Temporary legal protection of industrial designs during examination of applications

Temporary legal protection of industrial designs during examination of applications

15 January 2019

We would like to inform you that on December 27, 2018, the President of the Russian Federation signed the Federal Law No. 549-FZ “On Making Amendments to the Part Four of the Civil Code of the Russian Federation” (previously known as the Bill No. 428309-7) that provides for temporary legal protection to industrial designs during the stage of substantive examination of applications (URL: http://sozd.duma.gov.ru/bill/428309-7) («Law»).

The Law was officially published on December 28, 2018, and will enter into force upon expiry of 180 days from that date (URL: http://publication.pravo.gov.ru/Document/View/0001201812280020).

What does «temporary legal protection within an examination of an application» mean?

Currently (until the Law is entered into force) such protection is provided only to an invention as a subject matter of patent rights (Article 1392 of the Civil Code of the Russian Federation).

It means that within the period starting from the date of publication of an application (Publication of information regarding an application after a formal examination with a successful result) until the date of a patent issuance (Publication of information regarding a patent issuance after a substantive examination with a successful result), i.e., during the substantive examination of the application by the Russian Patent Office, the invention is protected by law (within the scope of a published formula of the invention).

What legal remedies are available?

If a person uses the claimed invention during that period, such person will have to pay a monetary compensation to the applicant provided that the applicant has received a patent to the invention. The amount of the compensation should be determined by their agreement, or in the case of a dispute – by the court.

What IP rights are protected?

The Law extends the procedure of temporary legal protection of inventions to industrial de-signs. While an invention is protected within the scope of its published formula, an industrial design will be protected within the scope of a combination of its essential features reflected in the images of a product appearance contained in a published application.

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Practices: Intellectual Property

Note: Please be aware that all information provided in this letter was taken from open sources. Neither ALRUD Law Firm, nor the author of this letter, bear any liability for consequences of any decisions made in reliance upon this information.

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