Federal law has approved the procedure for collecting expenses incurred during disputes resolution at Rospatent

According to paragraph 1 of Art. 1248 of the Civil Code of the Russian Federation [1], disputes related to the protection of violated or disputed intellectual rights are considered and resolved by the court. However, in some cases, intellectual rights are subject to administrative (out-of-court) protection. In particular, this procedure is provided for disputes that relate to:

• with the filing and consideration of applications for patents for inventions, utility models, industrial designs, selection achievements, trademarks, service marks, geographical indications and appellations of origin of goods;
• with state registration of these results of intellectual activity and means of individualization, with the issuance of relevant title documents;
• with challenging the provision of these results and means of legal protection or with its termination (clause 2 of Article 1248 of the Civil Code of the Russian Federation).

If such disputes arise, you must submit an application to Rospatent, because the court is not authorized to consider disputes that must be resolved administratively and, accordingly, will not accept the application on the basis of the norms of procedural legislation (clause 1, part 1, article 134 of the Code of Civil Procedure of the Russian Federation [2], clause 1, part 1, article 127.1 of the Arbitration Procedure Code of the Russian Federation [3]) and clarifications [4] of Supreme Court of the Russian Federation.

However, regardless of the procedure (judicial or administrative) the dispute is considered, the applicant always bears certain costs. He not only pays the fee, but, as a rule, bears costs directly related to the subject of the dispute: he pays for the services of experts, translators, patent attorneys, other persons who provide him with legal assistance, etc.

The problem is that when considering a claim in court, a party to the dispute, by virtue of a direct indication of the law, can reimburse its legal costs by collecting them from the losing party, but could not reimburse them when considering a dispute administratively, either as legal expenses or as losses.

This is due to the fact that the law did not have rules regulating the grounds, procedure and amount of reimbursement of expenses incurred by the parties to such proceedings. However, last year the Constitutional Court of the Russian Federation recognized [5] that this gap in regulation unjustifiably limits the protection of intellectual property and ordered appropriate changes to be made to the law.

As a result, Federal Law No. 4-FZ dated January 30, 2024 “On Amendments to Article 1248 of Part Four of the Civil Code of the Russian Federation” adopted amendments to clause 2 of Art. 1248 of the Civil Code of the Russian Federation, which came into force on February 10, 2024.

According to the new rules, the expenses of the party to an administrative dispute in whose favor the decision is made are reimbursed by the losing party in full or in proportion to the volume of satisfied claims. Costs include fees, as well as amounts payable to experts, specialists and translators, reasonable fees for patent attorneys, lawyers and other persons providing legal assistance (representatives), and other expenses incurred in connection with the consideration of the dispute.

Time will tell how this change will be implemented in practice.

Sources:

1. “Civil Code of the Russian Federation (Part Four)” dated December 18, 2006 N 230-FZ (as amended on January 30, 2024) // SPS “ConsultantPlus”
2. “Civil Procedure Code of the Russian Federation” dated November 14, 2002 N 138-FZ (as amended on December 25, 2023, as amended on January 25, 2024) // SPS “ConsultantPlus”
3. “Arbitration Procedural Code of the Russian Federation” dated July 24, 2002 N 95-FZ (as amended on December 25, 2023, as amended on January 5, 2024) // ATP “ConsultantPlus”
4. clause 52 of the Resolution of the Plenum of the Armed Forces of the Russian Federation dated April 23, 2019 N 10 “On the application of part four of the Civil Code of the Russian Federation” // SPS “ConsultantPlus”
5. Resolution of the Constitutional Court of the Russian Federation dated January 10, 2023 N 1-P