The temporary legal protection of inventions and industrial designs. What should we await after amending the Civil Code of the Russian Federation?

Today, the current patent legislation stipulates the temporary legal protection only to inventions. Currently, the temporary legal protection to industrial designs and utility models is not stipulated by the Russian patent legislation, and therefore the rights of applicants are infringed.

The temporary legal protection of an invention starts from the moment of the publication of the information on the application and it shall be in force till the date of the publication of the information on granting a patent (Article 1394). The temporary legal protection shall be granted within the scope of the published claims, but not more than within the scope determined by the claims contained in the decision of the said Federal Authority on granting a patent for the invention.

Thus, after the publication of the application, the temporary legal protection of the invention starts. This means that no one has the right to use the invention without consent of the applicant.

It should be noted that such protection does not defend the applicant from an unauthorized use of his subject matter of protection, but such use entails the payment of monetary compensation in the event that the applicant obtains a patent.

According to Article 1385 “The Publication of the Information on the Application for an Invention,” the Federal Executive Authority on Intellectual Property, upon the expiry of eighteen months from the date of filing the application for an invention that has passed an examination as to form with a positive result, shall publish the information on the application for an invention in the official bulletin.

The publication shall not be made, if before the expiration of fifteen months from the date of filing the application for an invention, it has been withdrawn or recognized as withdrawn or the registration of the invention has taken place on its basis.

Thus, the temporary legal protection may come no earlier than 18 months from the date of filing the application. However, the sooner the temporary legal protection comes, the better, as the person using the claimed invention during the period of the temporary legal protection shall pay monetary remuneration to the patent holder after he obtains a patent. The amount of remuneration shall be determined by an agreement of the parties, and in the case of a dispute – by the court.

So, is it possible to extend the term of the temporary protection of the invention? The unequivocal answer is “yes,” upon the petition of the applicant filed before the expiration of twelve months from the date of filing the application for an invention, the Federal Executive Authority on Intellectual Property may publish the information on the application before the expiry of eighteen months from the date of filing it.

Consequently, by filing the petition for speeding up the publication, the applicant increases the period of the temporary protection of the invention.

It should also be noted that on June 27, 2019, Article 1392 was amended on the basis of Federal Law of December 27, 2018 No. 549-FZ.

In accordance with these amendments, the temporary legal protection will be granted not only to inventions, but to industrial designs as well.

Thus, according to a new version of Article 1392, the industrial design, for which the application has been filed to the Federal Executive Authority on Intellectual Property, shall be granted the temporary legal protection within the scope determined by a set of the essential features of the industrial design, which have been reflected on the images of the appearance of the article, contained in the published application for an industrial design, but not more than within the scope determined by the set of the essential features, which have been reflected on the images of the appearance of the article, contained in the decision of the said Federal Authority on granting the patent for the industrial design, within the period from the date of the publication of the information on the application (Paragraph 4 of Article 1385) till the date of the publication of the information on granting a patent (Article 1394).

However, it is known that currently the publication of the information on the application for an industrial design is not stipulated by the patent legislation.

In connection with the amendments to Article 1392, Article 1385 “The Publication of the Information on the Application for an Invention and an Industrial Design” was also amended, and such amendments will take effect starting from June 27, 2019.

The Federal Executive Authority on Intellectual Property, upon a petition of the applicant, shall publish in the official bulletin the information on the application for an industrial design that has passed an examination as to form with a positive result. The composition of the published information shall be determined by the Federal Executive Authority that exercises the legal and normative regulation in the field of intellectual property.

The publication shall not be made, if the application for an industrial design has been withdrawn or recognized as withdrawn or the registration of the industrial design has taken place on its basis.

It shall be considered that the temporary legal protection has not come into effect, if the application for an invention or an industrial design has been withdrawn or recognized as withdrawn, or the decision has been made to refuse granting a patent with respect to the application for an invention or an industrial design and the possibility of filing an objection to this decision stipulated by the Civil Code of the Russian Federation has been exhausted.

The person using the claimed invention or industrial design during the period of the temporary legal protection shall pay monetary remuneration to the patent holder after he obtains a patent. The amount of remuneration shall be determined by an agreement of the parties, and in the case of a dispute – by the court.

Based on the above, summing up the amendments in the legislation regarding the temporary legal protection, which will take effect in summer of 2019, we would like to hope and believe that the said amendments will help the applicants to defend not only the inventions created by them, but also the industrial designs even at the stage of the paperwork concerning the application.