"The United States encourages Russia to pass legislation establishing a specialized IPR court. The United States looks forward to working together with Russia on continuing education opportunities for judges with respect to IPR."
Ron Kirk, U.S. Trade Representative Special 301 Report. April 2011
Protection and enforcement of intellectual property (IP) rights in the Russian Federation has been one of the main obstacles inhibiting foreign investment in Russia. Notwithstanding the steady development of modern IP legislation in accordance with the World Intellectual Property Organization (WIPO)1 directives and provisions of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS),2 the practical application of laws by Russian state authorities (courts, investigative bodies, antimonopoly authorities, etc.) in this area has left much to be desired. Drowning in piles of cases to be heard daily and lacking the required qualifications in science, technology or art, the judges of Russian state commercial (arbitrazh) courts and courts of common jurisdiction3 hearing IP cases usually adopted a formalized approach. As a result, the lawful interests of rightholders often went unprotected. An initial wrongful court judgment on an IP case would create precedent for further defective court practice.4 As one solution to this problem, a separate court is proposed to be established specializing exclusively in intellectual property issues.
On December 6, 2011, Federal Constitutional Law No. 4-FKZ was adopted creating a single specialized court for intellectual property rights (the IPR Court) within the system of state commercial (arbitrazh) courts.5
As a court of first instance, the IPR Court will rule on cases with respect to establishing and validating IP rights, in particular:
- cases on challenging actions of federal executive authorities in the area of patent rights and rights to new varieties of plants, topologies of integrated circuits, know-how, means of individualization of legal entities, goods, works, services, enterprises, and use of the results of intellectual activity incorporated in unified technology;
- cases on granting or terminating legal protection of the results of intellectual activity and their equivalents in the form of means of individualization of legal entities, goods, services, and enterprises (excluding copyrights and associated rights, and topologies of integrated circuits). In particular, challenging actions of a federal executive authority for new varieties of plants and its officials, as well as bodies authorized by the RF Government to consider patent applications for secret inventions; challenging rulings of a federal antimonopoly authority on recognizing as unfair competition actions related to the acquisition of exclusive rights to the means of individualization of legal entities, goods, works, services, and enterprises; determining a patentholder; recognizing the invalidity of a patent to an invention, utility model, industrial design or selection achievement, of a decision on granting legal protection to a trademark, name of the place of origin of goods and on granting exclusive rights to such name; and on premature termination of legal protection of a trademark due to its non-use.
As a court of second (cassation) instance, the IPR Court will review: (i) cases judged by the IPR Court from the first instance; (ii) cases connected with IP rights infringement judged by state commercial (arbitrazh) courts of constituent territories of the Russian Federation in the first and appellate instances.
Decrees adopted by the IPR Court in the cassation instance may still be reviewed by the Supreme Commercial (Arbitrazh) Court of the Russian Federation (supervisory instance).
The main differences between the IPR Court and a traditional state arbitrazh (commercial) court are that:
- there is no appellate instance within the IPR Court;6
- both first and cassation instances of the IPR Court will consist of a panel of three judges;7 and
- all judges in the IPR Court will have special qualifications in spheres relating to IP: science, technology or art.
The IPR Court will be guided by the State Commercial (Arbitrazh) Procedural Code of the Russian Federation, which has been amended accordingly.
The IPR Court will officially start hearing cases not later than February 1, 2013. The planned location for the IPR Court is in the Innovation Center Skolkovo (Moscow Oblast, Skolkovo village, please see our Russian Legal Update from December 2010 setting out the legal framework for Skolkovo). Access for residents from other regions of the Russian Federation will be ensured by video conferencing, saving parties to a dispute from traveling to another city to participate in court proceedings.
* Elvira Danilova is a paralegal in Dechert's Moscow office.
1.The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations that was established by the WIPO Convention in 1967 with a mandate from its Member States to promote the protection of IP throughout the world through cooperation among states and in collaboration with other international organizations.
2.TRIPS provisions were reflected in the fourth part of the Civil Code of the Russian Federation governing IP matters in 2006. TRIPS as a part of WTO protocol was signed by the Russian Federation on December 16, 2011, and is expected to be ratified by summer 2012.
3.IP disputes with regard to submission of applications with regard to and/or state registration of patent rights, rights to a utility model; industrial designs, selection achievements, trademarks or names of the place of origin of goods are deemed to be connected with public order in the Russian Federation, and for this reason are not arbitrable.
4.Formally, court precedent is not considered as a source of law in the Russian Federation, yet, by virtue of the "conformity of court practice" principle, Russian judges rarely deviate from the established approaches formed by prior court judgments.
5.State commercial (arbitrazh) courts of the RF hear economic disputes between legal entities and/or individual entrepreneurs.
6.Traditional state commercial (arbitrazh) courts have four instances: first, appellate, cassation and supervisory.
7.Cases in the first instance of the traditional state commercial (arbitrazh) courts are heard by one judge and by three judges in appellate and cassation courts.
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