Our foreign clients are often interested to know how the inventions made in Russia should be patented abroad. We have analyzed the questions people usually ask and have prepared information on the most typical ones just to be taken into consideration.
Article 35 of the Russian Patent Law regulates, that in case an invention is developed in Russia, the patent application should be first filed in Russia. The law does not define nationality of the inventors and that is why this provision concerns also the inventions made jointly by the Russian and foreign inventors during collaboration. It also concerns employee's inventions made under a task of an employer, be it a Russian or a foreign entity. Such is the practical interpretation of the Law.
Moreover, a patent application could be filed in another country only after three months from the date of filing in Russia - this is also stipulated by art. 35 of the Russian Patent Law.
Provisions of art. 35 have been introduced into the Patent Law mostly to ensure that the state has a means to control the possible export of the matters of national significance: state secrets, subject matter falling under export control regulations and the like. It is acknowledged that during the three months from the filing date the state bodies may examine the filed applications and if they find an invention of vital national interests or something like that, they may, issue a prohibition of foreign patenting, forbid export abroad, etc. This is the objective of introduction of art. 35 into the Patent Law. And violation of art. 35 could lead to infringement of interest of state in this matters, or it might be interpreted in such a way by an interested party.
In case the applicant receives no notification on prohibition of foreign patenting within the three months after filing application in Russia, he may further file applications abroad. The provisions of the law are fulfilled.
When the invention is made jointly by several inventors it usually rests with them to decide the aspects of the invention: where they have actually made the invention, whose participation was significant enough to consider the person to be the inventor, nomination of the applicant, if it is to be one of the authors, etc. We could just point out grounds, testifying to the fact of creation of the invention in Russia, which could be taken into account in case of some sort of checking.
Of major importance should be the fact of where was the working site and equipment used, use of qualified labor, the actual place of working of the team, etc. This should help the authors to resolve the uncertainty. Also one must take into account the so called "background intellectual property", the background knowledge, which is often accumulated by the Russian scientists during their practice before the collaboration began. It is this background knowledge which is often of vital importance for collaboration and creation of inventions.
So, if the invention was developed on the Russian site with the use of its facilities, participation of the Russian supporting personnel and, what is of utmost importance, with the use of the background knowledge and experience of the Russian specialists acquired before the collaboration, the invention should be considered created in Russia.
If the basic concept is developed in Russia, and details were developed abroad, it is of course a difficult issue to decide where to file first. The degree of the development of the invention in Russia and abroad have to be accounted for. If the developments, made abroad, may constitute a separate invention, the latter could be filed abroad first. But if there is one invention and its basic concept was developed in Russia, most certainly with the active use of facilities, labor, background knowledge of Russia, then the invention should be considered as created in Russia.
The Patent Law of the Russian Federation does not envisage a possibility of granting upon request a license to file the patent application first in other countries. If the invention is made in Russia, it should be filed first in Russia.
The law envisages, however, a possibility to obtain a permission to file a foreign patent application before the expiration of the three months term after filing the application in Russia. However, it is acknowledged that obtaining such permission would take a great effort and considerable time, which would not justify the whole affair, so in most cases it is much better just to wait for the end of the three month term.
Actually, it rests with the applicant and inventors to decide whether their invention is subject to export control regulations, whether it is secret, etc. If the inventors and applicant decide that there are no obstacles for letting the thing abroad, foreign patenting, etc., they may do it after three months of the date of filing the application with the Russian Patent Office and bear all the consequences.
Currently, the list of technologies, for export of which special licenses are needed, is rather long and covers many technological areas. It is highly advisable that the inventors take pains to check whether their invention falls under this list. If so they should apply for special export license with a competent government body.
a) If the applicant files a patent application for an invention made in Russia first in other countries, it would be an act of violation of the Law. This is impermissible in any event.
b) The patent law itself envisages no punishment whatsoever for violation of article 35. The Patent law does not directly envisage invalidation of the Russian patent on the same invention filed later in Russia. But such an action could lead to other violations.
It should be born in mind that when you file a patent application in Russia, with claiming of foreign priority or not, you never inform the Patent Office where the invention has actually been developed. There is no such box in the Request form. And the fact that there are Russian inventors and applicant(s) in the application with a foreign priority does not make any difference. There is no prohibition for Russian legal entities or natural persons to first file inventions abroad, provided the invention was not developed in Russia.
That is why if the patent application filed later in Russia claims priority of a foreign application, the examiners of the Russian Patent Office would have every reason to believe that the invention was made abroad, first filed abroad and only then filed in Russia. And if the invention was actually developed in Russia, filing of application with the Russian Patent Office under usual procedure with claiming foreign priority would constitute an act of fraud before the Patent Office, with all the consequences.
It is unclear how the inventor could legally obtain patent in his home country in this situation.
