Federal Service for Intellectual Property, Patents and Trademarks (ROSPATENT)
- Q1 Filing Date
- Q2 Representation
- Q3 Forms and Means of Communications
- Q4 Relief in Respect of Time Limits
- Q5 Reinstatement of Rights
- Q6 Restoration of Priority Rights Where the Filing of the Subsequent Application was Delayed
- Q7 Restoration of Priority Rights Where the Filing of a Copy of the Earlier Application was Delayed
- Q8 Request for Recordation of Change in Name or Address
- Q9 Request for Recordation of Change in Applicant or Owner
- Q10 Request for Recordation of a License or a Security Interest
- Q11 Request for Correction of a Mistake
Abbreviations used:
Code –Civil Code of the
AR IZ – Administrative Regulations on implementation by the Federal Service for Intellectual Property, Patents and Trademarks of the State function concerning organization of the receipt of applications for inventions and their consideration and examination, and in accordance with established procedure the grant of patents of the Russian Federation for inventions, as approved by Order No. 327 of the Ministry of Education and Science of the Russian Federation of October 29, 2008;
AR RD - Administrative Regulations on the implementation by the Federal Service for Intellectual Property, Patents and Trademarks of the State function concerning registration of agreements for the grant of the right in inventions, utility models, industrial designs, trademarks, service marks, protectable computer programs, databases and topographies of integrated circuits, and also commercial concession agreements for the use of intellectual property subject matter protectable in accordance with the patent legislation of the Russian Federation, as approved by Order No. 321 of the Ministry of Education and Science of the Russian Federation of October 29, 2008;
Annex to Regulations – Annex to regulations on patent and other fees for the performance of legally significant acts, connected to patents, utility models, industrial designs, the State registration of trademarks and service marks, State registration and the grant of an exclusive right in a appellation of origin, and also to the State registration of the transfer of exclusive rights to other persons and agreements on the disposal of these rights, as approved by the Decree of the Government of the Russian Federation No. 941, of December 10, 2008, “List of legally significant acts connected to patents, utility models, industrial designs, State registration of trademarks and service marks, State registration and grant of the exclusive right in an appellation of origin, and also to the State registration of the transfer of exclusive rights to other persons and agreements on the disposal of these rights, for the performance of which patent and other fees are charged”.
The responses are given after each question in the order in which the questions are presented.
Q1: Filing date
Q1-1 For the purpose of obtaining a filing date, an applicant may file an application on paper or “as otherwise permitted by the Office”. If your Office accepts applications filed in a form or by a means other than on paper, for the purpose of the filing date (for example, on-line filing), please provide a brief explanation regarding the acceptable form or means, and describe whether such form or means, for the purpose of the filing date, are different from the form or means applicable to applications accepted by your Office for the purpose of processing the application after according the filing date.
[Reference: PLT Article 5(1)(a)]
A1-1 The documents required for performing the State function are submitted to Rospatent directly by fax or sent through the mail (para. 7.3 AR IZ):
- directly (in accordance with Article 1375(3) of the Code, the application filing date shall be considered the date on which Rospatent receives an application containing a request for the grant of a patent, a description of an invention and drawings, if the description contains a reference thereto; in the case of non-simultaneous submission of the above documents, the application filing date shall be considered the date of receipt of the last of those documents);
- by fax (originals of the application documents sent by fax shall be submitted within one month of their date of receipt by fax together with a covering letter identifying the documents received previously by fax. Provided this condition is satisfied, the date of receipt of a document shall be considered the date of its receipt by fax.
If an original document is received upon expiry of the above term or without a covering letter, or a document received by fax is not identical to the original submitted, the document shall be considered received on the date the original is received, and further consideration shall not be given to the content of the document received by fax.
Until the original of an application document sent by fax is submitted, the document shall not be considered to have been received.
If any application document received by fax, or part thereof, is illegible, the document shall be considered received on the date on which the original is received.
