Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.
Start by selecting your Topic of interest below. Then choose your Regions and finally refine the exact Subjects you are seeking clarity on to view detailed analysis provided by our carefully selected internationally recognised experts.
Results: 4 Answers
Patents
1.
Legal framework
1.1
What are the sources of patent law in your jurisdiction?
 
Russian Federation
Part IV of the Civil Code, valid from 1 January 2008 (as amended by Federal Law 35-FZ of 12 March 2014) covers all issues relating to intellectual property. Chapter 72 of the Civil Code is particularly relevant to patent law.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
1.2
Who can register a patent?
 
Russian Federation
The right to obtain a patent for an invention originally belongs to the inventor. This right may be transferred by virtue of law, including by universal succession, or by contract, including an employment contract.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
2.
Rights
2.1
What rights are obtained when a patent is registered?
 
Russian Federation
The patent holder has the exclusive right to use the patented invention and to prevent unauthorised third parties from:

  • making, using, offering for sale, selling, importing or otherwise commercialising:
    • the product in which the invention is used;
    • a product manufactured using the patented process;
    • a device in whose operation the patented process is automatically involved; or
    • a product used in accordance with the purpose indicated in the set of claims, where the invention involves the use of a product for a specific purpose; or
  • using a patented process.

The patent holder may dispose of its exclusive right by way of licence, assignment or pledge.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
2.2
How can a patent owner enforce its rights?
 
Russian Federation
In case of patent infringement, the patent holder can initiate administrative, civil or criminal proceedings. In the case of administrative proceedings, the patent holder shall lodge a complaint with the police. The police officers shall draw up an infringement report and initiate an administrative court action. The police may also initiate an administrative court action on their own initiative if they discover infringement. The plaintiff in the administrative court action is the police.

The patent holder may also initiate an administrative case before the Federal Anti-monopoly Service, which considers the case itself. Its decision may be appealed in court.

The patent holder may further initiate a civil court action, in which it will be the plaintiff.

If a criminal action must be initiated, the patent holder shall lodge a complaint with the police, which will initiate criminal proceedings in court. However, the courts will hear a criminal case only if the damage suffered by the patent holder is considerable. The amount of suffered will be evaluated by the court; if the court decides that this is not significant, it will not hear the case.

In all civil or administrative infringement actions, the courts of first and appeal instance are the local courts, whose judgments may be appealed to the IP Court. Criminal cases are considered within the structure of common courts (first instance, appeal, cassation).

If the patent holder is a physical person, any case will be considered by the common court.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
2.3
For how long are patents enforceable?
 
Russian Federation
The patent term is 20 years from the date of  filing the application, subject to the payment of annual fees. If the patent became invalid due to non-payment of annual fees, it may be reinstated upon the request of the owner within three years of the expiration of the last paid year.

The term of a patent relating to pharmaceuticals, pesticides or agricultural chemicals which by law require special approval for use may be extended by a period of up to five years, counting from the application filing date to the date of obtaining the first authorisation.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
3.
Obtaining a patent
3.1
Which governing body controls the registration procedure?
 
Russian Federation
The Federal Service for Intellectual Property (Rospatent).

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
3.2
What is the cost of registration?
 
Russian Federation
On average, the costs associated with filing, prosecution and grant of a patent are approximately $3,500 to $6,000, including official fees and patent agent fees.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
3.3
What are the grounds to reject a patent application?
 
Russian Federation
The grounds for rejection are as follows:

  • The subject matter of the application is not eligible for patent protection;
  • The claimed invention is not disclosed in the application in sufficient detail for it to be carried out by a person skilled in the art; or
  • The claimed invention is not new, does not involve an inventive step or is not industrially applicable.
For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
3.4
What programmes or initiatives are available to accelerate or fast track examination of patent applications?
 
