Russian Federation: Law Deals A Blow To The List Of Features

Last Updated: 29 December 2015
Article by Vladimir Biriulin and Nikolay Bogdanov

Most Read Contributor in Russian Federation, September 2018

Patents for inventions push forward the technological progress but are not usually seen to the naked eye. Industrial designs strike the eye of the consumer and push forward his demand. A famous Mark Twain saying "Clothes Make the Man" mutatis mutandis fits the design: The outer appearance makes the industrial design. Until late last year filing a design application was a headache for the applicant because Russia, as in other areas, pursued its own way. In order to file an application it was necessary to compile a list of essential features by analogy with applications for invention even though the pictures were all the same there. The list of essential features played a key role in defining the scope of protection of a design. It is true that the list of essential features could be corrected before the patent was granted however if it was granted without describing a particular important feature this could become a problem on the market. The infringer could avoid being chased if he deliberately omitted one of the features given in the list of essential features or if a particular essential feature was added in the list without need.

The new law dismissed the list of essential features which move understandably expands the scope of protection. The law now provides that an industrial design is used in the product if the product is characterized by essential features which produce the same impression on the informed user as the impression produced by a patented industrial design on condition that both products serve the same purpose. The provision has become less "mathematical" but more "humane". The accent has been shifted to expert evaluation rather than to formal listing of features. The absence of one or several features in a design or some difference in the embodiment of a design will not take the design out of protection on condition that the design produces the same impression on the informed user as the patented industrial design. On the other hand, the absence of the list of essential features may complicate solution of the disputes on patentability or infringement. The body considering the dispute will be guided by pictures only and there will be a wider scope for the parties to argue which of the features is "more essential if at all" in the contested industrial design and the one which is compared to it. The law introduced the concept of a hypothetical "informed user" who will judge upon originality of the patented design and compare it to the allegedly counterfeit article. The "informed user" has come to Russia from Europe so patterns of his behavior may possibly influence the Russian judiciary and the Patent Office. Anyway some time should pass until the informed user is naturalized in Russia. Until then the Patent Office and the parties in dispute will have more leeway to assess what is to be considered as essential features of the design while on the other hand, there will be some uncertainty as to what particular specific features are essential in considering the difference between the industrial design and the one which is cited or considered as infringing the rights.

The description of the industrial design remains essential for the patent application. The law does not set requirements for the description. There exist earlier rules drafted by the Patent Office which explain that the description of the industrial design should disclose the essence of the design through description of its essential features and particulars of its outer appearance. The new rules have not yet been adopted however there are drafts from which we may infer that the Patent Office would like to have a detailed description of the industrial design. Neither the law nor judicial practice, which is yet non-existed, explain the meaning of the description of the industrial design. The law only states that the scope of protection is determined by the combination of essential features shown in the pictures contained in the patent. Though the requirement to submit a description is there it is not clear where it fits in the picture.

The documents needed to establish priority are less in number. The applicant has to submit only a set of pictures which give a clear and complete understanding of essential features of the industrial design which define its aesthetic quality. Description of the industrial design may be submitted later.

The list of non-patentable subject matters has been reduced. Now all architectural objects are patentable instead of only small architectural forms. Objects of unstable shape have been excluded from non-patentable objects though this novelty has little practical application: one can hardly imagine how a stream of water or a gaseous substance may be patented. On the other hand, a new non-patentability requirement has been introduced: non-patentable shall be designs which may mislead the consumer in respect of the manufacturer or of the place of manufacture or of the product for which the claimed design is used as a package. If the claimed industrial design is identical or looks like a trademark or produces a similar impression such design may be patented if there is an agreement to that effect of the owner of the trademark. This requirement, to an extent, puts the industrial design on the same footing with some trademarks for which letters of consent are needed in certain situations. An industrial design patent may be obtained for a label in the same way as a trademark registration may be obtained for a label. Hence this limitation may be regarded as well grounded

Requirements for making changes in the application have become more stringent.  The applicant may submit changes only in response to examiner's inquiry. The changes should not add or delete essential features present or absent in the originally filed documents. The applicant should carefully prepare the images of the industrial design. No changes will be possible after filing.