A document may be considered to have been received on the date a fax is received, provided the applicant removes the content of the illegible portion (para. 13.3 AR IZ):
- sent through the mail (term for dispatch of materials during the application prosecution process shall be considered observed, if on the last day of the term the above materials are submitted directly via Rospatent or submitted to the communications body before midnight on the last day of the term (para. 12.4 AR IZ).
Q1-2 Does your Office accept a drawing as the element referred to as "part which on the face of it appears to be a description" in PLT Article 5(1)(a)(iii)?
[Reference: PLT Article 5(1)(b)]
A1-2 In accordance with Article 1375 of the Code, a drawing is an application document required for understanding the essential features of a claimed invention. A drawing is part of the list of documents required to establish an application filing date (para. 3 of Article 1375 of the Code). In accordance with Russian legislation, a drawing shall not be examined as a description of an invention.
Q1-3 For the purpose of according the filing date, a Contracting Party may require information allowing the identity of the applicant to be established or information allowing the applicant to be contacted by the Office, or the both. What is the requirement of your country?
(a) Information allowing the identity of the applicant to be established
(b) Information allowing the applicant to be contacted by the Office
(c) Both information allowing the identity of the applicant to be established and information allowing the applicant to be contacted by the Office.
[Reference: PLT Article 5(1)(c)]
A1-3 Both requirements are stated in subparagraph 1.1, para. 23.6 AR IZ.
Q1-4 Does your Office accept evidence allowing the identity of the applicant to be established or allowing the applicant to be contacted by the Office as the element referred to in PLT Article 5(1)(a)(ii) (“indications allowing the identity of the applicant to be established or allowing the applicant to be contacted by the Office”)?
[Reference: PLT Article 5(1)(c)]
A1-4 No
Q1-5 For the filing date to be determined under PLT Article 5(6)(b), which of the optional elements referred to in PLT Rule 2(4) are required by your Office?
(a) A copy of the earlier application
(b) A copy of the earlier application and its filing date, certified as correct
(c) A translation of the earlier application
(d) The missing part of the description or missing drawing must be completely contained in the earlier application
(e) The application must contain an indication that the contents of the earlier application were incorporated by reference
(f) An indication as to where the missing part of the description or the missing drawing is contained in the earlier application or in the translation
[Reference: PLT Rule 2(4)]
A1-5 - A copy of the earlier application and its filing date, certified as correct;
- The missing part of the description or missing drawing must be completely contained in the earlier application;
- The application must contain an indication that the contents of the earlier application were incorporated by reference;
- An indication as to where the missing part of the description or the missing drawing is contained in the earlier application or in the translation (subparagraphs 8-12, para. 23.6 AR IZ).
Q1-6 For a reference to a previously filed application to replace the description and any drawing for the purpose of the filing date under PLT Article 5(7), which of the requirements referred to in PLT Rule 2(5) are required by your Office?
(a) The reference to a previously filed application must indicate the filing date of the previously filed application
(b) A copy of the previously filed application
(c) A copy of the previously filed application, certified as correct
(d) A translation of the previously filed application
(e) The reference mentioned in PLT Article 5(7)(a) shall be to a previously filed application that has been filed by the applicant or his predecessor or successor in title
[Reference: PLT Rule 2(5)]
A1-6 - The reference to a previously filed application must indicate the filing date of the previously filed application;
- A copy of the previously filed application, certified as correct;
- The reference mentioned in PLT Article 5(7)(a) shall be to a previously filed application that has been filed by the applicant or his predecessor or successor in title.
Q2: Representation
Q2-1 In addition to the procedures referred to in PLT Article 7(2)(a) and (b), are there any procedures before the Office that an applicant, owner or other interested person may carry out himself without, for example, a local representative? If yes, please list those procedures.
