Patenting in Russia: New Rules of the Game
On October 1, 2014, amendments to Part IV of the Civil Code of the Russian Federation (Civil Code) governing the legal regime of intellectual property came into effect.
Briefly, the most important changes for applicants and rightholders regarding the patenting of inventions and utility models:
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1. There will no longer be “free” patents for utility models issued actually on parole of the applicant, utility models are now subject to substantive examination. In general, the utility model is becoming increasingly similar to the "lightweight" invention, as originally intended by the legislator.
2. As a utility model, it is now possible to patent only one device (and not a group of devices, as before).
3. Descriptions, drawings and claims of inventions and utility models now need to be prepared more carefully, because:
a) the examination has the right to “wrap up” a poorly written application;
b) on its own initiative, changes to the formula and description can be made once after receiving the search report, other changes are possible only upon examination request,
c) to overcome the objections of the examination it is not allowed to specify an arbitrary additional technical result,
d) a weak description can cause a patent to be annulled not only indirectly - by the criterion of industrial applicability (as it was before), but also directly - by the criterion of completeness of the disclosure of the invention or utility model.
4. In case of infringement of the exclusive right to an invention, the utility model, the rightholder will be able (from January 1, 2015) instead of compensation for damages, to demand payment of compensation, the amount of which is established by the court.
Paragraph 1 of Art. 1350 of the Civil Code of the Russian Federation: the definition of the invention is supplemented by an explicit indication of the use of a product or method for a specific purpose. Practical value: legislative consolidation of existing practice. It mainly affects pharmaceuticals, agrochemistry and other similar industries for which the patenting of manufacturing technology or application is important.
Paragraph 2 of Art. 1350 of the Civil Code of the Russian Federation: inventions can be opposed to applications for industrial designs. Practical meaning: This provision was introduced in connection with the legislative consolidation of the possibility of converting an application for an industrial design into an application for an invention or an application for a utility model.
Paragraph 3 of Art. 1350 of the Civil Code of the Russian Federation: in the definition of so-called "Inventive Immunity" clearly indicated the exhibiting of the invention at the exhibition. Practical value: legislative consolidation of existing practice.
Paragraph 5 of Art. 1350 of the Civil Code of the Russian Federation: a clear reference was made to the open nature of the list of solutions that are not inventions. Practical value: legislative consolidation of existing practice.
Article 1361 of the Civil Code of the Russian Federation: reference to equivalent features is introduced in the definition of the right of prior use of an invention. Practical value: the changes are clarifying.
Paragraph 1 of Art. 1366 of the Civil Code of the Russian Federation: it is clarified that only the author of the invention has the right to file an application that, in the event of a patent being granted, the applicant undertakes to enter into an agreement on the alienation of the patent on terms consistent with established practice and that fees already paid are not returned. Practical value: the changes are clarifying.
Paragraph 2 of Art. 1375 of the Civil Code of the Russian Federation: in paragraphs 1) an indication of a person having the right to receive a patent has been introduced in paragraphs. 2) introduced an indication of a specialist in this field of technology, in paragraphs. 3) introduced an indication of clarity of expression of the invention. Practical value: the changes are clarifying.
Paragraph 5 of Art. 1378 of the Civil Code of the Russian Federation: the period during which the changes made by the applicant to the application documents for an invention are taken into account when publishing information about the application has been increased from 12 to 15 months. Practical value: streamlining formalities.
Article 1384 of the Civil Code of the Russian Federation: the time for answering a request has been changed - it used to be two months from the date of receipt of the request by the applicant, now it is three months from the day the request was sent by Rospatent. Practical value: legislative consolidation of existing practice. Rospatent will no longer take into account the “shoals” of the Russian Post. For correspondence on applications, it is advisable to use an electronic personal account.
Paragraph 1 of Art. 1385 of the Civil Code of the Russian Federation: the publication of information about the application is not made if before the expiration of 15 months (previously it was 12 months) from the date of filing the application for the invention, it was withdrawn or recognized as withdrawn or on the basis of its registration of the invention. Practical value: streamlining formalities.
Paragraph 2 of Art. 1386 of the Civil Code of the Russian Federation: the structure of actions during the substantive examination is clarified - reference is made to the requirements and conditions established by paragraph 4 of Art. 1349 of the Civil Code of the Russian Federation, para. 1 p. 1, p. 5 and p. 6 of Art. 1350 of the Civil Code of the Russian Federation (these changes are of a clarifying nature), and a test of the sufficiency of disclosure of the claimed invention in the application documents has been introduced. Practical value: an important change - the descriptions, drawings and claims of the inventions now need to be prepared more thoroughly.
