New Procedures for Paying Patent Fees
The Russian cabinet has responded to a number of issues faced by companies that make regular fee payments to Rospatent (the Russian Patent Office). Resolution No. 1023, passed by the Russian Government on 14 November 2013, introduces several changes to the official payment procedures, which are stipulated in the Regulations on Fees Payable for Legally Relevant Acts Related to Patenting and for the State Registration of Trademarks, Service Marks, Appellations of Origin and Transfers of Exclusive Rights.
These changes clarify the fee payment process at Rospatent. They give more entities the right to make reduced payments, and they also revise some of the patent fees. The new regulations took effect 29 November 2013.
Implications for filers
Thanks to these adjustments and clarifications, IP applicants will be able to pay patent fees and submit the necessary payment documentation to Rospatent properly and on time, which in turn should expedite the registration process and reduce the number of denials of registration requests on formalities.
What the Resolution provides
1. Greater clarity regarding requirements for fee payment documentation;
2. Procedures for the payment of fees for certain legally relevant actions have also been made clearer. For example, when an agreement or a non-contractual transfer of rights concerns both a patent for an invention, utility model and/or industrial design and a trademark, the fee payable for the registration of the agreement or transfer of rights (concerning a patent for an invention, utility model and/or industrial design) shall now be paid together with the fee for registering the trademark agreement;
3. The following list of cases has been compiled in which a fee is to be refunded, in whole or in part:
if the fee was paid in an amount exceeding the applicable rate; or
should the payer decide to cancel the respective legally relevant action before requesting it to be undertaken; or
in the event that no grounds exist for the performance of an action that was already paid for;
4. A two-month extension has been granted for the payment of fees following the payment notification date, in cases where the fee was not
paid on the same date the respective documents (application materials, petitions, motions, or cancellation actions) were submitted;
5. More applicants now qualify for the privilege of paying only 20% of the standard fees. This includes authors or teams of authors applying for patents in their own names, if they fall under the category of handicapped persons; retirees; students at state, municipal, or other training centers; and/or scholars or members of the teaching staff under 35 years of age who are working at higher schools or research institutions as their regular places of employment;
6. Fees will now be much lower for corrections to trademark and appellation of origin filings, if these corrections consist solely of changes to mailing addresses;
7. Fees will be higher, however, if proceedings are conducted in a foreign language — an increase permitted by the Patent Cooperation Treaty of 19 June 1970;
8. And fees will have to be paid for entries in the State Register of Trademarks, and in the State Register of Appellations of Origin, for the de-registration upon request of the rights holder of a trademark or of an appellation of origin.
Actions to consider
To avoid any errors in fee payments, and to ensure that you register your intellectual property rights in a timely manner, please pay close attention to the clarifications and revisions in the newly-worded Fee Regulations approved by Russian Government Resolution No. 1023 on 14 November 2013.
This LEGAL ALERT is issued to inform Baker & McKenzie clients and other interested parties of legal developments that may affect or otherwise be of interest to them. The comments above do not constitute legal or other advice and should not be regarded as a substitute for specific advice in individual cases.
Register now for your free, tailored, daily legal newsfeed service.
Questions? Please contact firstname.lastname@example.orgRegister
New procedures for paying patent fees
To view this article you need a PDF viewer such as Adobe Reader.
Popular articles from this firm
If you would like to learn how Lexology can drive your content marketing strategy forward, please email email@example.com.
Related topic hubs
HP Enterprise Services
“I find the Lexology newsfeeds very informative as they provide concise and to-the-point content. Thanks for providing a very good service.”