Under Russian law certain intellectual property objects1, such as inventions, utility models, industrial designs and trademarks, enjoy protection in the Russian Federation (Russia) provided that they are either registered with the Federal Service on Intellectual Property, Patents and Trademarks (Rospatent) or with the World Intellectual Property Organization (WIPO) in accordance with international treaties to which Russia is a party.2
Some IP objects, such as integrated microcircuit topologies, computer programs and data bases may, but are not required to, be registered with Rospatent, which shall enhance their legal protection, in particular, in case of judicial disputes. And in order to be valid in Russia, any transfer of the exclusive right to a registered IP object, either on the basis of an assignment agreement or a license agreement,3 or without an agreement (a non-contractual transfer),4 as well as the pledge of such right should be registered with Rospatent as well.5
Under the provisions of Part 4 of the Civil Code of the Russian Federation (Civil Code), effective January 1, 2008 (which replaced most of Russian IP laws including those that were enacted during Soviet times), the registration of transfers of the exclusive right to IP objects shall be made according to the procedure and terms established by the Government of the Russian Federation.
The new Rules for the state registration of agreements for transfer of the exclusive right to an invention, utility model, industrial design, registered integrated microcircuit topology, computer program or database, and of a non-contractual transfer of the exclusive right to an invention, utility model, industrial design, trademark, service mark, name of a commodity’s place of origin, registered integrated microcircuit topology, computer program or database were approved by the Decision of the Government of the Russian Federation No. 1020 dated December 24, 2008 (the Registration Rules). At the same time, for transfers of the rights to IP objects that are not provided for by the Registration Rules, the former Rules approved by the Order of Rospatent No. 64 dated April 29, 2003 (the Rospatent Rules) remain applicable.
The Rospatent Rules also establish certain specific requirements to be complied with for state registration of the exclusive right transfers which are within the scope of the Registration Rules but are not covered by the latter.
The Registration Rules
The following agreements (and any amendments of the registered agreements or the termination thereof) shall be registered under the Registration Rules (Registerable Agreements):
- an assignment of the exclusive right to an invention, utility model, industrial design, registered integrated microcircuit topology, computer program or database;
- a pledge (or subsequent pledge) of the exclusive right to an invention, utility model, industrial design, registered integrated microcircuit topology or computer program; and
- a license agreement with respect to an invention, utility model, industrial design or registered integrated microcircuit topology.
In order to have registered a Registerable Agreement, amendments to the essential conditions or termination thereof upon agreement of the parties, the following documents should be submitted to Rospatent:
- an application for state registration;6
- an original agreement in duplicate;
- a simple copy of the agreement; and
- a document confirming the payment of the duty for the state registration.
For the registration of a unilateral termination of Registerable Agreements or termination thereof under a court’s decision and non-contractual transfers the lists of documents differ slightly.
It should be noted that the Registration Rules do not require that a power of attorney be submitted together with the other documents for state registration if such documents are filed by a patent attorney. But if a natural person permanently residing abroad or a non-Russia-based legal entity applies to Rospatent for state registration it can be done only through a patent attorney and the respective power of attorney must be submitted. Rospatent shall register an agreement or amendments thereto, as well as a non-contractual transfer, under the following conditions:
- the respective IP rights object enjoys protection in Russia due to its state registration or in accordance with international treaties of Russia;
- the information on the owner of the IP rights object, the subject of the agreement (number of the patent or certificate, scope of legal protection, period of effect of the exclusive right) or the parties to the agreement conform to the information contained in the state registers maintained by Rospatent;
- the rights which are the subject of the agreement do not exceed the limits of the rights enjoyed by a party to the agreement;
- if onerous, the agreement contains a provision on compensation or on the procedure for determining it;
- the agreement does not contain internal contradictions; or
- if the agreement provides for a unilateral termination, the procedure of such termination is clearly specified.7
The Rospatent Requirements provide that within two months of receipt of a proposed registration filing Rospatent shall either register the respective agreement, or amendment made in the registered agreement, or seek additional information.
If an agreement (or amendments thereto) are registered, Rospatent is obliged to send to the parties thereof
- a notice of state registration;
- a copy of the registered agreement or the amendment thereto; and
- patents or certificates for the respective IP rights with a note regarding the assignment of the exclusive right or the granting of the right to use such object.
Rospatent shall refuse the registration of the agreement or amendments to a registered agreement if required documents have not been presented within the stated term without a valid excuse.
In addition to the requirements provided in the Registration Rules, the Rospatent Rules establish particular requirements for state registration of certain agreements regarding transfer of the exclusive right to IP objects, described below.
- Agreements for the assignment of the exclusive right (cession of patent) to inventions, utility models, industrial designs, licenses (sublicenses)8 on the use of patented inventions, utility models or industrial designs.
In addition to the other documents submitted for the registration of the respective assignment or license (sublicense) agreement, the patent shall be enclosed with the application. For the assignment of the exclusive right for invention (cession of patent), if the applicant (patentee), as author of such invention, was exempted under the law from the payment of all patent duties when submitting a patent application for the invention, a document confirming the payment of such duties must also be enclosed.
- Agreements assigning the exclusive right to the trademark and license (sublicense)9 agreements granting the right to use the trademark.
An additional requirement for the license (sublicense) agreement is that it contain provisions that the quality of goods of the licensee shall not be inferior to the quality of goods of the licensor and that the licensor shall exercise control over compliance with that provision. Rospatent shall refuse registration of the trademark assignment agreement if such assignment may cause the consumer to be misled as to the goods or their manufacturer.
- Agreements on the absolute or partial assignment of the exclusive right to computer programs and databases, assignment of the exclusive right to integrated circuit topologies and assignment of the right to use integrated circuit topologies.
Copies of all official registration certificates for the computer programs, databases or integrated circuit topology shall be enclosed in addition to the other documents submitted for the registration of agreements on the assignment of the exclusive right to the registered integrated circuit topology, and agreements on the absolute assignment of the exclusive right to registered computer programs or databases.
- Agreements of commercial concession (subconcession).
Under Russian law, an agreement of commercial concession is one under which the rights owner grants to the user for consideration the use, in the user's business activity, of exclusive rights, including the right to the trademark and service mark, as well as the rights to other IP objects stipulated in the agreement, in particular the commercial designation and manufacturing secret (know-how).10 Parties to an agreement of commercial concession may be commercial organizations and individual private entrepreneurs registered in this capacity. An agreement of commercial concession shall be valid if executed in writing and registered by Rospatent.11
According to the Rospatent Requirements, in addition to the other documents, the application for the state registration of an agreement of commercial concession shall be included with the patent(s) for the respective IP object(s).
To register an agreement of commercial concession, Rospatent shall verify that the agreement contains:
- a definition of the parties to the agreement;
- the subject-matter of the agreement (e.g., number of patent, certificate for the trademark or number of international registration in respect of which the agreement was concluded)
- the scope of exclusive rights to be granted; and
- a provision obligating the user to ensure that the quality of the goods produced, work performed or services rendered under the agreement correspond to the quality of similar goods, work or services produced, performed or rendered directly by the rights-owner, and obligating the rights-owner to supervise such compliance.