Russian Federal Government Resolution 1151 of 23 September 2017 introduces changes to the Regulation on patent fees and other fees for legally significant actions in connection with patents for inventions, utility models, industrial designs, with state registration of trademarks and service marks, with state registration and grant of exclusive rights to the appellation of origin of goods, and with state registration of assignment of rights to results of intellectual activity or means of individuation, pledge of an exclusive right, granting the right to use such results of intellectual activity or means of individuation under an agreement, transfer of the exclusive right to such results property or such means of individuation without an agreement (hereinafter the Regulation on Fees). The new Regulation on Fees goes into effect on 6 October 2017.
Key changes and their implications for business
No fees will be levied for changes to information about an applicant (rights owner), if such changes are required by law. For example, Russian open joint stock companies that have complied with legal requirements to change their organizational-legal form to a joint stock company and that are patent and/or trademark owners, or parties to license, assignment or pledge agreements will be allowed to make relevant changes to information about them in registries of intellectual property and documents confirming the title without any additional payment of fees.
Some fees will be reduced by 30%, if respective applications are filed to Rospatent in electronic form. Previously the discount for filing applications electronically was 15%.
Patent fees will practically double. For example, the fee for filing an application for an invention will increase from 1,650 rubles (about $28.50) to 3,000 rubles (about $52), and if there are more than ten claims, then an additional payment of 700 rubles (about $12) will be required for each additional claim. Annual fees for maintaining a patent in force will increase by exactly 100%.
The fees for substantive examination will depend on the time that the petition for examination was filed. If the applicant files a request for examination simultaneously with the patent application, the fee will be 12,500 rubles (about $215) for one independent claim, and 9,200 rubles (about $159) for each additional independent claim, while if this petition is filed after the application filing date, then the fee will be 4,700 and 2,800 rubles (about $81 and $48) respectively. In the first case the examiner will have to send an official search report within seven months from the beginning of examination, and in the second case, within 12 months.
Certain new fees are introduced. For example, a fee of 1,500 rubles (or about $26) is set for the grant of a new patent replacing a broader patent that has been challenged and partially invalidated.
Additional fees for registering and renewing trademarks have been introduced, for each additional class of goods or services above the fifth class. The registration and renewal of trademarks in a large number of classes of goods will be more expensive for trademark applicants and owners. We believe that this measure may reduce the number of cancellation actions for early termination of protection for trademarks in connection with their non-use.
Separate fees are being introduced for changes to information about a trademark in the trademark registry (2,800 rubles or about $48) and for changes to the trademark registration certificate (2,000 rubles or $34.50). Previously, only one fee was applied for making changes - 2,050 rubles (about $35).
Several fees will increase by approximately 10%. The total fee amount for the procedure of registering a trademark in one class will increase insignificantly: from 30,400 to 33,000 rubles, but expenditures on fees for additional classes may substantially increase the total cost of registration for applications with a large number of classes. For the whole registration procedure the registration fees may be increased by an additional 2,500 rubles for each additional class of the ICGS, from the second to the fifth, and plus 3,500 rubles for each additional class of the ICGS after the fifth. Therefore, the official fees for registering a trademark in all 45 classes of the ICGS will increase by a third: from 120,600 rubles (about $2,080) to 179,500 rubles (about $3,100).
At this time, the Regulation on Fees triggering a lot of questions among professional patent and trademark attorneys. We believe that Rospatent will publish some clarifications on the Regulation on Fees in the near future. It is quite possible that another Resolution of the Russian Federal Government will have to be passed in order to eliminate certain oversights and omissions.