Paragraph 1 of Art. 1387 of the Civil Code of the Russian Federation: it is explicitly stated that in case of insufficient disclosure of the essence of the claimed invention, a decision is taken to refuse to issue a patent; The six-month response to the examination decision is set from the day the request was sent by Rospatent. Practical value: an important change - the descriptions, drawings and claims of the inventions now need to be prepared more thoroughly. In addition, Rospatent will no longer take into account the "jambs" of the Russian Post. For correspondence on applications, it is advisable to use an electronic personal account.
Paragraph 3 of Art. 1387 of the Civil Code of the Russian Federation: the deadline for filing an objection to the refusal to grant a patent or the recognition of an application withdrawn has been changed (earlier it was 6 months from the date of receipt of the decision by the applicant, now - 7 months from the day the decision was sent by Rospatent) and the time period for requesting opposed materials (earlier was 2 months from receipt of the decision by the applicant, now - 3 months from the day the decision was sent by Rospatent). Practical value: legislative consolidation of existing practice. Rospatent will no longer take into account the “shoals” of the Russian Post. For correspondence on applications, it is advisable to use an electronic personal account.
Article 1388 of the Civil Code of the Russian Federation: the applicant has the right to get acquainted with all materials related to the patenting of inventions to which Rospatent refers, with the exception of documents of an unpublished application. Practical value: legislative consolidation of existing practice.
Article 1389 of the Civil Code of the Russian Federation: reference to evidence of the validity of the reasons for which the term of the applicant’s necessary action was not observed was excluded from the article. Practical value: streamlining formalities. The exclusion of mentioning evidence does not mean that the validity of the reasons is not required to be proved, since Rospatent will continue to decide whether they are valid or not.
Paragraph 3 of Art. 1392 of the Civil Code of the Russian Federation: the term “monetary compensation” is replaced by the term “monetary reward”. Practical value: the changes are clarifying.
Paragraph 2 of Art. 1351 of the Civil Code of the Russian Federation: the concept of the level of technology of the utility model now fully coincides with the concept of the level of technology of the invention. Practical value: the legal regime of the utility model is approaching the legal regime of the invention.
Paragraph 3 of Art. 1351 of the Civil Code of the Russian Federation: in the definition of so-called "Inventive immunity" clearly indicated the exposure of the utility model at the exhibition. Practical value: legislative consolidation of existing practice.
Paragraph 5 of Art. 1351 of the Civil Code of the Russian Federation: in the definition of decisions that are not a useful model, a clarifying reference to clause 5 of Art. 1350 and an indication was entered that the application relates to the indicated objects as such. Practical value: the changes are clarifying.
Paragraph 6 of Art. 1351 of the Civil Code of the Russian Federation: in the definition of objects to which legal protection is not provided as a utility model, reference is made to paragraph 6 of Art. 1350. Practical value: the changes are clarifying.
Paragraph 1 of Art. 1376 of the Civil Code of the Russian Federation: an application for a utility model should relate to one utility model. Practical value: an important change - the possibility of patenting one application of a group of utility models is excluded.
Paragraph 2 of Art. 1376 of the Civil Code of the Russian Federation: the requirements for the content of the application for a utility model are made symmetrical with the requirements for the content of the application for an invention (taking into account clause 1 of Article 1376 of the Civil Code of the Russian Federation). Practical value: the legal regime of the utility model is approaching the legal regime of the invention.
Paragraph 1 of Art. 1390 of the Civil Code of the Russian Federation: the composition of actions during the examination of the utility model has been clarified on its merits - reference is made to the requirements and conditions set forth in clause 4 of Art. 1349 of the Civil Code of the Russian Federation, para. 1 p. 1, p. 5 and p. 6 of Art. 1351 of the Civil Code of the Russian Federation ( these changes are of a clarifying nature ), and a test of the sufficiency of disclosure of the essence of the claimed utility model has been introduced. Practical value: an important change - descriptions, drawings and formulas of utility models now need to be prepared more thoroughly.
Paragraph 2 of Art. 1390 of the Civil Code of the Russian Federation: it is explicitly stated that if there is insufficient disclosure of the essence of the claimed utility model, a decision is taken to refuse to grant a patent; The six-month response to the examination decision is set from the day the request was sent by Rospatent. Practical value: an important change - the descriptions, drawings and claims of the inventions now need to be prepared more thoroughly. In addition, Rospatent will no longer take into account the "jambs" of the Russian Post. For correspondence applications it is advisable to use an electronic personal account.
Article 1349 of the Civil Code of the Russian Federation: a clone of a person is clearly indicated in the list of objects that cannot be the subject of patent rights, in paragraphs. 4) given clarifying reference to paragraphs. one). Practical value: the changes are clarifying.