Russian Federation
No accelerated examination is provided for under Russian patent law. However, an accelerated novelty search may be ordered. Rospatent also participates in several Patent Prosecution Highway (PPH) programmes, including the Global PPH, the Patent Cooperation Treaty PPH and the PPH MOTTAINAI.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
3.5
Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?
 
Russian Federation
A claim with multiple dependency should not depend on another claim with multiple dependency.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
3.6
Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?
 
Russian Federation
The term of a patent relating to pharmaceuticals, pesticides or agricultural chemicals which by law require special approval for use may be extended by a period of up to five years, counting from the application filing date to the date of obtaining the first authorisation.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
3.7
What subject matter is patent eligible?
 
Russian Federation
A patent may be obtained for a technical solution relating to a product (in particular, a device, a substance, a micro-organism strain or a culture of cells of plants or animals), or to a process in all fields of technology. Pharmaceuticals, chemical compositions and treatments for humans or animals are patentable.

The following are not patentable:

  • methods of human cloning and human clones;
  • methods of modification of the genetic integrity of cells of a human embryo line;
  • use of human embryos for manufacturing or commercial purposes;
  • other solutions that are contrary to social interests or principles of humanity and morality;
  • discoveries, scientific theories and mathematical methods;
  • solutions which relate only to the external appearance of items and are directed towards the satisfaction of aesthetic requirements;
  • rules and methods of games and intellectual or economic activities;
  • computer programs; and
  • solutions consisting only of the presentation of information.
For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
3.8
If the patent office does not grant a patent, is an appeal available and to whom?
 
Russian Federation
The applicant may appeal the decision to Rospatent within seven months of its issue. Rospatent’s decision on the appeal may further be appealed before the IP Court.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
4.
Validity/post-grant review and/or opposition procedures
4.1
Where can the validity of an issued patent be challenged?
 
Russian Federation
Depending on the grounds, patent validity can be challenged before Rospatent or in court.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
4.2
How can the validity of an issued patent be challenged?
 
Russian Federation
The validity of a patent can be challenged before Rospatent or in court (see question 4.3).

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
4.3
What are the grounds to invalidate an issued patent?
 
Russian Federation
The validity of an issued patent can be challenged before Rospatent on the following grounds:

  • The invention does not comply with the patentability requirements;
  • The application documents presented on the filing date did not comply with the disclosure requirement;
  • The claims in the patent contain features which were not disclosed in the application documents submitted on the filing date; or
  • The patent was granted while several applications with the same priority date were pending, in breach of the conditions envisaged by the law.

The validity of an issued patent can be challenged in court on the grounds that it was granted:

  • to an applicant which did not have standing to register the patent; or
  • with incorrect indication of the inventor(s).
For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
4.4
What is the evidentiary standard to invalidate an issued patent?
 
Russian Federation
The party submitting the appeal must demonstrate that there are valid grounds for invalidation of the patent.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
4.5
What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?
 
Russian Federation
Post-grant review and opposition procedures other than those described in questions 4.1 to 4.3 are not available.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
4.6
Who can oppose a granted patent?
 
Russian Federation
Not applicable.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
4.7
What are the timing requirements for filing an opposition or post-grant review petition?
 
Russian Federation
Not applicable.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
4.8
What are the grounds to file an opposition?
 
Russian Federation
Not applicable.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
4.9
What are the possible outcomes when an opposition is filed?
 
Russian Federation
Not applicable.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
4.10
What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?
 
Russian Federation
Not applicable.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
4.11
Can a post-grant review decision be appealed and what are the grounds to appeal?
 
Russian Federation
Rospatent’s decision on an invalidation appeal may be further appealed to the IP Court.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
5.
Patent enforceability
5.1
What makes a patent unenforceable?
 
Russian Federation
Expiration of a patent protection term and invalidation of a patent. Please also see question 2.3.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
5.2
What are the inequitable conduct standards?
 
Russian Federation
Not applicable.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
5.3
What duty of candour is required of the patent office?
 