[Reference: PLT Article 7(2)]
A2-1
In addition to the procedures indicated in the PLT Instructions:
- familiarization with application documents;
- familiarization with patent materials indicated by an examiner in the process of considering an application;
- participation in considering an application (negotiations, examiners’ meetings);
- filing of a request for extension of the term for submission of documents and requested materials, and the restoration of a missed deadline for submission of documents and requested materials;
- withdrawal of an application;
- filing of a request for carrying out an information search;
- filing of a request for carrying out a substantive examination of an application.
Q2-2 Where a single power of attorney relating to more than one application or patent of the same person is filed, does your Office require that a separate copy of the single power of attorney be filed for each application and patent?
[Reference: PLT Rule 7(2)(b)]
A2-2 Yes. A single power of attorney may relate to several applications by one and the same applicant, including to all filed and future applications of such a person. In that case, the original of a power of attorney (a certified copy thereof) is submitted for one of the applications, and for each of the other applications – a copy of the power of attorney, together with an indication of the number of the application in which the original thereof (certified copy) is to be found. (Para 12.2 AR IZ, para. 11.2 AR PM).
Q3: Forms and Means of Communications
Q3-1 Does your Office permit the filing of communications by telegraph, teleprinter, telefacsimile or other similar means of transmittal? If yes, does your Office require that the original of such communication, accompanied by a letter identifying the earlier transmission, be filed on paper?
(a) The filing of communications by telegraph, teleprinter, telefacsimile, etc. is not permitted
(b) The filing of communications by telegraph, teleprinter, telefacsimile, etc. is permitted, and the original of the communications by telegraph, teleprinter, telefacsimile, etc. is required
(c) The filing of communications by telegraph, teleprinter, telefacsimile, etc. is permitted, and the original of the communications by telegraph, teleprinter, telefacsimile, etc. is not required
[Reference: PLT Rule 8(2)(c)]
A3-1 The filing of an application by fax, in electronic form on a machine-readable carrier is permitted provided that the original is filed (10.12 AR IZ).
Q4: Relief in Respect of Time Limits
Q4-1 Which form of relief in respect of time limits does your Office provide?
[Reference: PLT Article 11(1), (2) and (4)]
A4-1 Extension of time limits requested prior to the expiration of the time limit
Term of extension: The term for the filing of a request for the conduct of a substantive examination of an invention application may be extended by not more than two months; the extension of the term for a response to an examiner’s request – by not more than 10 months.
Amount of fees: Extension of the term for a response to an examiner’s request or for notification of the need to submit communications for the choice of an application, in relation to which a patent may be granted (for each month of the extension) is 120 rubles for residents up to six months, and 540 rubles for non-residents, and 300 rubles for residents from six to 10 months, and 1,350 rubles for non-residents (see Regulations).
For the extension of the term of submission of a request to conduct a substantive examination of an invention application, the fee is 600 rubles for residents, and 2,700 rubles for non-residents (see Regulations).
Q4-2 Which actions are excluded from the relief as described in A4-1?
[Reference: PLT Article 11(3) and Rule 12(5)]
A4-2
- extension of time limits requested after the expiration of the time limit;
- continued processing.
Q5: Reinstatement of Rights
Q5-1 Under which circumstance does your Office reinstate the rights of the applicant or owner as referred to in PLT Article 12? In addition, please provide a brief explanation of the applicable standard.
[Reference: PLT Article 12(1)]
A5-1 In accordance with subparagraph (2), para. 21 AR IZ, a request for the restoration of a missed deadline shall contain an indication of the good reasons for the failure to observe said deadline.
Q5-2 What is the time limit for making a request for reinstatement of rights?
[Reference: PLT Rule 13(2)]
A5-2 A request for the restoration of a missed deadline may be filed by an applicant within 12 months of the day of expiry of the established deadline.
A request for restoration of the validity of a patent may be filed with the Federal Authority in question within three years of the day of expiry of the term for payment of the patent fee, but prior to expiry of the term of validity of the patent, as provided for by this Code (Article 1400 Code).
Q5-3 Does your Office require a fee to be paid? If yes, please indicate the amount.