Paragraph 2 of Art. 1358 of the Civil Code of the Russian Federation: paragraphs added 4) symmetrically to the change in art. 1350 of the Civil Code of the Russian Federation regarding the use of a product or method for a specific purpose. Practical value: the changes are clarifying.
Paragraph 3 of Art. 1358 of the Civil Code of the Russian Federation: the criteria for recognizing the used invention and useful model are specified. It is explicitly stated that the doctrine of equivalents is not applied to the utility model. Practical value: the changes are clarifying.
Article 1358.1 of the Civil Code of the Russian Federation: the concept of dependent invention and dependent utility model is introduced, their legal regime is defined. Practical value: the changes are clarifying.
Article 1359 of the Civil Code of the Russian Federation: it is explicitly stated that re-import, resale and other similar actions are not a violation of the exclusive right to an invention, utility model or industrial design. Practical value: the changes are clarifying.
Paragraph 1 of Art. 1378 of the Civil Code of the Russian Federation: changes to the application documents (except for changing information about the author and the applicant) on their own initiative can now be made only once after receiving the search results, other changes are possible only upon examination request. By the way, such an order is a common practice in many countries. Practical value: an important change - the descriptions, drawings and formulas of inventions and utility models now need to be prepared more carefully.
Paragraph 2 of Art. 1378 of the Civil Code of the Russian Federation: changes in the application will be checked for compliance with the requirements of the unity of the invention (this legislatively enshrines the existing practice); In order to overcome the objections of the examination of novelty and / or inventive step, now it is not allowed to specify an arbitrary additional technical result. Practical value: an important change - the descriptions, drawings and formulas of inventions and utility models now need to be prepared more carefully.
Article 1379 of the Civil Code of the Russian Federation: the possibility of mutual conversion of applications for inventions, utility models and industrial designs is introduced. Practical meaning: in real life, it may be necessary in case of an erroneous filing of an application with the wrong type of application (for example, they wanted to submit an application for an invention, but applied for an industrial design, although the application materials contain all the attributes of the application for an invention — previously such an application had to be withdrawn and submitted again with loss of priority, and now you can convert it).
Paragraph 3 of Art. 1381 of the Civil Code of the Russian Federation: when determining the priority of an invention, a utility model by the filing date of the earlier application by the same applicant, the condition for the absence of state registration (that is, granted patent) was introduced by the earlier application. Practical value: the changes are clarifying.
Items 2 and 3 of Art. 1382 of the Civil Code of the Russian Federation: the same legal regime is established for utility models in relation to convention priority as for inventions. Practical value: the legal regime of the utility model is approaching the legal regime of the invention.
Clause 1 of Art. 1382 of the Civil Code of the Russian Federation: the 12-month period for decision making by applicants who simultaneously filed applications for identical inventions was established from the date of sending by Rospatent, before it was from the day they were received by the applicants. Practical meaning: Rospatent will no longer take into account the “jambs” of the Russian Post. For correspondence on applications, it is advisable to use an electronic personal account.
Paragraph 2 of Art. 1393 of the Civil Code of the Russian Federation: the decision on the recognition of an application withdrawn due to non-payment of the fee for registration and issuance of a patent for an invention or utility model is not accepted in the event of challenging the decision to grant a patent. Practical meaning: if, after Rospatent decides to grant a patent (this event is visible to everyone in the registry) and before issuing a patent from a third party, an objection was received against the grant of a patent, then the fee may not be paid until the decision on the objection is made.
Point 4 of Art. 1393 of the Civil Code of the Russian Federation: it is explicitly stated that Rospatent makes changes in the issued patent and in the relevant register relating to information about the legal owner and (or) about the author, including the name, the name of the right holder, his location or place of residence, the author’s name, address for correspondence. Practical meaning: before, it had to be forced through court to force Rospatent to change erroneous information about the author.
Paragraph 2 of Art. 1395 of the Civil Code of the Russian Federation: it is explicitly stated that the national application for which the priority of the international application is claimed is not recognized as withdrawn. Practical value: legislative consolidation of existing practice.
Paragraph 1 of Art. 1396 of the Civil Code of the Russian Federation: it is explicitly stated that the deadline for submitting these documents missed by the applicant can be restored, provided that the reasons for non-compliance are indicated. Practical value: the changes are clarifying. It should also be noted that to restore missed deadlines for international applications, Rospatent applies the “due care” criterion, i.e. the applicant must indicate the valid reasons for the permit and Rospatent may request evidence of their respectfulness.
Paragraph 1 of Art. 1398 of the Civil Code of the Russian Federation: the reason for the revocation of a patent may be a failure to comply with the requirement of disclosure of the invention or utility model with fullness sufficient to carry out the invention or utility model by a specialist in the field of technology. Practical value: an important change - the descriptions, drawings and formulas of inventions and utility models now need to be prepared more carefully.
