Novelty criteria in the procedure for obtaining patents on inventions, utility models and industrial designs, periods of patent validity, peculiarities of legal protection and applicable liability measures.
According to the new version of point 1 of paragraph 1 of Art. 1350 of the Civil Code of the Russian Federation (these provisions come into force as of 01.10.2014), the list of objects that are protectable by patents as inventions is extended in a way that is protectable as invention a technical solution in any sphere that related to a product or a method, including a method of use of a product or application of a method to a certain purpose.
This means that patent will be issued with regard to any new improvement related to a way of use of a product or to an application of a method to a certain purpose that would be innovative with regard to the product or method in question. Such improvements would not have been officially regarded as patentable before. The proposed provision will therefore extend the list of patentable object.
New concepts of dependant inventions, utility models and industrial designs, which are very important for court practice, are introduced (Art. 1358.1 of the Civil Code of the Russian Federation). While in case of co-existence of two patents the actions of the rights holder to a more recent patent used not to be considered as an infringement of the earlier patent until the moment of cancellation of the more recent patent, now any use of a dependant patent will be impossible without authorisation of the rights holder to the earlier patent.
It must be noted that compensation is introduced as a means of liability for patent rights infringement (Art. 1406.1 of the Civil Code of the Russian Federation). Before that, payment of compensation was due only in case of use of an invention within the period between the priority date and the date of issue of the patent. The amount of compensation is calculated in the same way as the compensation for infringement of copyright of Trade Mark rights with exception of the rule related to double price of the product. This novelty will allow a more efficient protection of patent rights and turning patents into a more valuable assert.
Amendments also concerned the volume of protection of utility models as compared with that of inventions: while both use of identical features and equivalent features may be viewed as infringement of invention, the said principle of equivalence will not be applied to the utility models from now on (Art. 1358 the Civil Code of the Russian Federation). Apart from that, the maximum period of protection of the utility models will be reduced from 13 to 10 years (Art. 1363 the Civil Code of the Russian Federation). Also, according to the new version of Art. 1390 the Civil Code of the Russian Federation, a substantive examination will be carried out with regard to utility models, which will include information search for determination of technical level, check of conformity of the utility model to the patentability criteria, check of sufficient disclosure of essence of the utility model in question in the patent application. To the regret of applicants, carrying out of the examination of substantive application with information search will considerably increase the period for obtaining of the patent on utility model.
Starting from 01.01.2015, the amendments with regard to rights on industrial designs will come into force. In particular, the main criteria for determination of infringement used to be use of all the listed substantial features. From then on, the infringement will be evaluated based on the overall impression made by an industrial design on an informed consumer. The list of substantial features will be excluded from the documents to be submitted at the stage of application for industrial design. This approach to protection of industrial designs is accepted worldwide. The said amendment is introduced for purpose of further joining of the Hague Agreement Concerning the International Deposit of Industrial Designs of 1925 by Russia.