Features of the alienation of the exclusive right in relation to an international patent for an industrial design in Russia

One of the ways to dispose of exclusive rights is their alienation. It is the transfer of rights in relation to the object to another person in full. Under an agreement on the alienation of an exclusive right, one party (right holder) transfers or undertakes to transfer its exclusive right to the result of intellectual activity or to a means of individualization in full to the other party (acquirer) - clause 1 of Art. 1234 Civil Code of the Russian Federation. In accordance with the norms of Russian law, it is necessary to conclude an alienation agreement in writing in order to avoid its invalidity. In addition, the transfer of rights is subject to state registration - in accordance with paragraph 2 of Art. 1234 of the Civil Code of the Russian Federation.

The Civil Code provides for a rule governing the relationship between the right holder and the acquirer of the exclusive right to an invention, utility model or industrial design - Art. 1365 of the Civil Code of the Russian Federation.

The condition for registering a change in ownership also applies to international patents for industrial designs, however, in this case, the party submitting an application for registration of alienation must be guided by international legal acts, as well as the regulations established by the World Intellectual Property Organization. Registration is carried out at the WIPO Office, one of the Contracting Parties sends a special completed form DM/2. After passing the verification, in case of a positive decision, information about the change in the right holder is reflected in the International Register. Also, updated information on the international patent for an industrial design will be reflected in the International Designs Bulletin. The provision of an agreement is not required, however, the registration of the alienation of rights has its own characteristics.

When submitting Form DM/2 to the Registrar, Contracting Parties should be aware of the restrictions that apply in some countries: in accordance with Art. 16(2) of the Geneva Act 1999, the recording of a change in ownership of an international registration in the International Register has the same effect as if that recording had been made in the register of the Office of each Contracting Party concerned. In doing so, account must be taken of the fact that any Contracting Party may, in a declaration addressed to the Director General, notify that the record of the change in ownership of an international registration has no effect in that Contracting Party until the declarations or documents listed in such declaration have been received by its Office. The following Contracting Parties have so far made such declarations: Russia, China, Denmark, Jamaica, Mexico, Republic of Korea, United States of America.

In accordance with paragraph 6 of Art. 1 of the Federal Law of April 3, 2017 N 55-FZ "On the Ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs", an entry in the International Register on a change in the owner of an international registration of an industrial design will not be valid until its office receives the relevant documents on transfer of rights.

Thus, after the form DM/2 is sent to WIPO and after passing the appropriate verification, the change of the right holder in respect of an international patent for an industrial design will be made, however, in the Russian Federation, the transfer of an exclusive right will be recognized as carried out only if an additional condition is met: one of the Contracting Parties must submit to Rospatent a set of documents confirming the transfer of rights. In accordance with paragraph 3 of Art. 1232 of the Civil Code of the Russian Federation, supporting documents can be: a notice signed by the parties to the contract on the disposal of the exclusive right or an extract from the contract certified by a notary or the contract itself. Only after sending the relevant documents, the disposal of the right will be recognized as valid.