Industrial Designs in Russia

There are many circumstances where claiming legal ownership of your intellectual property is essential – registering for a design patent effectively secures your work as your legal own. This means that you’ll be protected by law against any competitors hoping to copy or re-use your product or design – and as the law regarding intellectual property can vary from country to country, it makes sense to apply for a design patent with a firm offering you specific support in your nation – or for when you travel. Zhuravlev & Partners are experienced patent attorney experts with almost 50 years in helping businesses secure legal, secure patents in Russia, the CIS, and elsewhere in the world.

Industrial Patent Registration

Applying for an industrial design patent in Russia – or if you are doing so as a Russian or CIS national living abroad – can be difficult. Copyright infringement, legislature and red tape that you need to navigate to ensure that your rights are protected can all be tricky to navigate on your own. Our experts can therefore be on hand to help ensure that your product or design is legally secured for your use alone.

Russian design patent law is our speciality – we understand that patents can often make or break a business’ survival. Some firms and individuals seek help from the patent office to ensure that their products are kept exclusive – while others do so to be able to licence out their own designs and services. Whether to protect or to generate revenue, Zhuravlev & Partners will provide you with lawyer support throughout your case to ensure your intellectual property remains your own.

Filing a Patent Application

There are a number of areas you will need to cover in your design patent application in the Russian Federation and elsewhere – if you are claiming patent for a design, you will need to prove that your product or work is original and novel. Novel in this circumstance means that your design is an ‘absolute novelty’ – that no other design of its kind has been made available prior to your application. An industrial design patent will protect you for up to 15 years – but this can be extended for a further 10.

Industrial design patent registration requires plenty of preparation - you will need to arrange paperwork and written descriptions of your design ready for a two-stage examination process – during which time the patent office will be able to make an informed decision on your case. Having helped to file and register over 500 unique patents on behalf of our clients, Zhuravlev & Partners have valuable experience with the Russian patent office and international bodies – all to ensure that intellectual property receives the protection it deserves.

An industrial design is defined as a new and original solution to the appearance of a product, which is used both in manufacturing and in industry in general. Registration of an industrial design in Moscow can be obtained even though these objects do not have an inventive step. The owner acquires the ability to use, dispose of and protect the object. Let us consider how to obtain a patent for the above-mentioned intellectual property and the peculiarities of protecting the rights of the patentee.

Making an application for registration

The establishment of the protection regime for an industrial design takes place through registration with the Rospatent Service and the granting of a patent. For this purpose, the author or other legal owner must submit a set of application documents to FIPS. The application for granting is prepared according to the regulations stipulated by the Civil Code of the Russian Federation and the Order of the Ministry of Economic Development No 695 as of 30.09.2015.

Let's highlight the main points to be considered in the preparation of application documents:

• The signs of patentability of industrial designs are only novelty and originality of the solution of appearance, so even at the preparatory stage it is necessary to conduct a patent search in databases of intellectual property objects;
• Since February 2018, it is possible to apply for the specified object under the procedure approved by the Geneva Act of the Hague Agreement - this procedure allows you to establish protection not only in the Russian Federation, but also outside the country;
• You can apply in person or through patent attorneys, who will represent your interests on the basis of a power of attorney.

At the search stage, it is necessary to check whether there have been previous registration procedures or applications for similar objects of intellectual property rights. This procedure on your own may take several months, and the application to the patent office can significantly shorten this period. If the search results show no matches, you can proceed with the drafting of the application.

The following documents must be included in the application:

• Application for expert review and registration actions;
• Graphic images, allowing to get a complete idea of the essential features of the claimed solution;
• Description of the submitted object;
• Graphic and text materials (confectionary maps, drawings, etc.) - if they will reveal the essence of the presented object;
• Document about transfer of the fee for expert and registration activities.

Submissions are allowed in writing or electronically, and registration of the application allows priority to be established to protect the rights of the author or owner of the object.

The applicant will have to take into account the restrictions of the Civil Code of the Russian Federation, which will not allow the design to be patented:

• If the submitted solution is only due to the technical function of the product, i.e. does not contain essential features of aesthetic perception;
• If the presented solution is capable of misleading third parties (for example, creating a false impression of the manufacturer).

If these circumstances are revealed, the consideration of the documents will result in a refusal of registration.

When considering a patent, the application documentation for an industrial design will be checked for state secrets, if a solution is submitted for a copy referred to the protected objects and rights. Such documentation will require a license from the FSB or other body authorized to work with state secrets.

Design registration

After sending the application to FIPS, the following set of actions are carried out:

• Formal examination - at this stage the compliance of the documentation with the requirements of the law is established, as well as the availability of all necessary documents and graphic materials;
• Formal examination - at this stage the compliance of the documentation with the requirements of the law is established, as well as the availability of all necessary documents and graphic materials;
• If the examination of the merits is positive, a decision on the registration of the design is made;
• Information about the rights is entered into the register and published in the bulletin of Rospatent, after which the applicant is granted a patent.