Paragraph 2 of Art. 1398 of the Civil Code of the Russian Federation: it is clearly stated who and where should submit objections to the issuance of a patent for various reasons. Practical value: legislative consolidation of existing practice.
Paragraph 3 of Art. 1398 of the Civil Code of the Russian Federation: the conditions for converting a controversial invention into a useful model are defined; however, the priority and filing date are retained. Practical value: the changes are clarifying.
Paragraph 1 of Art. 1400 of the Civil Code of the Russian Federation: it is expressly stated that restoration of a patent is possible not only at the request of the person who owned the patent, but also at the request of the legal successor of this person. Practical value: the changes are clarifying.
Point 4 of Art. 1400 of the Civil Code of the Russian Federation: it is expressly stated that the right of after-use can be transferred to another person only together with the company where the use was made or preparations necessary for this were made. Practical value: the changes are clarifying.
Article 1406.1 of the Civil Code of the Russian Federation (to be enacted from January 1, 2015): in the event of a violation of the exclusive right to an invention, the right holder, instead of compensation for damages, can claim compensation, the amount of which is set by the court. Practical value: an important change - now there is no need for time-consuming calculation of losses; compensation may be easier and faster than reimbursement. Previously, compensation instead of damages could be claimed only in respect of objects of copyright and related rights, as well as means of individualization.
Changes related to service inventions and utility models - see here .
Clause 3.1 Art. 1234 of the Civil Code of the Russian Federation: gratuitous alienation of the exclusive right in relations between commercial organizations is not allowed, unless otherwise provided by the Civil Code. Practical value: legislative consolidation of existing practice.
Clause 5.1 of Art. 1235 of the Civil Code of the Russian Federation: gratuitous provision of the right to use the result of intellectual activity or means of individualization in relations between commercial organizations throughout the world and for the entire duration of the exclusive right under the exclusive license is not allowed. Practical value: the changes are clarifying.
Paragraph 5 of Art. 1234 of the Civil Code of the Russian Federation: a thirty-day deadline is set for the purchaser of the exclusive right of indebtedness to the rightholder before the rightholder can unilaterally cancel the contract and demand compensation for damages. Practical value: the changes are clarifying.
Clause 1.1 Art. 1236 of the Civil Code of the Russian Federation: the licensor is not entitled to use the result of intellectual activity or means of individualization to the extent that the right to use such a result or such means of individualization is granted to the licensee under an exclusive license, unless otherwise provided by this agreement. Practical meaning: the changes are of a clarifying nature - the default value of this parameter is established by law.
Point 4 of Art. 1236 of the Civil Code of the Russian Federation: the condition of substantial debt and a thirty-day period for its liquidation are established before the licensor can unilaterally withdraw from the license agreement and demand compensation for damages. Practical value: the changes are clarifying.
Article 1369 of the Civil Code of the Russian Federation: clearly indicated the invalidity of the agreement on the disposal of the exclusive right in case of non-compliance with the written form. Practical value: legislative consolidation of existing practice.
Paragraph 1 of Art. 1232 of the Civil Code of the Russian Federation: the right holder is obliged to notify Rospatent about the change of the name or name, location or place of residence and address for correspondence of the right holder. The risk of adverse consequences in the event that such notice is not made or false information is submitted shall be borne by the right holder. Practical value: if due to a change in the name, name or address of the right holder, it was not possible to notify him, for example, about a patent dispute arising, this dispute may be considered without his participation and the decision is very likely to be in his favor. That is, in this case there is a risk of losing a patent and not even knowing about it until a certain time.
Items 3-5 Art. 1250 of the Civil Code of the Russian Federation: an indication of force majeure circumstances that exempt from liability for infringement of intellectual property rights and the right to recourse claims (for example, if the consumer has violated the consumer because of the manufacturer). Practical value: the changes are clarifying.
Clause 6.1 of Art. 1252 of the Civil Code of the Russian Federation: in the event that one violation of the exclusive right to the result of intellectual activity or means of individualization is committed by the actions of several persons jointly, such persons shall be liable jointly and severally to the right holder. Practical value: the changes are clarifying.
Article 1253 of the Civil Code of the Russian Federation: a condition has been established for the presence of guilt in case of violation of exclusive rights for the liquidation of a legal entity or the termination of an IP activity Practical value: extortion and “white” raiding are complicated.
Article 1254 of the Civil Code of the Russian Federation: the possibility of a licensee to demand the liquidation of a legal entity and the termination of an IP activity in violation of exclusive rights is excluded. Practical value: extortion and “white” raiding are complicated.
Only the changes having the greatest practical value are mentioned here. A full summary of the changes with references to the documents that have become invalid and come into effect is available in Consultant Plus and other legal bases. If someone can not download it, I am ready to share this summary as a file.