[Reference: PLT Article 12(3)]
A5-3 A fee shall be payable for the restoration of a deadline missed by an applicant, as established by the legislation of the Russian Federation, for the submission of documents or additional materials at an examiner’s request, the filing of a request for the conduct of a substantive examination of an invention application or the lodging of an objection with the Patent Disputes Chamber of the federal executive authority for intellectual property:
- if the request is filed within six months, 480 rubles for residents and 1,260 rubles for non-residents;
- if the request if filed later than six months, 1,920 rubles for residents and 8,640 rubles for non-residents (para. 1.13 Regulations).
The size of the annual fee for restoration of the validity of a patent, utility model, industrial design or utility model certificate shall be increased 2.5 times (1.21 Regulations).
Q5-4 Which actions are excluded from the reinstatement of rights?
[Reference: PLT Article 12(2) and Rule 13(3)]
A5-4 The right to obtain a patent may not be renewed in the case of recognition of an application as being withdrawn at the applicant’s request; this shall also apply to the validity of an exclusive right in the case of termination of the validity of a patent at the patent owner’s request (subparagraph (3), para. 22 AR IZ, 1399 Code).
Q6: Restoration of Priority Rights Where the Filing of the Subsequent Application was Delayed
Q6-1 Under which circumstance does your Office restore the right of priority where the subsequent application was not filed within the priority period?
[Reference: PLT Article 13(2)]
A6-1 If, as a result of circumstances beyond the applicant’s control, an application, for which convention priority is requested, could not be filed within the given period, this period may be extended by the federal executive authority for intellectual property (para. 1 Article 1382 Code).
Q6-2 In order to restore the right of priority, what is the time limit within which the subsequent application shall be filed?
[Reference: PLT Rule 14(4)]
A6-2 Not later than two months following expiry of the established period (para. 1, Article 1382 Code).
Q6-3 Does your Office require a fee to be paid? If yes, please indicate the amount.
[Reference: PLT Article 13(4)]
A6-3 A fee of 300 rubles for residents and 1,250 rubles for non-residents shall be charged for extension of the period for filing an invention application, with a request for convention priority (para. 1.23 Annex to Regulations).
Q7: Restoration of Priority Rights Where the Filing of a Copy of the Earlier Application was Delayed
Q7-1 In order to restore the right of priority where a copy of the earlier application was not filed within the time limit, does your Office require a declaration or other evidence in support of the request for restoration of priority rights?
[Reference: PLT Article 13(3) and Rule 14(6)(b)]
A7-1 Yes. Where a certified copy of a first application is not submitted within the above time limit, the priority right may nevertheless be recognized by the federal executive authority for intellectual property on a request by the applicant, filed with the federal authority, before the end of a 16-month period, provided that a copy of the first application is requested by the applicant from the patent Office with which the first application is filed, within 14 months of the day on which the first application is filed and submitted to the federal executive authority for intellectual property within two months of the day on which it is received by the applicant (para. 3, Article 1382 Code).
Q7-2 Where the filing date of a copy of the earlier application was delayed (for example, a copy of the earlier application has not been filed within 16 months from the priority date), in order to enjoy restoration of priority right, what is the time limit within which such delayed copy of the earlier application shall be filed?
[Reference: PLT Rule 14(6)(b)]
A7-2 A copy of a first application shall be submitted within two months of the day on which it is received by the applicant, provided that it was requested by the applicant within 14 months of the day of filing of the first application and the applicant filed a request for recognition of the priority right within 16 months (para. 3, Article 1382 Code).
Q7-3 Does your Office require a fee to be paid? If yes, please indicate the amount.
[Reference: PLT Article 13(4)]
A7-3 Yes, this is required. A fee of 300 rubles for residents and 1,350 rubles for non-residents shall be charged for recognition of the right of convention priority for an invention application at the applicant’s request (para. 1.22 Annex to Regulations).
Q8: Request for Recordation of Change in Name or Address
Q8-1 Where a single request for recordation of change in name or address relating to more than one application or patent of the same person is filed, does your Office require that a separate copy of the single request be filed for each application and/or patent?