Russian Federation
Not applicable.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.
Patent infringement
6.1
What Constitutes Patent Infringement?
 
Russian Federation
Third parties are prohibited from carrying out the following acts without the authorisation of the patent holder:

  • importing into Russia, making, using, offering for sale, selling, putting on the Russian market by any means or keeping for such purposes an item that incorporates a patented product;
  • importing into Russia, making, using, offering for sale, selling, putting on the Russian market by any means or keeping for such purposes a product obtained directly from a patented process;
  • importing into Russia, making, using, offering for sale, selling, putting on the Russian market by any means or keeping for such purposes a device that implements a patented process; or
  • using a patented process.

Further, a patent may be infringed by taking active steps that threaten direct infringement.

A patented invention is considered to be used if all features of the independent claims, or features equivalent thereto, are used in the product or the method. A feature will be considered equivalent if it gives the same result as the patented feature in the independent claim.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.2
Does your jurisdiction apply the doctrine of equivalents?
 
Russian Federation
Yes. Equivalence is to be determined by the court or, more frequently, by a court-appointed expert. The expert will decide whether there is equivalence. The scope of equivalence is not considered; it either exists or does not.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.3
Can a party be liable if the patent infringement takes place outside the jurisdiction?
 
Russian Federation
Activities that take place outside Russia cannot support a patent holder’s case in court or otherwise influence court proceedings in Russia.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.4
What are the standards for wilful infringement?
 
Russian Federation
There are no additional remedies against wilful or deliberate infringement; the same remedies are sought for each. However, if compensation is claimed by a plaintiff instead of damages, the court may consider the wilful character of the infringement and award higher compensation. There are no standards to determine whether infringement is deliberate.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.5
Which parties can bring an infringement action?
 
Russian Federation
The patent holder or its exclusive licensee may bring a civil action for patent infringement directly.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.6
How soon after learning of infringing activity must an infringement action be brought?
 
Russian Federation
Within the three-year limitation period, which starts when the plaintiff discovers or should have discovered that its rights have been infringed.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.7
What are the pleading standards to initiate a suit?
 
Russian Federation
Civil infringement proceedings begin with the collection of evidence by the patent holder, and the drafting and dispatch of a cease-and-desist letter if necessary. In commercial courts (which handle disputes between companies and private entrepreneurs), a cease-and-desist letter is optional for non-material claims (eg, cessation of infringement, prohibition on the use of infringing products, confiscation of infringing products and equipment used for manufacturing such products). However, since 12 July 2017, it is mandatory to send a cease-and-desist letter for material claims (ie, damages, compensation) 30 days before filing a civil action with the court. The pre-trial procedure is not applicable to cases handled by the common courts (which handle disputes involving individuals).

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.8
In which venues may a patent infringement action be brought?
 
Russian Federation
Before the courts or before the Federal Anti-monopoly Service.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.9
What are the jurisdictional requirements for each venue?
 
Russian Federation
The jurisdictional requirements for each venue are as follows:

  • Commercial courts (civil litigation, cases involving administrative offences) – patent disputes relating to business activities (ie, the parties are legal entities or individual entrepreneurs);
  • General jurisdiction courts (civil litigation, cases involving administrative offences, criminal cases) – patent disputes involving natural persons; and
  • Federal Anti-monopoly Service – unfair competition disputes, involving authorised use of the patented subject matter between commercial legal entities/individual entrepreneurs.
For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.10
Who is the fact finder in an infringement action?
 
Russian Federation
The court can oblige a party to provide any kind of evidence and disclose necessary documents upon request of a trial participant. The judge will be the fact finder.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.11
Does the fact finder change based on venue?
 
Russian Federation
Yes. In civil proceedings, the judge will be the fact finder. In administrative anti-monopoly proceedings, the ad hoc commission will consider the case and decide on the facts. The burden of proof in court proceedings rests with the plaintiff; while in anti-monopoly proceedings, the infringing party must disclose all available evidence of infringement upon the demand of the Federal Anti-monopoly Service.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.12
What are the steps leading up to a trial?
 
