Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney
The accession of the Russian Federation to the Hague System – the first results
In 2017, one of the most important events in the field of protection and registration of industrial designstook place in Russia – Federal Law No. 55-FZ of 03.04.2017 “On the Ratification of the Geneva Act ofthe Hague Agreement Concerning the International Registration of Industrial Designs” was signed. TheGeneva Act entered in force on the territory of the Russian Federation on February 28, 2018. Since thatdate, our country has become a full-fledged participant in the Hague System.The harmonization of the Russian legislation with a view to the ratification of the Geneva Act of theHague AgreementIt is worth noting that it has not been possible to ratify the above said international treaty for a long time.Starting since 1999, when following the results of the Geneva Diplomatic Conference Russia signed thefinal act of the Hague Agreement, the process of the harmonization of the Russian legislation forprotection of industrial designs has begun with a view to comply with the legal provisions of the GenevaAct. The changes made include the following:• The increase of the level of requirements for the subject matter for which the protection is sought.• The graphic image of the appearance of an article has taken rank as a priority position in an applicationfor registration of an industrial design, and not the description of substantive features, as before.• The period for filing an application from the date of disclosure of the information has increased from 6to 12 months.• The simplification of requirements for an application for registration of an industrial design: it is notnecessary to indicate the substantive features of a subject matter; the requirements to an image have beenedited.The main advantages of the participation in the Hague System of the international registration ofindustrial designsThe ratification of the Geneva Act of the Hague Agreement has allowed the applicants from Russia toobtain a number of advantages:1. An applicant can claim to obtain a protection document being in force in several member-states byfiling only one international application to the National Office (Rospatent) or to the International Bureauof WIPO.2. There is no need to file an application in different languages, depending on the countries, in which theregistration is sought. In case, when an application is filed directly to the International Bureau of WIPO,the applicant chooses one of three languages for filing the application: English, Spanish or French. If anapplication is filed through Rospatent, it is composed in English.3. Up to 100 industrial designs are allowed to be included in one application, provided they belong to thesame class of the International Classification for Industrial Designs (the Locarno Classification).4. It is possible to file an international application without the mediation of a patent attorney.5. The amount of fees has been reduced in comparison with filing several applications to national officesof different states. The required amount is paid in a single currency (the Swiss Franc).In the 2018 Annual Review of the Hague System, published by WIPO, the attention is focused onincreasing the number of the applications filed by 40.6% in 2015 and by 35.3% in 2016. 1 The WIPOexaminers think that the reason for such progress is the accession to the Hague Agreement of Japan, the1 https://rupto.ru/content/uploadfiles/docs/otchet_2017_ru.pdf;
Republic of Korea and the United States of America. The published statistics shows a significant increasein the volume of the applications filed in new member-states. This allows supposing that due to theaccession to the Hague System the applicant's activity will increase in Russia as well.The first results of the accession of Russia to the Hague System of the International Registration ofIndustrial DesignsThe Geneva Act of the Hague Agreement has entered in force on the territory of our state relativelyrecently, but there are already the first positive results in the field of patenting industrial designs:• Firstly, it is important to note that the convergence of the legislation of the Russian Federation with theworld practice and with the legislation of the European Union has occurred.• The changes have been made in the legal norms, which are aimed at reducing the requirements for anapplication for registration of an industrial design; the priority position has been allocated to the image ofthe registered subject matter, what is logical, taken into account the nature and purpose of industrialdesigns.• To stimulate the growth of the number of international applications filed under the Hague System,various reference materials and the information Internet resources have been created. For the purposes ofclarification, the WIPO website has published the Recommendations for filling in an internationalapplication (URL: www.wipo.int/hague/en/how_to/file). On the Rospatent website there is aninternational application form, as well as its translation into Russian, to simplify filling in an applicationby the Russian applicants (the form should be filed in English) (URL:www.rupto.ru/ru/activities/inter/coop/wipo / hague_system / forms_hague). There is also a fee table and acalculator for the automatic calculation of fees (www.wipo.int/hague/ru/fees) in order to facilitate thecalculation of fees.• According to the Annual Report of Rospatent, in 2017, the average duration of consideration of anapplication for granting a patent for an industrial design at the stage of a substantive examination was6.05 months. As the examiners of Rospatent state: “Such period for consideration creates a large marginof safety in case of a sharp increase in the receipt of applications for industrial designs in 2018, includingin accordance with the Geneva Act of the Hague Agreement Concerning the International Registration ofIndustrial Designs.” 2Speaking about the results of the accession to the Hague System, we can make a conclusion aboutpositive dynamics. The improvement and harmonization of the norms of the Russian legislation, thesimplification of the procedure for filing international applications for domestic applicants, the possibilityof filing applications to the Russian Federation by foreign applicants through the Hague System – hereare just some obvious advantages. It should be assumed that the above circumstances, as the examiners ofRospatent suppose, will lead to an increase in the number of applicants and an increase in the number ofregistered industrial designs.