Briefly, the most important changes for applicants and rightholders regarding the patenting of inventions and utility models:
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1. There will no longer be “free” patents for utility models issued actually on parole of the applicant, utility models are now subject to substantive examination. In general, the utility model is becoming increasingly similar to the "lightweight" invention, as originally intended by the legislator.
2. As a utility model, it is now possible to patent only one device (and not a group of devices, as before).
3. Descriptions, drawings and claims of inventions and utility models now need to be prepared more carefully, because:
a) the examination has the right to “wrap up” a poorly written application;
b) on its own initiative, changes to the formula and description can be made once after receiving the search report, other changes are possible only upon examination request,
c) to overcome the objections of the examination it is not allowed to specify an arbitrary additional technical result,
d) a weak description can cause a patent to be annulled not only indirectly - by the criterion of industrial applicability (as it was before), but also directly - by the criterion of completeness of the disclosure of the invention or utility model.
4. In case of infringement of the exclusive right to an invention, the utility model, the rightholder will be able (from January 1, 2015) instead of compensation for damages, to demand payment of compensation, the amount of which is established by the court.
Inventions
Paragraph 1 of Art. 1350 of the Civil Code of the Russian Federation: the definition of the invention is supplemented by an explicit indication of the use of a product or method for a specific purpose. Practical value: legislative consolidation of existing practice. It mainly affects pharmaceuticals, agrochemistry and other similar industries for which the patenting of manufacturing technology or application is important.
Paragraph 2 of Art. 1350 of the Civil Code of the Russian Federation: inventions can be opposed to applications for industrial designs. Practical meaning: This provision was introduced in connection with the legislative consolidation of the possibility of converting an application for an industrial design into an application for an invention or an application for a utility model.
Paragraph 3 of Art. 1350 of the Civil Code of the Russian Federation: in the definition of so-called "Inventive Immunity" clearly indicated the exhibiting of the invention at the exhibition. Practical value: legislative consolidation of existing practice.
Paragraph 5 of Art. 1350 of the Civil Code of the Russian Federation: a clear reference was made to the open nature of the list of solutions that are not inventions. Practical value: legislative consolidation of existing practice.
Article 1361 of the Civil Code of the Russian Federation: reference to equivalent features is introduced in the definition of the right of prior use of an invention. Practical value: the changes are clarifying.
Paragraph 1 of Art. 1366 of the Civil Code of the Russian Federation: it is clarified that only the author of the invention has the right to file an application that, in the event of a patent being granted, the applicant undertakes to enter into an agreement on the alienation of the patent on terms consistent with established practice and that fees already paid are not returned. Practical value: the changes are clarifying.
Paragraph 2 of Art. 1375 of the Civil Code of the Russian Federation: in paragraphs 1) an indication of a person having the right to receive a patent has been introduced in paragraphs. 2) introduced an indication of a specialist in this field of technology, in paragraphs. 3) introduced an indication of clarity of expression of the invention. Practical value: the changes are clarifying.
Paragraph 5 of Art. 1378 of the Civil Code of the Russian Federation: the period during which the changes made by the applicant to the application documents for an invention are taken into account when publishing information about the application has been increased from 12 to 15 months. Practical value: streamlining formalities.
Article 1384 of the Civil Code of the Russian Federation: the time for answering a request has been changed - it used to be two months from the date of receipt of the request by the applicant, now it is three months from the day the request was sent by Rospatent. Practical value: legislative consolidation of existing practice. Rospatent will no longer take into account the “shoals” of the Russian Post. For correspondence on applications, it is advisable to use an electronic personal account.
Paragraph 1 of Art. 1385 of the Civil Code of the Russian Federation: the publication of information about the application is not made if before the expiration of 15 months (previously it was 12 months) from the date of filing the application for the invention, it was withdrawn or recognized as withdrawn or on the basis of its registration of the invention. Practical value: streamlining formalities.
Paragraph 2 of Art. 1386 of the Civil Code of the Russian Federation: the structure of actions during the substantive examination is clarified - reference is made to the requirements and conditions established by paragraph 4 of Art. 1349 of the Civil Code of the Russian Federation, para. 1 p. 1, p. 5 and p. 6 of Art. 1350 of the Civil Code of the Russian Federation (these changes are of a clarifying nature), and a test of the sufficiency of disclosure of the claimed invention in the application documents has been introduced. Practical value: an important change - the descriptions, drawings and claims of the inventions now need to be prepared more thoroughly.
Paragraph 1 of Art. 1387 of the Civil Code of the Russian Federation: it is explicitly stated that in case of insufficient disclosure of the essence of the claimed invention, a decision is taken to refuse to issue a patent; The six-month response to the examination decision is set from the day the request was sent by Rospatent. Practical value: an important change - the descriptions, drawings and claims of the inventions now need to be prepared more thoroughly. In addition, Rospatent will no longer take into account the "jambs" of the Russian Post. For correspondence on applications, it is advisable to use an electronic personal account.