A number of changes in the law affect the examination procedure. While evaluating novelty and originality of the claimed design the examiner  may cite information on the outer appearance of similar articles not only contained in the earlier filed patent applications for industrial designs but also in the patent applications for inventions, utility models, and trademarks. It so happens that patent applications for whatever subject matters may contain drawings or pictures which show the outer appearance of the patented article in which an invention or a utility model is used. Likewise, a trademark application may concern a 3D mark or a trademark for a label. The outer appearance of such articles may be protected by a patent or a trademark. It goes without saying that all publicly available information may also be cited which raises questions with regard to novelty and originality. In fact the scope of information which may be cited has been substantially enlarged.

A grace period has been extended. It was previously six months. Now it has been doubled. This new provision is obviously to the advantage of the applicants. In the first place, accidental disclosure gives more opportunities to the applicant to rectify the situation by filing an application within a longer span of time. Besides, the designer, prior to filing a patent application may wish to test his design on the market, evaluate its commercial potential and choose to file it in Russia if he sees that the design sells well in his home country.

It is worth noting that the above and some other changes in the law were conditioned by the intention of the law makers and the patent office to harmonize protection of the designs with the regulation prevalent in the European Union. Though, in some cases those attempts were not consistent enough: the description of the industrial design has been retained in the patent application though, as has been mentioned above, it does not have critical importance and is not a requirement in the countries of the European Union. Also, rigid requirements to limit opportunities for introducing changes in the application in the European Union were explained by excessive workload of the European Patent Office while the number of design patent applications in Russia is not yet commensurate with the European Patent Office which would warrant introduction of such requirement.

There is yet another amendment of the law which concerns the term of validity. The old law provided that a patent for an industrial design could be granted for ten years. That term of validity could be extended by another term at the choice of the patent owner but not exceeding ten years. The amendments introduced a shortened basic term of validity of five years with the possibility of multiple extensions by five year periods. The overall term of validity remains 25 years. It is not clear why such changes have been made all the more that annual fees should have been paid every year under the old law as well as they should be paid annually under the current law.

The law introduced a limitation of the rights of the patent owner in what concerns assignment of rights. A new provision sets forth that the exclusive right for an industrial design shall not be assigned (the patent office will not register it) if the assignment may confuse the consumer with regard to the goods or their manufacturers. If the patent owner issues an exclusive license to a licensee he will not be able to use the industrial design himself in the scope provided in the exclusive license. If the patent owner plans to use his patent himself he should include a relevant provision in that exclusive license agreement.

Summarizing the above review of amendments of the law pertaining to industrial designs it should be noted that the law has become more friendly to the applicants and patent owners and more attractive for filings. This responds to the trend consisting in that modern consumers have become more demanding to the appearance of the goods they buy. As time goes by the patent office and judiciary will accumulate practice and it will become clear whether the law has to be improved further.

Выноски:

The infringer could avoid being chased if he deliberately omitted one of the features given in the list of essential features or if a particular essential feature was added in the list without need

The new law dismissed the list of essential features which move understandably expands the scope of protection

On the other hand, the absence of the list of essential features may complicate solution of the disputes on patentability or infringement

The "informed user" has come to Russia from Europe so patterns of his behavior may possibly influence the Russian judiciary and the Patent Office

The documents needed to establish priority are less in number. The applicant has to submit only a set of pictures which give a clear and complete understanding of essential features of the industrial design which define its aesthetic quality. Description of the industrial design may be submitted later

New non-patentability requirement has been introduced: non-patentable shall be designs which may mislead the consumer in respect of the manufacturer or of the place of manufacture or of the product for which the claimed design is used as a package

It is worth noting that the above and some other changes in the law were conditioned by the intention of the law makers and the patent office to harmonize protection of the designs with the regulation prevalent in the European Union

The law introduced a limitation of the rights of the patent owner in what concerns assignment of rights

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions