Federal Law 82-FZ dated July 9 2002, which came into effect on July 24 2002, introduced several amendments to the Law on the Legal Protection of Chip Design. The amendments served two objectives. Firstly, they have brought the law into compliance with the Russian Constitution and subsequent Russian legislation, and with the requirements of the Trade Related Aspects of Intellectual Property Rights agreement, to facilitate Russia's accession to the World Trade Organization. Secondly, the amendments set out the government's rights in cases where chip designs are created under governmental procurement. This update summarizes the major amendments.
The amendment to Article 2 of the law brings the regulation of chip design into the exclusive competence of the Russian Federation, as prescribed by the Russian Constitution. The previous version of the law, adopted back in 1992, allowed for regulation by the regions of the Russian Federation, which was contrary to Article 71 of the Constitution.
The definition of the term 'protected chip design' (Article 2) has been amended to include a requirement that the design "must have been unknown to the author or specialists in this area prior to the date of creation". Therefore, in addition to the requirement of originality (creativity), the definition now includes the requirement of novelty. The exception is a chip design consisting of a combination of elements which are not novel individually. Such a chip design will be protected as long as the combination of elements satisfies the originality requirement.
The amendments replace the concept of 'property rights' over chip designs with the concept of 'exclusive rights', without actually changing their scope.
According to these amendments, the exclusive rights to chip designs created by an employee in the course of employment belong to the employer.
The amendments give the Russian Federation or its regions certain prerogative rights in respect of chip designs created under governmental procurement contracts. The exclusive right in a chip design created under governmental procurement contract belongs to the contractor, unless otherwise specified in the respective contract.
In the event that the exclusive right in a chip design created under a governmental procurement contact is acquired by persons other than the Russian Federation and the regions of the Russian Federation, the rights holder must grant a licence to the Russian Federation or its region at no charge for the purposes of governmental procurement.
Chip designs must be registered with the Russian Patent Office, although chip designs that contain state secrets are not subject to registration.
For further information on this topic please contact Christian von Wistinghausen at Beiten Burkhardt by telephone (+7 503 232 9635) or by fax (+7 503 232 9633) or by email ([email protected]).