Paragraph 3 of Art. 1387 of the Civil Code of the Russian Federation: the deadline for filing an objection to the refusal to grant a patent or the recognition of an application withdrawn has been changed (earlier it was 6 months from the date of receipt of the decision by the applicant, now - 7 months from the day the decision was sent by Rospatent) and the time period for requesting opposed materials (earlier was 2 months from receipt of the decision by the applicant, now - 3 months from the day the decision was sent by Rospatent). Practical value: legislative consolidation of existing practice. Rospatent will no longer take into account the “shoals” of the Russian Post. For correspondence on applications, it is advisable to use an electronic personal account.
Article 1388 of the Civil Code of the Russian Federation: the applicant has the right to get acquainted with all materials related to the patenting of inventions to which Rospatent refers, with the exception of documents of an unpublished application. Practical value: legislative consolidation of existing practice.
Article 1389 of the Civil Code of the Russian Federation: reference to evidence of the validity of the reasons for which the term of the applicant’s necessary action was not observed was excluded from the article. Practical value: streamlining formalities. The exclusion of mentioning evidence does not mean that the validity of the reasons is not required to be proved, since Rospatent will continue to decide whether they are valid or not.
Paragraph 3 of Art. 1392 of the Civil Code of the Russian Federation: the term “monetary compensation” is replaced by the term “monetary reward”. Practical value: the changes are clarifying.
Utility models
Paragraph 2 of Art. 1351 of the Civil Code of the Russian Federation: the concept of the level of technology of the utility model now fully coincides with the concept of the level of technology of the invention. Practical value: the legal regime of the utility model is approaching the legal regime of the invention.
Paragraph 3 of Art. 1351 of the Civil Code of the Russian Federation: in the definition of so-called "Inventive immunity" clearly indicated the exposure of the utility model at the exhibition. Practical value: legislative consolidation of existing practice.
Paragraph 5 of Art. 1351 of the Civil Code of the Russian Federation: in the definition of decisions that are not a useful model, a clarifying reference to clause 5 of Art. 1350 and an indication was entered that the application relates to the indicated objects as such. Practical value: the changes are clarifying.
Paragraph 6 of Art. 1351 of the Civil Code of the Russian Federation: in the definition of objects to which legal protection is not provided as a utility model, reference is made to paragraph 6 of Art. 1350. Practical value: the changes are clarifying.
Paragraph 1 of Art. 1376 of the Civil Code of the Russian Federation: an application for a utility model should relate to one utility model. Practical value: an important change - the possibility of patenting one application of a group of utility models is excluded.
Paragraph 2 of Art. 1376 of the Civil Code of the Russian Federation: the requirements for the content of the application for a utility model are made symmetrical with the requirements for the content of the application for an invention (taking into account clause 1 of Article 1376 of the Civil Code of the Russian Federation). Practical value: the legal regime of the utility model is approaching the legal regime of the invention.
Paragraph 1 of Art. 1390 of the Civil Code of the Russian Federation: the composition of actions during the examination of the utility model has been clarified on its merits - reference is made to the requirements and conditions set forth in clause 4 of Art. 1349 of the Civil Code of the Russian Federation, para. 1 p. 1, p. 5 and p. 6 of Art. 1351 of the Civil Code of the Russian Federation ( these changes are of a clarifying nature ), and a test of the sufficiency of disclosure of the essence of the claimed utility model has been introduced. Practical value: an important change - descriptions, drawings and formulas of utility models now need to be prepared more thoroughly.
Paragraph 2 of Art. 1390 of the Civil Code of the Russian Federation: it is explicitly stated that if there is insufficient disclosure of the essence of the claimed utility model, a decision is taken to refuse to grant a patent; The six-month response to the examination decision is set from the day the request was sent by Rospatent. Practical value: an important change - the descriptions, drawings and claims of the inventions now need to be prepared more thoroughly. In addition, Rospatent will no longer take into account the "jambs" of the Russian Post. For correspondence applications it is advisable to use an electronic personal account.
Inventions + utility models
Article 1349 of the Civil Code of the Russian Federation: a clone of a person is clearly indicated in the list of objects that cannot be the subject of patent rights, in paragraphs. 4) given clarifying reference to paragraphs. one). Practical value: the changes are clarifying.
Paragraph 2 of Art. 1358 of the Civil Code of the Russian Federation: paragraphs added 4) symmetrically to the change in art. 1350 of the Civil Code of the Russian Federation regarding the use of a product or method for a specific purpose. Practical value: the changes are clarifying.
