Review of the amendments to the Federal Law of December 30, 2008, No. 316-FL On the Patent Attorneys
According to Article 1247 of the Russian Federation Civil Code, a “patent attorney” is a citizen who conducts business with the federal executive authority for intellectual property on behalf of applicants, right holders, and other interested citizens and legal entities permanently residing or located in the Russian Federation and abroad unless otherwise provided by the Russian Federation international treaty or the legislation.
A patent attorney's main activity is related to supporting the registration of intellectual property objects with Rospatent, preparing alienation agreements, pledge of exclusive rights, granting the right to use the results of intellectual activity or means of individualization, filing objections to invalidate patents or responses to these objections to the department of the Chamber for Patent Disputes Rospatent and representing the interests of clients in the intellectual property court.
In order to acquire a patent attorney status, a specialist who has knowledge and practice in accordance with a specific specialization: inventions and utility models, industrial designs, trademarks and service marks, etc., must pass certification in Rospatent by passing the exam and receive the appropriate certificate.
The patent attorneys’ activities, rights and obligations, attestation and registration process, and their liability on the Russian Federation territory are determined by Federal Law No. 316-FL of December 30, 2008, following the Russian Federation Civil Code.
On December 14, 2021, the State Duma adopted, and on December 21, 2021, the President of the Russian Federation signed Federal Law No. 416-FL “On Amendments to the Federal Law on Patent Attorneys”, which specifies the legal status of a patent attorney, expands his powers and increases the legal guarantees of the trustees’ rights”. However, this law will enter into force only on December 22, 2022, except for certain provisions.
According to Federal Law No. 416-FZ, the patent attorney’s status will be assigned to “persons who have confirmed the necessary qualifications and have experience in a patent attorney activity following the specialization in which a citizen expresses a desire to be certified and registered as a patent attorney, at least four years from the date of higher education or at least two years of experience in this work from the date of higher education, subject to an internship as a candidate for a patent attorney for at least six months with the recommendation of a patent attorney under whose supervision the internship took place. The requirements for the candidates’ internship for patent attorneys, including issuing a recommendation based on its results, are established by the federal executive body for intellectual property.
During the internship of candidates for patent attorneys, the following requirements will apply: “a patent attorney who has at least five years of work experience after registration as a patent attorney has the right to supervise the internship of candidates for patent attorneys (patent attorney trainees)”, “patent attorney trainees may be persons with higher education”, “a patent attorney trainee carries out his activities under the guidance of a patent attorney, performing his individual instructions, a patent attorney trainee is not entitled to independently engage in the activities of a patent attorney”, “a patent attorney trainee is obliged to keep the secret of a patent attorney”, “the employer of a patent attorney an attorney or a patent attorney operating independently enters into a fixed-term employment contract with a patent attorney trainee for an internship”, “an employer of a patent attorney or a patent attorney operating and their activities independently, who have concluded a fixed-term employment contract with a trainee of a patent attorney, shall carry out compulsory social insurance of a trainee of a patent attorney”.
In addition, now "citizens whose activities as patent attorneys have been suspended or who have been excluded from the Register by a court decision for a certain period before the expiration of this period" cannot be certified as patent attorneys.
The law is also supplemented by provisions on the protection of the secret of a patent attorney, which establishes:
- “Any information about the activities of the principal and the rights to the results of intellectual activity and means of individualization associated with the activities of the trustee, received by a patent attorney or the employer of a patent attorney from the principal in the course of carrying out the activities of a patent attorney, is the secret of the patent attorney.”
- “A patent attorney and a patent attorney’s employer are obliged to keep his secret and take the necessary measures to preserve the secrecy regime of a patent attorney. For the information transfer and (or) disclosure relating to a patent attorney’s secret, in violation of this Federal Law requirements, the patent attorney and the patent attorney’s employer shall be liable in accordance with the Russian Federation legislation".
- “Information constituting a patent attorney’s secret cannot be requested from a patent attorney and a patent attorney’s employer, transferred or disclosed by them to third parties. These restrictions do not apply to information requested by state bodies local governments in accordance with the Russian Federation legislation".
The candidates' attestation process for patent attorneys will also change: "patent attorneys in the qualification commission should make up half of the total number of members of the qualification commission" instead of one third, and "attestation of candidates for patent attorneys is carried out at least three times a year" instead of twice a year, as previously established.
The qualification exam will be held by the specializations specified in the application, including the updated specialization "geographical indications and appellations of origin of goods" in addition to the previously approved specializations: "inventions and utility models", "industrial designs", "trademarks and service marks", "programs for electronic computers, databases, topologies of integrated circuits".
As part of the candidates’ certification control for patent attorneys, the registration of patent attorneys and their activities, the Federal Law article has been amended to the extent that instead of one third, "patent attorneys should make up half of the total number of the appeal commission’s member" by analogy with the changed number of the qualification commission’s members.
The Appeals Commission will also consider: “complaints of persons against the actions of the employer of a patent attorney with whom a civil law contract has been concluded, committed in violation of the requirements of this Federal Law” and “complaints of persons to whom a request is sent, about the lack of grounds for sending a request, and also for non-compliance by patent attorneys with the requirements for the form and procedure for processing and sending a request.
In the event of a violation by a patent attorney of the Russian Federation legislation, taking into account the consequences that have occurred, the appeal commission may take one of the following decisions: “applying a penalty to the patent attorney in the form of a warning”, “issuing a demand to eliminate the violation” or “applying to the federal executive body for intellectual property with a recommendation to send a lawsuit to the court on the application of penalties against the patent attorney”.
If the employer of a patent attorney violates the requirements of this Federal Law, the appeal commission, taking into account the consequences that have occurred, may take one of the following decisions: "issue a demand to eliminate the violation", "declare a warning to the sole executive body of the employer of the patent attorney".
At the same time, the decisions of the Appeal Commission "are taken by a majority of votes from the Appeal Commission members present at the meeting. In the case of equality of votes, the chairperson's vote is decisive. The adoption of these decisions does not interfere with the protection of the rights and legitimate interests of the person who filed the complaint in other ways provided for by the Russian Federation legislation.
Summing up the above review of the changes made to the law on patent attorneys, we can conclude that these changes will help increase the number of patent attorneys in the Russian Federation, including in the regions too, strengthen control over their professional activities, and allow them to provide more qualified legal assistance to trustees at the expense of increased responsibility, including guaranteed confidentiality of information about the trustee activity, rights to the results of intellectual activity and means of individualization received by the patent attorney or his employer from the trustee.
Patent Attorney / Chemical Specialist