[Reference: PLT Rule 15(3)(b)]
A8-1 Yes, this is required for invention applications. Correspondence is conducted by an applicant or his representative, authorized for that purpose, for each application separately (para. 12.3 Regulations).
Q9: Request for Recordation of Change in Applicant or Owner
Q9-1 Does your Office require the following elements to be contained in the request for recordation of change in applicant or owner?
(a) A statement that the information contained in the request is true and correct
(b) Information relating to any government interest
[Reference: PLT Rule 16(1)(b)]
A9-1 No
Q9-2 Which documentation relating to the basis of the change is required by your Office under the following circumstances?
[Reference: PLT Rule 16(2)(a) to (c)]
A9-2 In relation to an application, if a change relates to the name of an applicant and results from the reorganization of a legal entity or its successors, a document shall be attached to the request for insertion of changes to an application, confirming transfer of the right to obtain a patent to the person filing the request (para. 15(5) AR IZ).
In relation to a patent:
(a) the change results from a contract:
- registration application (one copy);
- two copies of the contract or of an extract from the contract, containing its essential conditions, or of an agreement to amend or terminate the contract;
- a document confirming payment of the prescribed fee;
- a power of attorney confirming the powers of the representative, where matters are condcuted through a representative;
- a copy of the contract or of an extract from the contract (non-certified) (para. 9.9.2 AR RD).
(b) the change results from a merger or from the reorganization or division of a legal entity:
- a registration request (one copy);
- a document containing the transfer of an exclusive right;
- a document confirming payment of the prescribed fee;
- a power of attorney confirming the powers of a representative, where matters are conducted through a representative (para 9.12.2 AR RD).
(c) the change results from any other ground (ex. by operation of law or a court decision):
- a registration request (one copy);
- documents confirming the transfer of an exclusive right;
- a document confirming payment of the prescribed fee;
- a power of attorney confirming the powers of a representative, where matters are conducted through a representative (para 9.12.2 AR RD).
Q9-3 Where the change in applicant or owner is in the person of one or more but not all of several co-applicants or co-owners, does your Office require that evidence of the consent of the other co-applicants or co-owner to the change be provided to the Office?
[Reference: Rule 16(2)(d)]
A9-3 Yes, this is required. If after an application is filed, the applicant transfers his right to obtain a patent to another person, a request shall be field with Rospatent, containing an indication of the transfer of the right to the other person and the consent of the person indicated in the request. The request shall be signed by both the above persons in order. If the request is signed by only one of the above persons, a document shall be attached to the request, confirming the existence of grounds for the requested change of applicant (para. 16 AR IZ).
In accordance with an agreement on alienation of an exclusive right in an invention (patent alienation agreement), one party (patent owner) transfers or is obliged to transfer the exclusive right belonging to him in the corresponding result of intellectual activity fully to the other party – the party acquiring the exclusive right (patent acquirer) (Article 1365 Code).
Q9-4 Where a single request for recordation of change in applicant or owner relating to more than one application or patent of the same person is filed, does your Office require that a separate copy of the single request be filed for each application and/or patent?
[Reference: PLT Rule 16(5)]
A9-4 Yes. Where changes relate to the name of an author, or the name or title of an applicant, or the applicant’s representative, whereby he has remained the same person as before, and/or his address, and/or his correspondence address, an appropriate request may relate to several applications by one and the same applicant. In this case, the original request is submitted for one of the applications, and for each of the other applications, a copy thereof is submitted with an indication of the application in which the original of the request is to be found (para. 15(4) AR IZ).
Q10: Request for Recordation of a License or a Security Interest
Q10-1 May a license or a security interest in respect of a patent application or a patent be recorded under the law of your country?
[Reference: PLT Rule 17(1)]
A10-1 Recordation of a license: No, no provision is made by Russian legislation for the grant of a license or a security interest for an application.
Recordation of a security interest: Yes.
