The periods of the validity of the exclusive rights to an invention, a utility model and their transfer to the public domain

According to Article 1363 “The periods of the validity of the exclusive rights to an invention, a utility model, an industrial design” of Part 4 of the Civil Code of the Russian Federation.

The exclusive right to the invention, the utility model, the industrial design and the patent certifying this right shall be valid subject to the compliance with the requirements established by this Code from the date of filing an application for the grant of the patent with the Federal Executive Authority on Intellectual Property or in the case of dividing the application (Paragraph 4 of Article 1381) from the date of filing the initial application:

twenty years – for inventions;

ten years – for utility models;

five years – for industrial designs.

The defense of the exclusive right certified by the patent may be exercised only after the state registration of the invention, the utility model or the industrial design and the grant of the patent.

It is worth dwelling on the conditions for the compliance with the requirements under which the exclusive right operates.

The most important condition is the payment of the annual fees for maintaining the validity of the patent. If the fee for maintaining the validity of the patent is not paid, the patent shall terminate, but it should be clarified here that in the case of a delay in the payment of the fee within the established period, it can be paid within an additional 6-month period with an increase in the amount of the fees by 50%. If this condition is complied, the patent will continue to be valid.

What will happen, if the grace 6-month period is missed? The right holder has 3 years, during which he can restore his rights. If he does not use this right and he does not restore the patent within the above period, then this possibility will be exhausted and the patent will no longer be able to be restored, even if the total cumulative period of its validity, which is, for example, 20 years for the inventions, has not expired.

In this case, the exclusive right shall be terminated and the patent shall transfer to the public domain. What it is will be disclosed a little later.

And now, we shall consider the moment of the extension of the period of the exclusive right to the invention of some special products, namely, drugs, pesticides and agrochemicals, for which there is an exception to the rules.

So, if more than five years have passed from the date of filing the application for the grant of the patent for the invention related to such product as a drug, a pesticide or an agrochemical, the use of which requires obtaining a permission due to the order stipulated by the law, before the date of obtaining the first permission for the use, then the period of the validity of the exclusive right to the corresponding invention and the patent that certifies this right shall be extended at the request of the patent holder by the Federal Executive Authority on Intellectual Property.

The above period shall be extended for the period that have passed from the date of filing the application for the grant of the patent for the invention before the date of obtaining the first permission for the use of the product minus five years, but not more than for five years.

The application for the extension of the period is filed by the patent holder within the period of the validity of the patent before the expiration of six months from the date of obtaining the first permission for the use of the product or from the date of the grant of the patent, whichever of these periods expires later.

Some additional materials may be requested from the patent holder, if the application cannot be considered without them. The additional materials must be submitted within three months from the date of sending such a request. If the patent holder fails to submit the requested materials within this period, or if he fails to submit a request to extend the period, the application shall not be satisfied. The period established for submitting the additional materials may be extended by the Federal Executive Authority on Intellectual Property not more than for ten months.

When the period of the validity of the exclusive right based on unnumbered paragraph one of this paragraph, an additional patent shall be granted, which has the claims containing a combination of the features of the patented invention, which characterizes the product, for the use of which the permission is obtained.

According to Article 1364 “The transfer of the invention, the utility model or the industrial design to the public domain” of Part 4 of the Civil Code of the Russian Federation

Upon the termination of the exclusive right, the invention, the utility model or the industrial design shall transfer to the public domain.

The invention, the utility model or the industrial design that have transferred to the public domain may be used freely by any person without anyone's consent or permission and without the payment of remuneration for the use.

It should be noted that the invention, the utility model, the industrial design transfer to the public domain not only upon the expiration of the exclusive right to these subject matters, but also in the case of a death of the patent holder (if the patent holder is an individual), if the patent holder has no heirs, or none of the heirs has the right to inherit, or all heirs are suspended from the inheritance, or nobody from the heirs has accepted the inheritance, or all heirs have refused the inheritance and, at the same time, none of them has stated on refusing in favor of another heir, or in the case of the termination of the patent holder (if the patent holder is a legal entity), if the legal entity has not a successor.