Russian Federation
When the action is filed, the court of first instance will conduct preparations for the trial and set a date for a preliminary hearing. At the hearing, the judge will ask the parties to present their evidence and an outline of their written legal position on the case. The judge will also usually ask the parties to provide a list of potential experts and a list of questions for technical analysis.

After the preliminary hearing, the court will set a date for the first hearing on the merits. During the preliminary hearing or the first hearing, the court will usually appoint an expert to conduct a technical examination and approve the questions that the expert will consider. Both expert opinion and witness testimony are admissible forms of evidence under Russian law. There is also another type of evidence called ‘specialist consultation’.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.13
What remedies are available for patent infringement?
 
Russian Federation
The following remedies can be granted to a successful plaintiff:

  • injunctions, which are granted if the defendant’s product contains every feature of the independent claim of the patented product;
  • damages (if proven) or compensation;
  • seizure and destruction of counterfeit products; and
  • publication of the court decision.
For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
6.14
Is an appeal available and what are the grounds to appeal?
 
Russian Federation
If the patent holder loses at first instance or there is incomplete fact finding, a violation of material/procedural law or similar, the decision may be appealed before the appellate court. New evidence may be produced at the appellate court only if the party presenting this new evidence can prove that it did not have the opportunity to present the evidence at first instance. The appellate decision may be further appealed to the IP Court, whose decision in turn may be appealed to the Supreme Court in its capacity as second cassation and supervisory instance.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
7.
Discovery
7.1
Is discovery available during litigation?
 
Russian Federation
Russian law does not provide for discovery proceedings, so the parties must secure evidence themselves.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
7.2
What kinds of discovery are available?
 
Russian Federation
When the plaintiff files suit in court, it must gather evidence itself. If any evidence cannot be obtained, the plaintiff may petition the court to order the defendant or another party to provide the missing evidence.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
7.3
Are there any limitations to the amount of discovery allowed?
 
Russian Federation
A defendant has the right not to testify against itself. However, all evidence which can be disclosed or obtained through an inquiry of a court (eg, from Customs, regarding the actual amount of imported infringing products) will be disclosed. A plaintiff can apply for such intervention by the court only after it has exhausted all possibilities to obtain such evidence itself and can provide written proof of this to the court.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
8.
Claim construction
8.1
When during a patent infringement action are claim terms defined by the tribunal?
 
Russian Federation
During the hearing on the merits.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
8.2
What is the legal standard used to define claim terms?
 
Russian Federation
Literal infringement or infringement by equivalents.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
8.3
What evidence does the tribunal consider in defining claim terms?
 
Russian Federation
In interpreting claim terms, the description of the invention can be taken into consideration.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
9.
Remedies
9.1
Are injunctions available?
 
Russian Federation
It is possible to obtain a temporary injunction if it would otherwise be impossible to enforce the final judgment. The plaintiff must explain these circumstances to the court. An injunction may be sought at any stage before the final judgment is issued.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
9.2
What is the standard to obtain an injunction?
 
Russian Federation
An injunction may be sought against the respondent, which may be the vendor or supplier of the infringing goods, or a third party involved in the import, manufacture, offer for sale, sale, storage or marketing of the infringed goods. A permanent injunction is granted after the hearing on the merits, within the scope of the plaintiff’s claims as stated in the lawsuit only. A permanent injunction can be granted if the infringing product contains every feature of the independent claims of the patent. Analysis of court practice shows that in most cases, the patent holder seeks a permanent injunction only. The court may satisfy its claim to prevent actual or threatened infringement.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
9.3
Are damages available?
 
Russian Federation
Yes; see question 9.4.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
9.4
What types of damages are available?
 