If one or both of the answers is(are) “Yes”, please proceed to Q10-2. If both answers are “No”, please skip to Q11.
Q10-2 Does your Office require the following elements to be contained in the request for recordation of a licence (or a security interest)?
(a) A statement that the information contained in the request is true and correct
(b) Information relating to any government interest by your country
(c) Information relating to the registration of the license (security interest)
(d) The date of the license (security interest) and its duration
[Reference: PLT Rule 17(1)(b)]
A10-2 Yes, in relation to:
- information relating to the registration of the license (security interest);
- the date of the license (security interest) and its duration.
Q10-3 Which documentation relating to the basis of the license (or security interest) is required by your Office under the following circumstances?
[Reference: PLT Rule 17(2)]
A10-3 The license (security interest) is a freely concluded agreement:
- a registration request (one copy);
-
two copies of an agreement or of an extract from an agreement containing its essential conditions, or of an agreement concerning the amendment or termination of the contract;
- a document confirming payment of the prescribed fee;
-
a power of attorney confirming the powers of a representative where matters are conducted through a representative;
- a copy of the contract or an extract from the contract (uncertified).
(Para 9.9.2 AR RD)
The license (security interest) is not a freely concluded agreement (ex. operation of law or a court decision):
- a registration request (one copy);
-
a court decision on the grant of a compulsory license or termination of the validity of a compulsory license;
- a document confirming payment of the prescribed fee;
-
a power of attorney confirming the powers of a representative where matters are conducted through a representative.
(Para 9.10.2 AR RD)
Q10-4 Where the licence (or security interest) is a freely concluded agreement, does your Office require that any applicant, owner, exclusive licensee, co-applicant, co-owner or co-exclusive licensee who is not party to that agreement give his/her consent to the recordation of the agreement?
[Reference: Rule 17(2)(d)]
A10-4 Yes.
- In accordance with a licensing agreement, one party – patent owner (licensor) grants or is obliged to grant to the other party (licensee) the right to use an invention, as confirmed by a patent, within the limits established by the agreement (Article 1367 Code).
- With the written consent of the licensor, a licensee may by agreement grant the right to use the result of intellectual activity or means of individualization to another person (“sub-licensing agreement”, Article 1238 Code).
Q10-5 Where a single request for recordation of a license (or security interest) relating to more than one application or patent of the same person is filed, does your Office require that a separate copy of the single request be filed for each application and/or patent?
[Reference: PLT Rule 17(5)]
A10-5 No. A registration may be made on the basis fo an original request and an original agreement relating to several patented inventions.
Q11: Request for Correction of a Mistake
Q11-1 Does your Office prescribe the following requirements with respect to a request for correction of a mistake?
(a) The request shall be accompanied by a replacement part or a part incorporating the correction
(b) The request shall be subject to a declaration by the requesting party stating that the mistake was made in good faith
(c) The request shall be subject to a declaration by the requesting party stating that such request was made without undue delay following the discovery of the mistake
(d) The request shall be subject to a declaration by the requesting party stating that such request was made without intentional delay following the discovery of the mistake
[Reference: PLT Rule 18(1)(b) to (d)]
A11-1 The request contains a short clarification of the proposed changes and replacement sheets containing corrections (para. 15(1), (2) and (3) AR IZ).
Q11-2 Where a single request for the correction of a mistake relating to more than one application or patent of the same person is filed, does your Office require that a separate copy of the single request be filed for each application and/or patent?
[Reference: PLT Rule 18(3)]
A11-2 Yes, in relation to an application.
In particular, where changes relate to the name of an author, or the name or title of an applicant, or the applicant’s representative, whereby he has remained the same person as before, and/or his address, and/or his correspondence address, an appropriate request may relate to several applications by one and the same applicant. In this case, the original request is submitted for one of the applications, and for each of the other applications, a copy thereof is submitted with an indication of the application in which the original of the request is to be found (para. 15(4) AR IZ).
[End of questionnaire]
June 2010