Paragraph 3 of Art. 1358 of the Civil Code of the Russian Federation: the criteria for recognizing the used invention and useful model are specified. It is explicitly stated that the doctrine of equivalents is not applied to the utility model. Practical value: the changes are clarifying.
Article 1358.1 of the Civil Code of the Russian Federation: the concept of dependent invention and dependent utility model is introduced, their legal regime is defined. Practical value: the changes are clarifying.
Article 1359 of the Civil Code of the Russian Federation: it is explicitly stated that re-import, resale and other similar actions are not a violation of the exclusive right to an invention, utility model or industrial design. Practical value: the changes are clarifying.
Paragraph 1 of Art. 1378 of the Civil Code of the Russian Federation: changes to the application documents (except for changing information about the author and the applicant) on their own initiative can now be made only once after receiving the search results, other changes are possible only upon examination request. By the way, such an order is a common practice in many countries. Practical value: an important change - the descriptions, drawings and formulas of inventions and utility models now need to be prepared more carefully.
Paragraph 2 of Art. 1378 of the Civil Code of the Russian Federation: changes in the application will be checked for compliance with the requirements of the unity of the invention (this legislatively enshrines the existing practice); In order to overcome the objections of the examination of novelty and / or inventive step, now it is not allowed to specify an arbitrary additional technical result. Practical value: an important change - the descriptions, drawings and formulas of inventions and utility models now need to be prepared more carefully.
Article 1379 of the Civil Code of the Russian Federation: the possibility of mutual conversion of applications for inventions, utility models and industrial designs is introduced. Practical meaning: in real life, it may be necessary in case of an erroneous filing of an application with the wrong type of application (for example, they wanted to submit an application for an invention, but applied for an industrial design, although the application materials contain all the attributes of the application for an invention — previously such an application had to be withdrawn and submitted again with loss of priority, and now you can convert it).
Paragraph 3 of Art. 1381 of the Civil Code of the Russian Federation: when determining the priority of an invention, a utility model by the filing date of the earlier application by the same applicant, the condition for the absence of state registration (that is, granted patent) was introduced by the earlier application. Practical value: the changes are clarifying.
Items 2 and 3 of Art. 1382 of the Civil Code of the Russian Federation: the same legal regime is established for utility models in relation to convention priority as for inventions. Practical value: the legal regime of the utility model is approaching the legal regime of the invention.
Clause 1 of Art. 1382 of the Civil Code of the Russian Federation: the 12-month period for decision making by applicants who simultaneously filed applications for identical inventions was established from the date of sending by Rospatent, before it was from the day they were received by the applicants. Practical meaning: Rospatent will no longer take into account the “jambs” of the Russian Post. For correspondence on applications, it is advisable to use an electronic personal account.
Paragraph 2 of Art. 1393 of the Civil Code of the Russian Federation: the decision on the recognition of an application withdrawn due to non-payment of the fee for registration and issuance of a patent for an invention or utility model is not accepted in the event of challenging the decision to grant a patent. Practical meaning: if, after Rospatent decides to grant a patent (this event is visible to everyone in the registry) and before issuing a patent from a third party, an objection was received against the grant of a patent, then the fee may not be paid until the decision on the objection is made.
Point 4 of Art. 1393 of the Civil Code of the Russian Federation: it is explicitly stated that Rospatent makes changes in the issued patent and in the relevant register relating to information about the legal owner and (or) about the author, including the name, the name of the right holder, his location or place of residence, the author’s name, address for correspondence. Practical meaning: before, it had to be forced through court to force Rospatent to change erroneous information about the author.
Paragraph 2 of Art. 1395 of the Civil Code of the Russian Federation: it is explicitly stated that the national application for which the priority of the international application is claimed is not recognized as withdrawn. Practical value: legislative consolidation of existing practice.
Paragraph 1 of Art. 1396 of the Civil Code of the Russian Federation: it is explicitly stated that the deadline for submitting these documents missed by the applicant can be restored, provided that the reasons for non-compliance are indicated. Practical value: the changes are clarifying. It should also be noted that to restore missed deadlines for international applications, Rospatent applies the “due care” criterion, i.e. the applicant must indicate the valid reasons for the permit and Rospatent may request evidence of their respectfulness.
Paragraph 1 of Art. 1398 of the Civil Code of the Russian Federation: the reason for the revocation of a patent may be a failure to comply with the requirement of disclosure of the invention or utility model with fullness sufficient to carry out the invention or utility model by a specialist in the field of technology. Practical value: an important change - the descriptions, drawings and formulas of inventions and utility models now need to be prepared more carefully.
Paragraph 2 of Art. 1398 of the Civil Code of the Russian Federation: it is clearly stated who and where should submit objections to the issuance of a patent for various reasons. Practical value: legislative consolidation of existing practice.
