Baker & McKenzie : Rules on state registration of IP rights changed

A new legal act issued in Russia has revised the rules applicable to state registration of license agreements and other forms of disposal of rights in the field of intellectual property.

The act – Order No. 321 of the Ministry of Education and Science of the Russian Federation “On the Approval of the Administrative Regulations to Govern the Performance by the Federal Service for Intellectual Property, Patents and Trademarks of Its Functions to State-Register Agreements on Disposal of Rights to Inventions, Utility Models, Industrial Designs, Trademarks, Service Marks, Protected Computer Programs, Databases, and Integrated Circuit Layouts, as well as Franchising Agreements for Intellectual Property Assets Protected in Accordance with the Patent Legislation of the Russian Federation”, dated October 29, 2008 (the “Regulations”) – was officially published on June 1, 2009 and came into force on June 12, 2009.

The Regulations supersede the Russian Agency for Patents and Trademark’s Orders Nos. 64 of April 29, 2003 and 163 of December 11, 2003, which used to regulate the registration of such agreements (the “Previous Rules”), and establish new rules for the Russian Federal Service for Intellectual Property, Patents and Trademarks (“Rospatent”) to act as the registrar in their respect.

The following are subject to registration under the Regulations:

  • agreements on assignment of exclusive rights to the following registered intellectual property: a) inventions, b) utility models, c) industrial designs, d) trademarks, e) integrated circuit layouts, f) computer programs, and g) databases;
  • pledge contracts and subsequent pledge contracts for exclusive rights to registered intellectual property listed in points (a)-(e);
  • license agreements and sublicense agreements;
  • franchising agreements and sub-franchising agreements;
  • amendments to any of the substantial conditions of a registered agreement (an “Agreement”), and the termination of an Agreement;
  • mandatory licenses and their termination;
  • open licenses and petitions retracting applications for open licenses; and
  • transfers of executive rights to registered intellectual property listed in points (a)-(g), and appellations of origin other than on the basis of an Agreement.

Unlike the Previous Rules, the new ones expressly authorize any party to an Agreement to apply for its registration.

The Regulations introduce some fundamentally new requirements for the execution of documents.

The corporate names of legal entities, and the first names, middle names or patronymics, and surnames of individuals must now appear in full, without any abbreviations, while the corporate names and addresses of foreign persons must be transliterated and indicated in Cyrillic.

New rules authorize any party to an Agreement to apply for its registration

Any registration application must be entirely in the Russian language. Names and legal addresses, whether those of legal entities or those of individuals, may also be indicated in another language for the purposes of the respective publications in Rospatent’s official newsletters. A registration application must include a contact mailing address in the Russian Federation.

The new requirements concerning the applicant’s identity in the application are as follows:

  • its name (if a legal entity) must be identical to that as given in its constituent documents;
  • if the applicant is a Russian legal entity, the application must provide its principal state registration number, and if the applicant is a Russian individual entrepreneur, the application must give the principal state number of the entry on the latter’s state registration in such capacity; and
  • the application of a foreign person must feature the code of the latter’s country.

The Regulations also expressly stipulate for the first time that the document verifying payment of the applicable fee is a copy of the corresponding payment order with notation marked by the bank to confirm the payment is made, or a bank receipt confirming receipt of the appropriate payment in cash or by bank transfer from a personal account. The document confirming payment of the fee must refer to a single application, feature at least one patent number or certificate number, and specify the procedure for which the fee has been paid.

The period for checking if a filing meets the applicable registration requirements, i.e., for a validity check, is the same two months after either the filing date of the respective registration application or the submission day of the last document requested by Rospatent. But the Regulations also provide for a formal document inspection, which was absent from clearance procedures under the Previous Rules, and which amounts to an examination of a submission so as to satisfy Rospatent that the required package of documents is complete and there are no execution flaws that make any part of a document illegible. Ten business days are reserved for this kind of scrutiny after the documents reach Rospatent.

The Regulations give applicants more time to reply to Rospatent's requests

The Regulations give applicants longer (three months instead of the two before) to reply to a request from Rospatent for additional documents, and makes it possible to further extend this period upon a relevant petition (but by no more than another three months).

