Update on legislative amendments in Russia affecting IP rights of foreign companies

In view of several legislative amendments recently adopted by the Russian Government, which affect intellectual property rights of foreign companies, IP Hills would like to keep you updated with the most recent information. We would be happy to answer your further questions.

First, we would like to inform you that the Russian Patent and Trademark Office, the Eurasian Patent and Trademark Office, the Ukrainian Patent and Trademark Office and the Belarusian Patent and Trademark Office operate as usual. Thus, all the official fees can be timely paid and the normal prosecution of cases is running.

Please find below some of the most important developments.

1. Order of the Government of the Russian Federation, March 2022

This order provides a list of countries imposing sanctions against Russia.

The list of “unfriendly countries” includes Australia, Albania, Andorra, Great Britain (including the Island of Jersey and controlled Overseas territories – Anguilla, British Virgin Islands, Gibraltar), all Member States of the European Union, Iceland, Canada, Liechtenstein, Micronesia, Monaco, New Zealand, Norway, Republic of Korea, San Marino, Northern Macedonia, Singapore, United States of America, Taiwan (ROC), Ukraine, Montenegro, Switzerland and Japan.

2. Decree of the Government of the Russian Federation, March 2022 on “the methodology of calculating an amount of compensation payable to patent owner as a result of decision to use invention, utility model or industrial design without the patent owner’s consent, and procedure of its payment”

This decree introduces a special protocol for calculating compensation for a patent use authorized by the Russian Government without the consent of a patent owner. It implies that for the purposes of national security, human life and wellbeing, the Russian Government may authorize a certain entity to use a patent with paying appropriate compensation to a patent owner. Now the decree specifies that if the patent owner is an entity/national from a list of “unfriendly countries”, there will be no compensation for such a use. Such authorization shall be understood to represent a form of a compulsory licence granted by the Russian Government.

Together with our local national agents in Russia, we will certainly monitor how likely such “compulsory licenses” are to be granted by the Russian Government.

3. Russian Government initiative to allow free use of intellectual property rights of the companies leaving Russia as a result of sanctions during a transitional period, while the supply of the products come back to normal or the products be substituted with analogous ones

At the moment, the Russian Government considers a legislative initiative authorizing a free use of intellectual property rights on the products of those companies from the list of “unfriendly countries”, which joined the sanctions, and as a result cancelled or decreased the supply of their products to Russia. It is considered as a symmetrical measure to sanctions, and it is supposed to be in place during a certain transitional period.

It seems this measure is not going to be applied against the companies which continue doing business in Russia including foreign companies which are localized and have their production sites in Russia, even if such companies are from the list of “unfriendly countries”.

Taking the long-term patent lifetime into account, an option could be to maintain protection at least through core patent applications/patents until the situation becomes clearer as to the Russian market trends.

In any case, Eurasian patent applications remain an interesting option nowadays as they allow to seek protection in Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Tajikistan and Turkmenistan, on top of the Russian Federation.

Should you have any further questions or concerns, please let us know.

© 2022, Pauline Méchet for IP Hills

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E-mail to pauline.mechet@iphills.com or axel.plas@iphills.com.