In brief: patent prosecution in Russia

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

A patent may be obtained for the following:

• a technical solution related to a product (in particular, a device, a substance, a micro-organism strain, or a culture of cells of plants or animals);
• a process, or use of product or process for a certain purpose, including first and second medical (as well as non-medical) use; and
• pharmaceuticals, chemical compositions and treatments of the human or animal body.

The following are not patentable:

• methods of human cloning and a human clone;
• methods of modification of the genetic integrity of cells of human embryo lines;
• the use of human embryos in manufacturing and commercial purposes;
• discoveries, scientific theories and mathematical methods;
• solutions relating only to an external appearance of products, rules and methods of games, intellectual or economic activity (eg, business methods); and
• computer programs and solutions consisting only of the presentation of information.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

As a general rule, the law provides that the right to obtain a patent for an invention shall belong to the inventor. In the case of an employee’s invention created in the course of fulfilment of labour duties or specific tasks by the employer, the law provides that this right shall belong to the employer unless the contract between the employee and employer provides otherwise. The law also stipulates that in the case of an invention created by an independent contractor the right to a patent shall belong to the performer (contractor) unless the contract provides otherwise. If several persons have the right to obtain a patent for the invention, they have to dispose of their rights jointly. Only one patent would be granted for a co-owned invention.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

It typically takes one-and-a-half to two years to obtain a patent, provided a request for substantive examination is filed without delay. The costs associated with filing and prosecution of an average application and grant a patent are approximately US$3,500 to US$6,000 including official fees and patent agent fees.

Are there any procedures to expedite patent prosecution?

There is no expedited examination procedure in the Russian Patent Office. However, if the applicant files a separate request for a prior art search along with the substantive examination request, the search report and the report on the preliminary examination will be submitted to the applicant within six months of the search request.

In addition, the Patent Office participates in the global Patent Prosecution Highway (PPH) programme. Using the PPH can reduce the term of patent prosecution by an average of four months. No extra fees are required for the use of PPH benefits.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

There is a requirement in article 1375(2) of the Civil Code that a description of the invention in the patent application must disclose the invention in sufficient detail for the invention to be carried out by a person skilled in the art. Patent rules applied by the Patent Office further prescribe that, in the application, means and methods should be described by means of which the claimed invention can be carried out and the technical result of the carrying out of the invention indicated in the application be achieved. There is no requirement to disclose in the application the ‘best mode’ of making or practising the invention. This requirement – sufficiency of disclosure – does not imply anything different from what is required by the Patent Cooperation Treaty (PCT) or in the majority of foreign patent offices. Therefore, the applications drafted to fit the requirements of the PCT or those patent offices can be expected to successfully pass the sufficiency of disclosure verification of the Russian Patent Office.

The description of the invention shall first state the title of the invention and shall contain the following parts:

• the technical fields to which the invention relates;
• the state of art known to the applicant;
• the summary of the invention in which the essential features of the invention, technical problems and the technical results that can be obtained due to the invention should be demonstrated;
• a brief description of drawings (if any); and
• the detailed description of the invention disclosing how to carry out the invention to achieve the purpose thereof preferably by means of examples and with reference to the drawings as well as confirming the possibility of obtaining the technical result mentioned in the summary of the invention.

In the case of an invention in the microbiological field, a culture of the micro-organism concerned must be deposited before the filing or priority date with an institute that has the status of International Depositary Authority under the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure. The description must contain a characterisation of the method of generation of the micro-organism. If that characterisation is insufficient to implement the invention, the data on the deposit, including the name and the address of the institute with which the deposit was made and the deposit number must be given.

Must an inventor disclose prior art to the patent office examiner?

According to the rules applied by the Patent Office, the description of a patent application must contain the ‘prior art’ section where the applicant must disclose information on analogues known to him or her and specify the analogue among others that is most similar to the claimed invention in respect of the combination of its essential features (the prototype). The description of each of the analogues shall contain bibliographical data on the source of information disclosing the analogue, features of the analogue including those that coincide with the essential features of the claimed invention and also the reasons known to the applicant that prevent the attainment of the desired technical result.

If the invention relates to a process for producing a mixture of undefined composition having a concrete purpose or biologically active properties, then a process for producing a mixture with the same purpose or the same biologically active properties shall be indicated as an analogue.

If the invention relates to a process for producing a new individual chemical compound, including a high-molecular compound, then information on a process for producing a known structural analogue, or destination analogue, shall be presented.

Information on the produced substance shall be provided in the description of the most similar analogue of an invention relating to a strain of a micro-organism, a culture of plant and animal cells or a producer of a substance.

If the invention relates to the use of a device, process, substance or strain (culture) for a certain purpose, then known devices, processes, substances or strains (cultures) having the same purpose respectively are considered to be related to analogues of the invention.

Information on an analogue of each individual invention shall be provided in the specification of an application for a group of inventions.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

The applicant may file a divisional application for an invention disclosed in the parent application. The divisional application shall have as its filing date the filing date of the parent application and shall preserve the priority right, if any, provided the divisional application is filed before the date of registration of the allowed parent application into the State Register or before exhaustion of the right to file an appeal against an official decision of rejection of the parent application.

Is it possible to appeal an adverse decision by the patent office in a court of law?

An applicant may appeal against:

• an official decision of rejection;
• an official decision of grant; and
• an official decision to withdraw the application.

An appeal against an official decision of grant may be filed, for example when the applicant does not agree with the allowable claims.

Any appeal shall be filed with the Patent Office within seven months from the date of the official decision. The appeal decision of the office may be further contested in the IP Court.

Does the patent office provide any mechanism for opposing the grant of a patent?

No opposition against applications is provided by law. However, after the information of the application is published, any persons may inspect the application documents and provide to the Patent Office their observations on patentability of the invention, which shall be considered during the examination of the application. The submission of such observations, however, does not give the person who has submitted them any procedural rights when considering the application.

A granted patent may be challenged and invalidated.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

Article 1383 of the Civil Code provides the mechanism for resolving conflicts between different applicants for the same invention. It stipulates that if several applicants have filed applications for identical inventions, utility models or industrial designs, and these applications have the same priority date, a patent for the invention, utility model or industrial design will be granted only on one of these applications in the name of the person determined by agreement between the applicants. The applicants must inform the Patent Office of their agreement within the prescribed term. After that, in the case of a patent grant, all the authors indicated in the applications will be recognised as co-authors with respect to identical inventions, utility models or industrial designs. If the applicants fail to inform the Patent Office of their agreement within the prescribed time limit, the applications will be considered withdrawn.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

Russian patent law does not provide a procedure for the amendment of the claims after the patent has been granted. Only clear mistakes and clerical errors may be corrected in the granted patent, including at the request of the patentee. It is, however, possible for the patent owner to renounce the patent partially, namely to renounce any inventions in the groups protected under the patent. The claims may also be amended or restricted in the course of an independent invalidation action initiated by a third party, if such amendment would remove the grounds for the invalidation action.

How is the duration of patent protection determined?

The general term of protection is 20 years from the filing date (or international filing date for a patent granted on a Patent Cooperation Treaty international application). If the patent is granted on a divisional application, the 20-year term shall be counted from the filing date of the parent application. The validity term for patents related to pharmaceuticals, pesticides or agrichemicals, for the use of which a special approval (‘marketing authorisation’) is required by law, may be extended for a period of up to five years.

Law stated date

Give the date on which the information above is accurate.

12 March 2021.