Results of the XV International Forum "Intellectual Property - XXI Century" at the RF CCI
On April 27, the Russian Chamber of Commerce and Industry hosted the international forum "Intellectual Property of the XXI Century". Its participants discussed issues of legal protection of IT solutions, protection of trademarks and patents, and mediation in the field of intellectual property rights. During the second day of the forum, several round tables and a plenary session were held.
The round table "Recovery of compensation in an amount greater than double the value of the goods" was held under the leadership of Sergey Zuykov, Managing Partner of Zuykov and Partners, Deputy Chairman of the Council of the CCI of the Russian Federation on Intellectual Property.
The following issues were considered during the round table:
- Changes in the amount and procedure for payment of fees for filing applications for trademarks and patents,
- Publication of information on applications for patenting an industrial design: necessary changes;
- Recovery of compensation in an amount greater than double the value of the goods. Discussion of the M&A request to the Constitutional Court on compliance with the Constitution of the Russian Federation with the provisions of paragraph 3 of Article 1252 and paragraph 4 of Article 1515 of the Civil Code of the Russian Federation in case No. A40-215387/2021.
Changes in the amount and procedure for payment of fees for filing applications for trademarks and patents
The discussion was opened by Roman Zakharov, Deputy Director of Federal Institute of Industrial Property (FIPS), who proposed to discuss the approach to trademark duties due to the expansion of the legal field in this area. The expert noted that Russian practice is distinguished by unbalanced applications for classes of goods and services, and copyright holders often have no incentive to make a meaningful choice of classes of services. According to Zakharov, the duty policy and the register of trademarks requires self-cleaning from "empty" registrations, it is worth considering the option of reducing the cost of duties for electoral applicants, including based on the volume of goods within classes. This approach also applies to fees for the extension of trademark protection.
Inna Polyanskaya, a member of the CCI RF working group on improving IP legislation, patent attorney, shared her opinion on the issue from a practical point of view, Anatoly Semenov, Deputy Chairman of the RSPP Committee on Intellectual Property and Creative Industries, Ruslan Malkov, Deputy Chairman of the CCI RF Council on IP, also spoke. Inna Polyanskaya suggested taking into account the likely difficulties of conducting a patent search in connection with the proposed changes. Anatoly Semenov in his speech commented on the possibilities of Rospatent to clean up the register, and Ruslan Malkov outlined the need to consider the concept of "uniformity of goods" in the context of changing the size of duties.
Sergey Zuykov suggested optimizing proposals for changes in duties for classes and for goods in order to avoid a shock effect on the market. Sergey Zuykov also reminded the participants of the discussion about the Singapore Treaty on Trademark Laws and related obligations regarding trademark duties. Russia has signed and ratified this agreement. At the same time, the experts agreed that the change in the approach to the amount of application fees is due to practical necessity.
Publication of information on industrial design patent applications: necessary changes
Inna Polyanskaya spoke on the issue of publishing information about patent applications on behalf of the working group of the CCI of the Russian Federation. The expert noted that at the moment there is no way to track applications for software that violate the rights of principals, and it is also impossible to pay attention to existing obstacles by filing an appeal (protest) of a third party against the grant of a patent.
The discussion was attended by Roman Zakharov and Lyubov Morokhova (FIPS), as well as Ekaterina Tkach, head of the Moscow office of Gutsu, Zhukovsky and Partners.
Following the discussion, it was proposed to work out amendments to the Civil Code of the Russian Federation on the moment of publication of information about the application.
Recovery of compensation in an amount greater than double the value of the goods. Discussion of the M&A request to the Constitutional Court on compliance with the Constitution of the Russian Federation with the provisions of paragraph 3 of Article 1252 and paragraph 4 of Article 1515 of the Civil Code of the Russian Federation in case No. A40-215387/2021
Most of the working time was devoted to the issue of collecting compensation, as well as the recent request of the IP Court to the Constitutional Court of the Russian Federation related to the problem.
Ruslan Malkov made a report on the KurortMedService case and a series of related court cases.
The main conclusions of the case are as follows:
- Artificial fragmentation of claims for infringement of exclusive rights is used by copyright holders as a tool for enrichment,
- The recovery of compensation should be aimed at restoring violated rights, and not enriching the rightholder.
Anatoly Semenov gave a detailed analysis of the appeal of the IP Court to the Constitutional Court of the Russian Federation on this issue.
Ekaterina Tkach and Pavel Galchenko, an intellectual property lawyer, spoke during the discussion. The experts presented different points of view on the issue under consideration in higher instances. Lawyers recommend monitoring the development of the situation in this case.
A plenary session was held in the final part of the forum. At the meeting the following experts gave a speech:
- Sergey Katyrin, President of the CCI of the Russian Federation,
- Yuri Zubov, Head of Rospatent,
- Grigory Ivliev, President of the Eurasian Patent Office,
- Lyudmila Novoselova, Chairman of the IP Court,
- Pavel Spitsyn, Head of the WIPO Representative Office in Russia,
- Sergey Zuykov, Managing Partner of Zuykov and partners, Deputy Chairman of the Council of the RF CCI for Intellectual Property,
- Alexey Robinov, Managing Partner of "Vash Patent", Deputy Chairman of the Council of the CCI of the Russian Federation on Intellectual Property, and other experts.
Sergey Katyrin advocated the expansion of the presence of SMEs in production, including in the production of innovative products. The President of the Chamber of Commerce and Industry of the Russian Federation noted that "in order to remove barriers in the innovative activity of subjects, it is necessary to develop state mechanisms to support companies that integrate technological solutions that attract small and medium-sized businesses as subcontractors in their production sphere.". In addition, in his speech Sergey Katyrin focused on the issue of mediation in IP cases.
Yuri Zubov made a report on the results of Rospatent's work. Lyudmila Novoselova (IP Court) raised the issue of compensation recovery, which became the topic of discussion at the Sergey Zuykov round table. Grigory Ivliev (EAPO) advocated the expansion of patenting of IT solutions, spoke about the creation of the Eurasian Assembly of Patent Attorneys and other initiatives of the department.
Sergey Zuykov and Alexey Robinov summed up the results of the moderated round tables. Sergey Zuykov noted that the work on changing the amount of fees and the procedure for submitting applications for classes is being carried out by Rospatent and FIPS. Following the discussion, a legislative initiative on the publication of applications for industrial designs will be proposed for consideration. The expert drew the attention of the participants of the meeting that during the discussion of the issue of collecting compensation, various points of view were argued; thus, there is an interesting development of the practices of the Civil Code of the Russian Federation. An active open discussion shows that changes to the law are brewing naturally. Alexey Robinov commented on the results of the discussion of the responsibility of marketplaces, drew attention to legislative gaps in the issue of eliminating information about counterfeit, and also spoke on the problem of splitting claims.