This article will guide you through current industrial design patent protection issues in Russia.
1. Patenting industrial designs
In order to obtain a patent protection for an industrial design in Russia, you may apply a local patenting procedure performed by the Russian Patent Office (Rospatent) or may enter by the Hague system, which offers the possibility of multijurisdictional protection. Russia has been a part of this system since 28 February 2018 (see "The Hague system for the international registration of industrial designs is now available in Russia" https://www.lexology.com/library/detail.aspx?g=c45221f3-bdbb-4fd9-a8ed-7cc29c124288).
The patentability requirements are worldwide "novelty" and "originality" which are examined. The local patenting procedure usually takes eight to ten months.
With regards to applying the Hague system, there is a major concern about the single creative concept requirement elaborately considered by the Russian Patent Office continuously rejecting variants in a single design application, having between them at least one essential difference in overall visual impression, even in color and proportions.
The Russian Patent Office provides the following standard refusal (cited below as provided in the Notification of Refusal):
"Under Article 1377 of the Civil Code of the Russian Federation, the application for grant of a patent for an industrial design shall be related to one industrial design or to a group of industrial designs associated with each other so closely as to form a single creative concept (the requirement of unity of the industrial design).
The requirement is met where there is: one independent and distinct industrial design; or one industrial design and its variants differing from that industrial design by visually nonessential features and/or by color combination; or a group of industrial designs belonging to the same set of articles, as well as one or more industrial designs for separate articles belonging to the same set of articles. It is required that all industrial designs of the group shall belong to the same class of International Classification for Industrial Designs (Locarno classification)."
Generally, in our experience, it is sufficient to respond to Rospatent that the first design of a group should be considered in the international application concerned and other designs are excluded to be separately filed in divisional applications with the initially claimed priority. Rospatent will further issue its granting decision directly with WIPO and the first design will be registered as protected in Russia. As regards divisional applications, they can be filed based on the local patenting procedure, but only by a Russian patent attorney required for foreigners under Article 1247 of the Civil Code of the Russian Federation.
In fairness it must be said that the same strong single creative concept requirement is applied by the Russian Patent Office for local design applications. It mainly increases a number of patent applications and registered patents thereof.
The 12-month grace period should also be noted as applicable in Russia for any public disclosure preceding the application filing date. It is possible to submit an Affidavit with regards to open use facts of sales or other public demonstrations implemented worldwide.
2. Interim protection of industrial designs
A new opportunity for enforcing industrial designs in Russia is provided by Federal Law No. 549-FZ of 27 December 2018 entering into force on 27 June 2019. The issue concerns interim protection now available for published industrial design applications similar to inventions. It would potentially be possible to get a monetary compensation from a third party for commercial unauthorized use of a particular industrial design after its patent registration. This opportunity may be used for enforcement issues if you have a pending application published by the Russian Patent Office, and then granted and registered as a patent.
Alternative enforcement of rights for industrial designs in Russia is also possible based on copyright.
3. Scope of patent protection
The rule is that images serve to define the scope of patent protection nevertheless the law still refers to defining essential features for comparative analysis purposes. There are several precedential court rulings of the Court of Intellectual Property in which the scope of patent protection of industrial design was considered based on the overall visual impression provided by a particular industrial design according to its images in a corresponding patent.
It should also be noted that, according to current court practice, about 95% of patent disputes involve a forensic examination where an independent expert (or several experts) analyses images and the product at issue, and provides a comparative analysis conclusion reasoning the use or nonuse of the corresponding industrial design. Therefore, the scope of patent protection would be separately defined by a plaintiff, a defendant and an expert, and may differ between them, wherein a court should finally recognize the scope on its own discretion.
4. Trademark vs Industrial Design
Patent protection of an industrial design may still be used in Russian courts as potential defense against trademark infringement. At the same time, the law allows to nullify an industrial design contradicting to public interests, e.g. in case the design at issue is confusingly similar to trademark having earlier priority.
This option has been successfully used and confirmed by our practice by nullifying several Russian patents for industrial designs (e.g., RU 88288 and RU 93926), protecting confusingly similar products which are similar to the ones protected via the 3D trademark having earlier priority. The main ground was that the industrial design concerned contradicts public interests due to its confusing similarity to the available trademark and the direct intention of the patent owner to use the corresponding patent as defense against trademark infringement.
Such nullification actions are considered by the Chamber for Patent Disputes of the Russian Patent Office and generally require evidence proving confusing similarity, preferably, by a reputable expert institution conclusion and/or by public opinion poll results.