the accepted list of claimed essential features written in the Russian language.

"Foreign companies are more accustomed to design protection based only on pictures, and an easier and more economical process is always more attractive than a complicated one."

Because a list of claimed essential features is no longer required, it means no voluntary amendments by the applicants to Rospatent and fewer office actions from Rospatent to the applicants, as most of them have related to amending the lists of claimed essential features in view of novelty and originality. This should mean granting decisions in a shorter time than at the moment—it currently takes about one year to get a design patent in Russia.

A substantial examination is still conducted, so the near future will tell what kind of examination practice Rospatent will adopt, and for example, whether the number of final rejection decisions will increase, because it will be probably more difficult to argue against the examiner’s objection. Until now, Rospatent has given final rejection decisions very rarely. If prior art has been found, the applicant has been able to limit the scope of protection by amending the list of claimed essential features and has been able to avoid rejection.

It is an easier, faster and more economical process, but will it increase the number of design filings in Russia? I assume it will. For example, foreign companies are more accustomed to design protection based only on pictures, and an easier and more economical process is always more attractive than a complicated one. Moreover, the Russian market, with more than 140 million people, is important for global companies.

According to Rospatent’s statistics, the number of design patent applications filed in Russia each year from 2003 to 2013 has varied between 3,104 and 4,994; no more recent statistics are available at the moment. If you compare these numbers with those of Community design filings, they are very modest. For example, in 2013 the Office for Harmonization in the Internal Market received 23,194 Community design applications.

The Community design and its easy, fast and cost-effective process covering a market area of more than 500 million people has been a real success story in the IP world. I do not believe that the modernised Russian design patent system will become as popular, but I am sure that it will be more popular than it has been.

Irmeli Nokkanen is a European design attorney at  Papula-Nevinpat. She can be contacted at: irmeli.nokkanen@papula-nevinpat.com

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