FOREIGN PATENTING OF INVENTIONS MADE IN RUSSIA
Practical interpretation of the Russian Patent Law
Our foreign clients are often interested to know how the inventions made in Russia should be patented abroad. We have analyzed the questions people usually ask and have prepared the answers to the most typical ones as a sort of consultation.
- If the invention was made in Russia, can the inventors file patent applications first in other countries?
- Notwithstanding point 1, if the inventors choose to file a patent application first abroad, what consequences they might face? Would the Russian application on the same invention be invalidated? What is the penalty for such an action?
- Could a foreign filing license be obtained for the purpose?
- Is it more safe and simple to file the application first in Russia?
- In case provisions of art. 35 of the Russian Patent Law are fulfilled, and no prohibitions received after three months, does it mean that the applicant may not bother about secrecy or export control regulations?
- If it is decided to first file a PCT application, would it make any difference?
1. If the invention was made in Russia, can the inventors file patent applications first in other countries?
Article 35 of the Russian Patent Law regulates, that in case an invention is developed in Russia, the patent application should be first filed in Russia. The law does not define nationality of the inventors and that is why this provision concerns also the inventions made jointly by the Russian and foreign inventors during collaboration. It also concerns employee's inventions made under a task of an employer, be it a Russian or a foreign entity. Such is the practical interpretation of the Law.
Moreover, a patent application could be filed in another country only after three months from the date of filing in Russia - this is also stipulated by art. 35 of the Russian Patent Law.
Comment. Provisions of art. 35 have been introduced into the Patent Law mostly to ensure that the state has a means to control the possible export of the matters of national significance: state secrets, subject matter falling under export control regulations and the like. It is acknowledged that during the three months from the filing date the state bodies may examine the filed applications and if they find an invention of vital national interests or something like that, they may, issue a prohibition of foreign patenting, forbid export abroad, etc. This is the objective of introduction of art. 35 into the Patent Law. And violation of art. 35 could lead to infringement of interest of state in this matters, or it might be interpreted in such a way by an interested party.
In case the applicant receives no notification on prohibition of foreign patenting within the three months after filing application in Russia, he may further file applications abroad. The provisions of the law are fulfilled.
2. Notwithstanding point 1, if the inventors choose to file a patent application first abroad, what consequences they might face? Would the Russian application on the same invention be invalidated? What is the penalty for such an action?
a) If the applicant files patent application for an invention made in Russia first in other countries, it will be an act of violation of Law. This is impermissible in any event.
b) The patent law itself envisages no punishment whatsoever for violation of article 35. The Patent law does not directly envisage invalidation of the Russian patent on the same invention filed later in Russia. But such an action could lead to other violations.
It should be born in mind that when you file a patent application in Russia, with claiming of foreign priority or not, you never inform the Patent Office where the invention has actually been developed. There is no such box in the Request form. And the fact that there are Russian inventors and applicant(s) in the application with a foreign priority does not make any difference. There is no prohibition for Russian legal entities or natural persons to first file inventions abroad, provided the invention was not developed in Russia.
That is why if the patent application filed later in Russia claims priority of a foreign application, the examiners of the Russian Patent Office would have every reason to believe that the invention was made abroad, first filed abroad and only then filed in Russia. And if the invention was actually developed in Russia, filing of application with the Russian Patent Office under usual procedure with claiming foreign priority would constitute an act of fraud before the Patent Office with all the consequences.
Also violation of article 35 of the Patent Law could lead to deeds and consequences falling under articles of other laws and Codes and those in turn could lead to liability, prosecution, and punishment under the administrative, civil, and criminal procedures commensurate with the damages incurred in accordance with the legislation of the Russian Federation.
c) As for civil legislation, it should be emphasized that article 168 of the recently enacted Civil Code of the Russian Federation states, that any deal (transaction), that is inconsistent with the Law or other legal acts, is void, unless the Law stipulates that such a deal could be contested or envisages other consequences of the violation. Article 169 of the Civil Code of the RF further states that a deal, that was done with the objectives contrary to the law and order or morality, is void. If the parties had willful intent in such a deal, everything obtained under such a deal is levied (recovered) of into the income of the Russian Federation.
So, violation of art.35 of the Russian Patent Law could invoke liabilities under the Civil Code and put in great jeopardy patent assignments, transactions, licenses, royalties, etc, to say nothing of the reputation of those involved, in Russia and on international arena.
d) Punishment might occur under criminal law also. If the application on invention, made in Russia, is filed first in other countries and then it turns out that the invention should not have been let out of the country because it should have been kept secret, it falls under export control regulations, special government resolution, etc., then the inventor(s) and applicant(s) could have great problems.
For example, the new Criminal Code of the Russian Federation enacted from 1 January 1997 has Article 189 "Illegal export of technologies, science and technology information and services...". The punishment under this article ranges from fine in the amount of 700 minimal monthly wages to the seven year imprisonment. And nobody could guarantee, that filing a patent application first in foreign countries with violation of art 35 of the Patent law would not be considered falling under art 189 of the Criminal Code.
Also violation of patent and invention rights under article 147 of the same Code is punished by "fine in the amount of 200 to 400 minimal monthly wages, or in the amount of salary or other income of a person serving the sentence for the period of two to four months, or obligatory works of 180 to 240 hours, or imprisonment for the term of up to two years".
Nobody could exclude possibility of applying these provisions in case the violation in question happens.
3. Could a foreign filing license be obtained for the purpose?
The Patent Law of the Russian Federation does not envisage a possibility of granting upon request a license to file the patent application first in other countries. If the invention is made in Russia, it should be filed first in Russia.
The law envisages, however, a possibility to obtain a permission to file a foreign patent application before the expiration of the three months term after filing the application in Russia. However, it is acknowledged that obtaining such permission would take a great effort and considerable time, which would not justify the whole affair, so in most cases it is much better just to wait for the end of the three month term.
4. Is it more safe and simple to file the application first in Russia?
Theoretically there exists a possibility that after the applicant files the application in Russia, whether PCT or a regular one, the "competent" Russian government bodies, having analyzed materials of the application, would issue a prohibition of foreign patenting. This could be a temporary prohibition or it would be necessary to obtain a special license for the foreign export, or the prohibition might be appealed and challenged, etc. But the applicant would have no right to immediately proceed with the foreign patenting. Theoretically, such a possibility does exist.
In practice, however, prohibitions are very seldom if ever issued on the initial stage, whether it is an international patent application or a conventional one. It means that after three months from the date of filing the initial application the applicant may file foreign patent applications.
The Russian application or patent could be further assigned to any entity, or the inventors may from the very start request patent to be granted to an applicant, residing abroad.
5. In case provisions of art. 35 of the Russian Patent Law are fulfilled, and no prohibitions received after three months, does it mean that the applicant may not bother about secrecy or export control regulations?
Actually, it rests with the applicant and inventors to decide whether their invention is subject to export control regulations, whether it is secret, etc. If the inventors and applicant decide that there are no obstacles for letting the thing abroad, foreign patenting, etc., they may do it after three months of the date of filing the application with the Russian Patent Office and bear all the consequences.
Currently, the list of technologies, for export of which special licenses are needed, is rather long and covers many technological areas. It is highly advisable that the inventors take pains to check whether their invention falls under this list. If so they should apply for special export license with a competent government body.
6. If it is decided to first file a PCT application, would it make any
Everything said above concerns PCT procedures also. The applications should be filed first with the Russian Receiving Office, Russia should be pointed as designated state and procedures on international scale are started only after three months of the filing date.