Patenting an industrial design in Russia: object and procedure

Originally published in Patent Lawyer Magazine (July/August 2024)

The main characteristics of the industrial design

The uniqueness of an object's appearance can be legally protected by registering. The design of the appearance of an industrial or handicraft product is protected as an industrial design.

An industrial design is granted legal protection if its essential characteristics are new and original .

The essential features of an industrial design include features that determine the aesthetic features of the appearance of the product, in particular the shape, configuration, ornament, combination of colors, lines, contours of the product, and texture of the material of the product.

Features determined solely by the technical function of a product are not protected features of an industrial design.

An industrial design is new if the totality of its essential features, reflected in images of the appearance of the product, is not known from information that became publicly available in the world before the priority date of the industrial design.

An industrial design is considered original if its essential features are a result of the creative nature of the product's features. In particular, if, based on the information that has become publicly available in the world prior to the priority date of the design, there is no known solution to the appearance of a similar product that would produce the same general impression on an informed consumer as the industrial design reflected in the images of the product's appearance.

Legal protection as an industrial design is not provided to:

1. solutions, all features of which are determined solely by the technical function of the product;
2. decisions that may mislead consumers about the product, such as decisions regarding the manufacturer, place of production, or product for which the container, packaging, or label serves, are prohibited. This includes decisions that are identical to those specified in paragraphs 4-9 of Article 1483 of the Russian Civil Code. These decisions may create a similar general impression or include the specified objects if the rights to these objects were acquired before the priority date of the design, unless legal protection for the design is sought by the person with exclusive rights to such an object.

Consequently, if the product does not meet the criteria of novelty and originality, it will be impossible to patent such an object.

Application for registration of an industrial design

In Russia, registration of industrial designs occurs with the Rospatent. To begin the procedure, you must correctly fill out the application, which must contain the following information:

• an application for a patent for an industrial design indicating the author and the applicant, as well as the place of residence or location of each of them;
• a set of product images of up to 7 pieces, giving a complete picture of the essential features of the industrial design that determine the aesthetic features of the product’s appearance;
• a drawing of the general appearance of the product, a confectionery card, if they are necessary to reveal the essence of the industrial design;
• description of the industrial design.

The application can be submitted to Rospatent in paper or electronic form. At the same time, electronic filing of an application allows you to reduce the filing fee by 30%.

The procedure for registering an industrial design with Rospatent consists of two main stages: formal examination and substantive examination.

The formal examination of an application for an industrial design includes duty payment verification, checking the availability of application documents, verification of documents submitted upon request of Rospatent, and consideration of an application to withdraw an application/to transform an application for an industrial design, if such an application was submitted. Formal examination is carried out on the application without analyzing the essence of the industrial design.

Regarding images submitted in an application: in accordance with paragraph 3 of Art. 1354 of the Civil Code, protection of intellectual rights to an industrial design is provided on the basis of a patent to the extent determined by the totality of essential features of the industrial design, reflected in the images of the appearance of the product contained in the patent for the industrial design. The specified requirement for images of the appearance of the product is aimed at ensuring that the images of the appearance of the product give a clear idea of the scope of the intellectual rights that the applicant is seeking and with which he will be issued a patent.

The description of an industrial design is intended to disclose in verbal form the characteristics of the appearance of the product claimed as an industrial design, presented in the images. The description must contain: the name of the industrial design, essential features, characteristics of the purpose and scope of application of the industrial design, information about analogues, an indication of the classification index of the industrial design according to the International Classification of Industrial Designs (ICD).

Examination of the application

If, as a result of the initial inspection, the necessary documents are found to be submitted and comply with the requirements of the legislation of the Russian Federation, the applicant will be sent a notification of a positive result within two months of completing the verification of payment with a positive outcome.

After the successful completion of the formal examination, the substantive examination process begins. The main purpose of this examination is to verify the claimed solution against the conditions for patentability of the industrial design that has been submitted.

The substantive examination includes the following stages:

1. checking compliance with the requirement of industrial design unity;
2. checking an object declared as an industrial design for compliance with the definition of the concept “industrial design”;
3. checking an industrial design for the content of features that are contrary to public interests, principles of humanity and morality;
4. checking an industrial design for the content of official symbols, names or distinctive marks;
5. checking the industrial design for the content of features that can mislead the consumer;
6. checking the presence in the appearance of the product of signs determined solely by the technical function of the product;
7. checking the novelty of an industrial design;
8. checking the originality of an industrial design.

All of the above steps are carried out through an information search process, which aims to identify information that has become publicly available before the priority date of the industrial design, and which is relevant to the declared design.

If any non-compliance with the established requirements is identified, the Rospatent expert will send a request to the applicant. The applicant has 3 months to respond.

A positive outcome of the substantive examination is the decision to grant a patent for the industrial design. In this case, it is necessary to pay a registration fee.

The validity period of an industrial design patent is extended during the last year of each five-year period, while the total validity period of an industrial design patent cannot exceed 25 years. Patent maintenance fees vary depending on the year of validity. For example, it is advisable to pay the fees for the first five-year period at the time of payment of the filing fee, since the patent will only remain in force for two years from the filing date.

For an efficient design registration process, we recommend conducting a design search before filing an application to determine whether your product is eligible for patentability. Thus, you can reduce the risk of refusal of your application by Rospatent.