The form of disposal of exclusive rights is still at all times subject to Rospatent registration - and on the same conditions as before (the respective intellectual property must be already duly registered, the corresponding documents must conform to the applicable requirements and be filed on time, etc.), as well as the following new conditions:

  • the information provided about the owner of the respective rights or about the parties to the corresponding Agreement must be consistent with the data recorded in the relevant registers;
  • the assignee or licensee of the exclusive rights to a trademark incorporating an appellation of origin as an non-protectable element must have exclusive rights to (use) such appellation of origin;
  • an Agreement executed on a paid basis must include a clause on the amount of the fee or on a procedure for its determination; and
  • none of the rights constituting the subject matter of the Agreement may go beyond the scope of rights held by its corresponding party.

The Regulations also supplement the list of conditions (which were also specified in the Previous Rules) whereby the disposal of exclusive trademark rights may not mislead the consumer in respect of the goods/services or their producer/provider. And the Regulations partially complement the features list specified in the Previous Rules - under this list, assignment of the exclusive right to a trademark may be regarded as misleading – and accordingly can not be registered – as contrary to Item 2 of Article 1488 of the Civil Code of the Russian Federation.

Under the Regulations, the assignment of the exclusive right to a trademark may be regarded as misleading in respect of goods/services or their producer/provider where a trademark includes:

  • A designation representing the state emblem, flag or other state symbol and sign, official state name, emblem, abbreviation or full name of an international and interstate organization, their emblems, flags, other symbols and signs, official countermark, seal of guarantee, hallmark, seal, award or other mark of distinction, or a confusingly similar designation that is included as a non-protectable element on the basis of the corresponding competent authority or its right holder’s consent, if the trademark is assigned to a party to which such consent was not granted;
  • A designation indicating the place of origin or place of sale of the goods included in the trademark as a non-protectable element, if the trademark is assigned to a party located in another geographical area; or
  • A designation that is identical or confusingly similar to an official name or images of especially valuable cultural heritage objects of the peoples of Russia, or world cultural or natural heritage objects, or to images of cultural heritage in collections and funds, if the trademark is assigned to a party to which the consent of the right holder was not granted.

The assignment of the exclusive right to a trademark may be regarded as misleading where such assignment concerns the following:

  • A trademark that has been recognized as well known under the established procedure;
  • A portion of goods and services that are similar to goods and services in relation to which the right holder [trademark owner] retains the right to the trademark;
  • A trademark that is confusingly similar to an industrial design, the right to which belongs to the trademark assignor that retains the right to the industrial design;
  • A trademark that is confusingly similar to a trademark used in relation to similar goods and services, the rights to which trademark are retained by the original right holder; or
  • A trademark reproducing a trade name (or an element thereof), the right to which belongs to the trademark assignor that retains the right to the trade name.

The Regulations contain explicit lists of documents to be submitted for each type of exclusive right disposal.

An applicant is to submit two original counterparts and one uncertified copy of the respective Agreement or of a relevant extract from the Agreement for filing with Rospatent for registration purposes under the Regulations (rather than three originals of the Agreement under the Previous Rules).

Should Rospatent decide to grant a registration application, it should:

  1. Assign a registration number to the respective event requested to be registered;
  2. Make a relevant registration entry in the appropriate register;
  3. Prepare a registration notice in duplicate for the parties to the Agreement or for the licensor and the person granted use rights under a compulsory license;
  4. Produce an appendix to the respective patent or certificate (or, should exclusive trademark rights be assigned in respect of a portion of the corresponding goods and/or services, a new certificate) to reflect the effected registration;
  5. Affix notation to confirm such registration, including its number and date, on the two submitted counterparts of the Agreement;
  6. Send the above registration notice and appendix to the patent or certificate or new certificate, as well as the two counterparts of the Agreement, to the mailing address specified in the registration application;
  7. Report the registration in the official newsletters of Rospatent; and
  8. Publish a posting about the registration on its official website within one month of the registration date.

Should Rospatent decide to turn down a registration application, it should:

  1. send a notice regarding such refusal explaining the reasons behind the decision to the applicant;
  2. return the two original counterparts of the Agreement to the applicant; and
  3. return the document confirming the payment of the fee (except when it was paid for the registration of an Agreement for an integrated circuit layout, a computer program or a database) to the applicant.

The Regulations also establish periods for the review of complaints filed with Rospatent and procedures for challenging any act and/or omission to act on the part of its officers.

Questions regarding this practice note may be addressed to Eugene Arievich, Partner, and Margarita Divina and Marina Sharaeva, Associates, at Baker & McKenzie, Moscow (+7 495 787 2700).