Russian Federation
Damages can include:

  • costs that the patent holder has incurred in restoring its violated right, or through loss or damage to its property (actual losses); and
  • lost profits that the patent holder would have received under ordinary circumstances had its right not been violated (lost profits).
For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
9.5
What is the standard to obtain certain types of injunctions?
 
Russian Federation
See questions 9.1. and 9.2.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
9.6
Is it possible to increase or multiply damages due to a party’s actions?
 
Russian Federation
No.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
9.7
Are sanctions available?
 
Russian Federation
Yes. See question 9.8.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
9.8
What kinds of sanctions are available?
 
Russian Federation
If an infringer received income as a result of the infringement, the patent holder can demand compensation (instead of damages) as follows:

  • in an amount from RUB 10,000 to RUB 5 million, as determined at the discretion of the court based on the nature of the infringement; or
  • twice the value of the right to use the invention, utility model or industrial design, as determined based on the price usually charged under comparable circumstances for the legal use of the invention, utility model or industrial design in the same way as the infringer.
For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
9.9
Can a party obtain attorneys’ fees?
 
Russian Federation
A successful litigant may recover costs and attorneys’ fees in all cases.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
9.10
What is the standard to obtain attorneys’ fees?
 
Russian Federation
These expenses should be properly documented. Attorneys’ fees should be reasonable. The court may compare the recovery sought with the fees normally charged by other attorneys on the market and may adjust the recovery claims accordingly.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
10.
Licensing
10.1
What patent rights can a party obtain through a licence?
 
Russian Federation
A party can obtain the right to use the invention and, in the case of an exclusive licence, the right to sue a patent infringer.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
10.2
What limits can a patent owner impose on a licence?
 
Russian Federation
The licensor can limit:

  • the term of the licence;
  • the geographical scope of the licence;
  • the ways and scope of use of the invention; and
  • the right to sub-license.

If the licence agreement is silent on the term of the licence, the licence shall be presumed valid for five years. In the case of an exclusive licence, the licensor cannot use the invention in the manner and scope covered by the licence unless the licence agreement provides otherwise.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
11.
Antitrust
11.1
Are there any limits on patent protection due to antitrust laws?
 
Russian Federation
In theory, abuse of right may be invoked; however, in practice, such cases are not known.

If an invention, without good reason, is not used or is insufficiently used for four years (three years for a utility model), leading to insufficient supply of the respective goods on the Russian market, a non-exclusive compulsory licence may be granted by court decision if the patent holder refuses to grant a licence on generally accepted terms.

In addition, if a patent holder cannot exploit its patent without infringing the rights of another patent owner which refuses to grant a licence on generally accepted terms, it may initiate a court action against the owner of the other patent to seek a compulsory non-exclusive licence to that other patent, provided that its own invention represents an important technical achievement and has significant economic advantages over the invention of the owner of that other patent.

The terms and conditions of a compulsory licence are determined by the court. The total amount of payment for such a licence shall be established in the court decision and will be no less than that for other licences in comparable circumstances.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners
 
Russian Federation
In theory, abuse of right may be invoked; however, in practice, such cases are not known.

If an invention, without good reason, is not used or is insufficiently used for four years (three years for a utility model), leading to insufficient supply of the respective goods on the Russian market, a non-exclusive compulsory licence may be granted by court decision if the patent holder refuses to grant a licence on generally accepted terms.

In addition, if a patent holder cannot exploit its patent without infringing the rights of another patent owner which refuses to grant a licence on generally accepted terms, it may initiate a court action against the owner of the other patent to seek a compulsory non-exclusive licence to that other patent, provided that its own invention represents an important technical achievement and has significant economic advantages over the invention of the owner of that other patent.

The terms and conditions of a compulsory licence are determined by the court. The total amount of payment for such a licence shall be established in the court decision and will be no less than that for other licences in comparable circumstances.

For more information about this answer please contact: Nikolay Bogdanov from Gorodissky & Partners