Cost of a design patent

The registration of a patent is a paid procedure. The applicant must pay 297.50 Rubles for application registration and formal examination, and 122.50 Rubles for each following design. The fee for substantive examination will make up 525 rubles, and 350 rubles for each subsequent design. Registration of rights for design patenting will cost the applicant 525 roubles and another 1050 roubles for granting a patent. The fees are for an individual and include a 30% discount for electronic filing fees, the fees for legal entities are higher.

Уже после регистрации, правообладателю исключительных прав предстоит ежегодно уплачивать стоимость за поддержание патента в силе. Указанные платежи начинаются с третьего года владения правами. За третий и четвертый годы предстоит оплатить по 850 рублей пошлины, за пятый и шестой годы – по 1250 руб., и т.д. Срок действия патентных прав на промышленные образцы составляет 5 лет и может быть неоднократно продлен еще на 5 лет, но не более 25 лет, а нарушение сроков внесения ежегодного платежа повлечет аннулирование режима правовой защиты. При последующей оплате пошлины и подаче соответствующего ходатайства действие патента может быть восстановлено.

Чтобы провести регистрацию на международном уровне и получить охранное свидетельство, заявить о проекте можно также через ФИПС. При регистрации заявки будет установлен приоритет в отношении стран, для которых испрашивается правовая защита. Патентование будет проводиться с учетом международных договоров и законодательных актов стран, которые выбрал заявитель.

* Paid in 5-7 days based on the results of the search
** Payable in approximately 6-12 months after a positive decision on registration
*** Fees include a 30% discount for the executor

Fees are for legal entities; fees are lower for individuals.
For registration the data of the applicant and the authors are required. From the applicant - details. From the applicant - number of SNILS, passport data, residence address with zip code. Authors - full name and address of registration.
Discount on fees for individuals is valid in case of one author and applicant. In case of co-authorship the fee is without discount. For pensioners and some other categories of citizens the discount is increased.
Combat veterans do not pay the fee.
Duty exemptions do not apply to the patent issuance fee.
Data on the applicant and the authors are required for registration. From the applicant legal entity or individual entrepreneur - details. From the applicant - number of SNILS, passport data, including residence address with zip code. From authors - full name, passport data, including residence address with zip code.
The work requires information on the object: statics (what it consists of), dynamics (how it works), desirable drawing with individual signed elements mentioned in the description.

Infringement of exclusive rights to an industrial design

Once a design patent is registered and issued, a set of exclusive rights arises:

• Правообладатель может самостоятельно пользоваться разработкой, если будет своевременно поддерживать патент в силе;
• The transfer of exclusive rights on a permanent or temporary basis is allowed - contracts of alienation or license agreements are drawn up for this purpose;
• The owner of exclusive rights acquires a full range of protections, including for the unlawful use of someone else's intellectual property.

Violations can be related to unauthorized use of an industrial design, the release of products without the permission of the right holder, an attempt to challenge the authorship, etc.

To protect the patentee, the law provides for the following measures:

• Submitting claims to third parties to prevent unlawful use of the design;
• Compulsory termination of the license agreement if its terms and conditions are violated (e.g., the clause on the release of products only in a limited territory is violated);
• Judicial protection of rights - the recovery of compensation or damages for each violation of rights.

Judicial protection in Russia is provided through the arbitration court, or in the Court of Intellectual Rights. Protection of interests in court is allowed through a representative, who may be a patent attorney. It is this option of representation that will make it possible to obtain the maximum possible payment from the infringer.

Compensation is recovered in a fixed amount, which will be determined by the court taking into account the nature of the violation. When claiming damages, the applicant must justify their amount - for example, based on the value of the products sold by the infringer. As a result of the trial, all counterfeit products are subject to seizure from the infringer and subsequent destruction.

Patent services in Russia and abroad

At all stages of registration of a design patent, as well as their protection against unauthorized use, a full range of services will be provided by patent attorneys.

If you take advantage of the Prof-Patent Patent Office, the following types of services will be provided:

• Consulting services at all stages of design registration;
• Проведение патентного поиска, в том числе через международные реестры;
• The registration of the application and supporting documents in strict compliance with legal norms;
• Representation of interests in the registration of patents and examinations in the FIPS;
• Protection of interests in challenging and extending the patent;
• Assistance in drafting contracts and other documents for the disposal of exclusive rights to an industrial design;
• Protection of interests in challenging and extending the patent;

Regardless of the complexity of the situation, a patent attorney will choose the best option for protection, establishment of priority of the application, elimination of possible claims during examinations. To find out more about the terms of cooperation with Prof-Patent specialists, please call by phone listed on the website or fill out the feedback form.

Download a design application form