Patent PCT terms in Russia
The term for entering the Russian national phase of a PCT application is 31 months from the priority date. The term for filing a conventional patent application in Russia is 12 months from the priority date.
Filing Requirements for Patent Applications in Russia
1. Full name and address of the applicant.
2. Full name and address of the inventor(s).
3. A Power of Attorney duly signed and stamped by the applicant.
4. Specification, claims, abstract and drawings.
5. A priority document, if convention priority is to be claimed.
Patent Registration procedure in Russia
After a patent application is filed and the filing fee is paid, the preliminary examination takes approximately 2-3 months. In the case of a positive result of the formal examination, a request for a substantive examination should be submitted within 3 years from the filing date. After the request for substantive examination is accepted (provided that the examination fee is paid), the first office action from the Russian PTO is usually received within 10-12 months. A response to the office action should be filed within 2 month after receipt of said office action, but the term of response can be extended up to 12 months (provided that the appropriate fee is paid). After an official notification on the readiness to grant a patent is issued and granting and publication fee is paid, the patent is usually published within 4-6 months. Overall, the process from filing the application to receiving a patent is approximately two years.
Timeframe: 2 years, approximately.
The maximum duration of a patent is 20 years counting from the filing date. Meanwhile, according to Russian legislation, the patent with an object relating to medication, a pesticide or an agrochemical, the use of which requires duly granted permission of the competent authorities, may be extended. Maximum duration of a supplementary protection certificate is five years. The request for the term extension should be filed within six months from obtaining the first permission from the relevant authorities or issuance of the patent, depending on which term comes last.
Payment of annuities is not stipulated for pending applications, the first annuities for a patent starting from the third year till the year when the grant decision is issued are paid simultaneously with payment of the official grant fee. All subsequent annuities are counted starting from the filing date and are paid before the beginning of the next year. A missed payment is payable within six months after the due date provided that a 50 per cent fine is paid.
Summary of Design Registration System
Industrial designs are valid for 5 years. The term can be extended for another 5 years a several times, but not to exceed the amount of time frame in 25 years. Grace period for paying annuity is 6 months. After the expiration of the grace period, the patent can be reinstated within the term of 3 years. In this regard the annuity should be paid for the year in which the application for reinstatement was filed in the size of 250%.
Filing Requirements for Industrial Design Applications
1. Full name and address of the applicant.
2. Full name and address of the author(s).
3. Essential features of the industrial design.
4. A Power of Attorney duly signed and stamped by the applicant.
5. Figures (photographs, photocopies or computer files) with a general view of the design and, if it is possible, front, top, side, back and bottom views of the design.
Trademark Law in Russia
Legal basis for trademark law is part IV of the Russian Civil Code, which came into effect on January 1st, 2008 as further amended, and substituted all there-existing IP laws.
The Russian Federation is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration. Marks not deemed to be distinctive in the examination can be registered if distinctiveness has been acquired by use in Russia before the date of filing trademark application.
Trademarks which were protected in the former Soviet Union will be also protected in Russia.
Nice classification, 11th edition.Multiple-class applications are possible.
Trademark Registration Procedure in Russia
The application is filed at Federal Service of Intellectual Property (Rospatent).
The examination in Russia consists of formal and substantial stages. During the formal expert examination, the presence of the necessary application documents and their compliance with established legal requirements is verified. The substantial examination stage is carried out to establish whether the claimed designation conforms to the registrability requirements.
A trademark application may be rejected either on absolute or relative grounds, or on both absolute and relative grounds.
The details of the application are published after registration of the application (after receipt of the application, which is filed in compliance with the existing requirements, by Rospatent).
The information about State registration of the trademark is published immediately after registration of the trademark in the State register of trademarks.
Approximate time frame for trademark application prosecution in Russia:
The standard registration process from the date of filing until the issuance of the certificate of registration (if there is no refusal, rejection, amendments or requests for supporting documents) usually completed within 14 - 16 months as indicated below:
1. The official filing receipt (filing date & filing number) is issued immediately upon filing, while the official notification of the result of the formal examination of the application and its accompanying documents is issued within 1-2 months from the date of filing.
2. The process of substantive examination of the mark until the issuance of final decision by the examiner shall be carried out within 11-12 months.
3. The Certificate of Registration will be issued within 1 months from the date of receipt of the official fees for registration.
• During the substantive examination of trademark application and before the issuance of the Examiner’s Decision, the applicant has the right to amend, clarify, or correct the materials of the application, including the submission of supplementary materials.
• The list of goods/services may be amended only by deleting items and not by adding.
• Extra supplementary materials may be requested by the Examiner and should be submitted within two months from the date of receipt of the official letter of request.
*A petition for the extension of the two months for another period up to six months may be filed, otherwise the trademark application shall be considered as withdrawn.
The processing time from first filing to registration or first office action is approx. 12 to 14 months.
National Opposition Period
Russian law contains no provisions governing formal opposition against pending applications.
However, Rospatent publishes the details of trademark applications; after publication but prior to making a decision on trademark registration, any person is entitled to file with Rospatent written objections specifying the reasons for rejection of the Registration (according to p. 1 of Article 1493 of the Civil Code); the aforesaid objections are then taken into account during the examination of the application (the objections are to be based on Articles 1477 and 1483 of the Civil Code). The opposition procedure is not a substitute for, but supplements, the examination of the trademark application, which is conducted by Rospatent.
Trademark Applications Filing Requirements in Russia
1. The Company name and the address of the applicant.
2. 2 prints of the mark (8×8 cm or 8×10cm).Only soft copy of the mark shall be sent electronically (in good quality not less than 200 dpi).
3. The meaning of the mark (if available).
4. A list of the requested goods/services in English (Word format) and in accordance with the International Classification of Goods and Services for the Purpose of the Registration of Marks - 10th edition.
5. Priority document if priority is to be claimed. A certified copy of such a document with its Russian translation with notarization should be presented within two months from the filing date of the trademark application at the Russian Federal Service of Intellectual Property (Rospatent).
6. Power of Attorney in the name of the applicant, stamped & simply signed by the authorized person at the company indicating full name, position in the company, date & place of signature (Notarization or Legalization is not required).
A trademark registration is valid for 10 years from date of filing the application (or in case of filing a divisional application - for 10 years from date of filing first application).
The registration is renewable for periods of 10 years (fir ab zbkunuted number of times).
• First-to-file policy is adopted by Russian Federal Service of Intellectual Property (Rospatent). Evidence of use is not required upon filing.
• The applicant must be a legal entity (or a person engaged in business as registered individual businessman).
• Word, figurative, three dimensional, signs or their combinations may be registered as trademarks in Russia.
• A trademark may be registered in black & white or in any color or combination of colors.
• The meaning of the mark and the description of the sign (device) is required.
• The trademark application must be filed in Russian language only. Any supporting documents must be translated into Russian language and submitted by the applicant within two months from the filing date of the application.
• Russia is a member of Paris Convention as well as Madrid Agreement & Protocol.
• An application may be withdrawn at the request of the applicant at any stage of the examination, but not later than the date of registration of the trademark.
• The formal examination for the trademark application & accompanying documents checks the compliance of the same with the statutory requirements. An official notification of the result of the formal examination is issued within 1-2 months.
• The Substantial Examination of the mark application shall be carried out when the formal examination is over and based on the positive results only.
• The registration period of trademarks in Russia is 10 years as from the filing date. An application for further 10 years of renewal shall be filed during the last year of the expiring term. Six months grace period is granted for late renewal applications.