Also violation of article 35 of the Patent Law could lead to deeds and consequences falling under articles of other laws and Codes and those in turn could lead to liability, prosecution, and punishment under the administrative, civil, and criminal procedures commensurate with the damages incurred in accordance with the legislation of the Russian Federation.
c) As for civil legislation, it should be emphasized that article 168 of the recently enacted Civil Code of the Russian Federation states, that any deal (transaction), that is inconsistent with the Law or other legal acts, is void, unless the Law stipulates that such a deal could be contested or envisages other consequences for the violation. Article 169 of the Civil Code of the RF further states that a deal, that was done with the objectives contrary to the basis of the legal order or morality, is void. If the parties had willful intent in such a deal, everything obtained under such a deal is levied into the income of the Russian Federation.
So, violation of art.35 of the Russian Patent Law could invoke liabilities under the Civil Code and put in great jeopardy patent assignments, transactions, licenses, royalties, etc, to say nothing of the reputation of those involved, in Russia and on international arena.
d) Punishment might occur under criminal law also. If the application on invention, made in Russia, is filed first in other countries and then it turns out that the invention should not have been let out of the country because it should have been kept secret, it falls under export control regulations, special government resolution, etc., then the inventor(s) and applicant(s) could have great problems.
For example, the new Criminal Code of the Russian Federation enacted from 1 January 1997 has Article 189 "Illegal export of technologies, science and technology information and services...". The punishment under this article ranges from fine in the amount of 700 minimal monthly wages to the seven year imprisonment. And nobody could guarantee, that filing a patent application first in foreign countries with violation of art. 35 of the Patent law would not be considered falling under article 189 of the Criminal Code.
Also violation of patent and invention rights under article 147 of the same Code is punished by "fine in the amount of 200 to 400 minimal monthly wages, or in the amount of salary or other income of a person serving the sentence for the period of two to four months, or obligatory works of 180 to 240 hours, or imprisonment for the term of up to two years".
e) The new Code on Administrative infractions , to be soon enacted in Russia, envisages fines for violation of the order of patenting of industrial property objects in other countries.
Article 4 of the Russian Patent Law states, that algorithms and computer programs as well as topologies of integrated microcircuits are not acknowledged patentable inventions under this law. And it could seem reasonable to suppose that, as far as, say, a computer program is unpatentable in Russia, there are no obstacles to first file the application in another country.
However, in recent years the situation changed quite substantially. The following considerations should be taken into account.
a) Topologies of integrated microcircuits are excluded from patent protection because they are protected under a special regime in terms of another law, namely, the Law on Protection of Topologies of Integrated Microcircuits of 1992. The law envisages a special system of registration of rights for the topologies.
Under the direct pointing of Law on legal protection of topologies, the protection granted by it does not cover the ideas, methods, systems, technology or a codified information that could be embodied in the topology. Topology covers geometrical arrangement in space of the elements of the circuit board.
"The object of protection is the topology scheme itself, i.e. the arrangement of elements of the semiconductor circuits. As to the methods, related to the technology of production of the circuit, construction of crystals of the circuit board and other developments, they could be the objects of patent protection, provided they meet the established criteria of patentability".
This is an excerpt from a University manual, which could be treated as an official approach to the problem. It could be concluded that filing of patent applications abroad only for topologies as such would not be regarded as violation of the Patent Law. But as for developments connected with constructions, technologies of production of boards and the like, the situation is different and the reference to art.4 (3) of the Patent Law would not provide the excuse.
b) The above statement refers to patenting of computer programs even to a greater extent. In Russia computer programs as such are protected under the Law on Protection of Computer Programs and Databases and the Law on Copyright and Related Rights, both laws were enacted in the end of 1992.
The previous patent legislation also excluded computer programs from patent protection. In these circumstances it was indeed logical to think that a patent application for a computer program proper could be first filed in another country, USA for instance, where it could be patented. But even in the past years such conclusions could refer only to patenting the computer programs as such.
As for computer-related inventions, quite a few of them were in fact patented even in 70-ties and 80-ties under the Soviet legislation. The State stimulated patent filings, and among the 80,000 or so patent applications filed in late 1980-ties there were many that referred to computer related inventions, calculations and processing of information, etc. This patent activity forced the Patent Office to work out the methods of handling such applications. The Patent Office even issued explanations for the applicants as to the conditions on which inventions of this sort could be patentable in principle. Later, due to the drastic changes in the national economy, the patent activity of national applicants in early 90-ties decreased by several times and the problem seemed less topical and did not receive much attention. However, in recent years the situation is changing rather rapidly.
Due to the actual patenting of software related inventions in Europe and especially in the USA, the patent applications that contain elements of software started to arrive to the Russian Patent Office from abroad. The Russian Patent Office finds it difficult to reject such applications on formal grounds, and as for PCT applications, it is hardly possible at all. Our reviews of the Russian patent applications laid open revealed that the applications on software related inventions become quite common in Russia. As the result, software related inventions, though rather few, are actually being patented in Russia now, mostly those filed from abroad but national applicants also increase their activities. We even spotted out several patents for the programs proper. It could be concluded that many software related inventions would not be considered unpatentable subject matter on formal grounds and thus, such inventions should also be first filed in Russia.
Everything said above concerns PCT procedures also. The applications should be filed first with the Russian Receiving Office, Russia should be pointed as designated state and procedures on international scale are started only after three months of the filing date.
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