Paragraph 3 of Art. 1398 of the Civil Code of the Russian Federation: the conditions for converting a controversial invention into a useful model are defined; however, the priority and filing date are retained. Practical value: the changes are clarifying.
Paragraph 1 of Art. 1400 of the Civil Code of the Russian Federation: it is expressly stated that restoration of a patent is possible not only at the request of the person who owned the patent, but also at the request of the legal successor of this person. Practical value: the changes are clarifying.
Point 4 of Art. 1400 of the Civil Code of the Russian Federation: it is expressly stated that the right of after-use can be transferred to another person only together with the company where the use was made or preparations necessary for this were made. Practical value: the changes are clarifying.
Article 1406.1 of the Civil Code of the Russian Federation (to be enacted from January 1, 2015): in the event of a violation of the exclusive right to an invention, the right holder, instead of compensation for damages, can claim compensation, the amount of which is set by the court. Practical value: an important change - now there is no need for time-consuming calculation of losses; compensation may be easier and faster than reimbursement. Previously, compensation instead of damages could be claimed only in respect of objects of copyright and related rights, as well as means of individualization.
Changes related to service inventions and utility models - see here .
Contracts (alienation and license)
Clause 3.1 Art. 1234 of the Civil Code of the Russian Federation: gratuitous alienation of the exclusive right in relations between commercial organizations is not allowed, unless otherwise provided by the Civil Code. Practical value: legislative consolidation of existing practice.
Clause 5.1 of Art. 1235 of the Civil Code of the Russian Federation: gratuitous provision of the right to use the result of intellectual activity or means of individualization in relations between commercial organizations throughout the world and for the entire duration of the exclusive right under the exclusive license is not allowed. Practical value: the changes are clarifying.
Paragraph 5 of Art. 1234 of the Civil Code of the Russian Federation: a thirty-day deadline is set for the purchaser of the exclusive right of indebtedness to the rightholder before the rightholder can unilaterally cancel the contract and demand compensation for damages. Practical value: the changes are clarifying.
Clause 1.1 Art. 1236 of the Civil Code of the Russian Federation: the licensor is not entitled to use the result of intellectual activity or means of individualization to the extent that the right to use such a result or such means of individualization is granted to the licensee under an exclusive license, unless otherwise provided by this agreement. Practical meaning: the changes are of a clarifying nature - the default value of this parameter is established by law.
Point 4 of Art. 1236 of the Civil Code of the Russian Federation: the condition of substantial debt and a thirty-day period for its liquidation are established before the licensor can unilaterally withdraw from the license agreement and demand compensation for damages. Practical value: the changes are clarifying.
Article 1369 of the Civil Code of the Russian Federation: clearly indicated the invalidity of the agreement on the disposal of the exclusive right in case of non-compliance with the written form. Practical value: legislative consolidation of existing practice.
General provisions
Paragraph 1 of Art. 1232 of the Civil Code of the Russian Federation: the right holder is obliged to notify Rospatent about the change of the name or name, location or place of residence and address for correspondence of the right holder. The risk of adverse consequences in the event that such notice is not made or false information is submitted shall be borne by the right holder. Practical value: if due to a change in the name, name or address of the right holder, it was not possible to notify him, for example, about a patent dispute arising, this dispute may be considered without his participation and the decision is very likely to be in his favor. That is, in this case there is a risk of losing a patent and not even knowing about it until a certain time.
Items 3-5 Art. 1250 of the Civil Code of the Russian Federation: an indication of force majeure circumstances that exempt from liability for infringement of intellectual property rights and the right to recourse claims (for example, if the consumer has violated the consumer because of the manufacturer). Practical value: the changes are clarifying.
Clause 6.1 of Art. 1252 of the Civil Code of the Russian Federation: in the event that one violation of the exclusive right to the result of intellectual activity or means of individualization is committed by the actions of several persons jointly, such persons shall be liable jointly and severally to the right holder. Practical value: the changes are clarifying.
Article 1253 of the Civil Code of the Russian Federation: a condition has been established for the presence of guilt in case of violation of exclusive rights for the liquidation of a legal entity or the termination of an IP activity Practical value: extortion and “white” raiding are complicated.
Article 1254 of the Civil Code of the Russian Federation: the possibility of a licensee to demand the liquidation of a legal entity and the termination of an IP activity in violation of exclusive rights is excluded. Practical value: extortion and “white” raiding are complicated.
Conclusion
Only the changes having the greatest practical value are mentioned here. A full summary of the changes with references to the documents that have become invalid and come into effect is available in Consultant Plus and other legal bases. If someone can not download it, I am ready to share this summary as a file.
Source: https://habr.com/ru/post/288432/
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