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Annual reports 2004 - Section 1

 




Message to the Reader

In accordance with the Decree of the President of the Russian Federation dated March 9, 2004 No 314 “On the System and Structure of the Federal Executive Bodies” the Russian Agency for Patents and Trademarks was transformed into the Federal Service for Intellectual Property, Patents and Trademarks and was placed under the administration of the Ministry of Education and Science of the Russian Federation, which deals with a task of developing the state policy in the area of intellectual property.

In the modern world the Intellectual Property becomes more and more the foundation of a knowledge-based economy which combines in a rational way the state regulation and market mechanisms aimed at the stimulation of the scientific and innovative activities, enhancement of the level of education, science and culture, formation of a new “class of intellectual property rights owners”.

The creation of such an economy is a task, which is facing presently the modern Russia. Undoubtedly, Rospatent who in 2005 celebrates its 50-th anniversary will contribute to the solution of this task.

The Government of the Russian Federation entrusted Rospatent, along with the traditional functions, also with new ones which concern control and supervision duties in the area of legal protection and exploitation of intellectual property objects, patents and trademarks including the creative results being involved into economic and civil commercialization. In addition, Rospatent is charged with the task of ensuring the observance of the interests of the Russian Federation, Russian natural and legal persons in respect of the issues relating to a fair and equitable sharing of the rights to the common results of intellectual activities including those created in the framework of international scientific and technical cooperation.

With a due account to this the Organization structure of Rospatent underwent considerable changes. The activities of the organizations supervised by Rospatent were also streamlined; additional arrangements aimed at a more effective employment of the human resources were taken (relevant data in this respect is given below).

Of fundamental importance for Rospatent was the elaboration and adoption of measures aimed at the realization of the new functions related to accounting and control over the legal protection and exploitation the results of scientific and technical activities and intellectual property objects created at the expense of the Federal budget; the task of improving the current normative and legislative basis under the Auspices of the Ministry of Education and Science of the Russian Federation rated equally high.

At present the following documents were elaborated: a Concept of normative and methodological support for the performance of control and supervision functions of the Federal Service; the draft Rules on auditing the activities of the organizations engaged with the legal protection and exploitation of the results of scientific and technical activities created at the expense of the Federal budget. In addition, uniform record forms and methodological recommendations necessary for a governmental accounting and registration of scientific and technical results created at the expense of the Federal budget were developed.

In addition, it is planned to elaborate a number of measures to be implemented by the Government in order to ensure effective exploitation of the intellectual property objects and results of intellectual activities, to improve the legal and normative basis for the commercialization of research results and projects financed with the involvement of the Federal budget and to develop a system of economic incentives for the commercialization thereof. There are also plans to prepare and submit legislative proposals aimed at the expansion of the rights of patent owners and reducing the level of unfair competition in the scientific and technical sphere.

Within the performance of the tasks entrusted to it, the Federal Service makes a sizable contribution to the revenue part of the State budget. The incomes which were received from the payments of patent and registration fees during 2004 and transferred to the State budget totaled to 1123,4 million Roubles; this amount exceeded, by 380,0 million Roubles, the expenditures of the Federal budget allocated for the whole complex of functional works carried out by Rospatent, the said surplus was indicative of the efficiency of the use the budget means.

In general, the activities of Rospatent in 2004 were accomplished by achieving tangible results described in the Report, which follows below. I express my sincere gratitude to all colleagues who participated conscientiously in the work done and contributed to the solution of the tasks.

Director General Federal Service for Intellectual property Patents and Trademarks B.P. Simonov

 

Legal Protection of Intellectual Property Rights as an Indispensable Condition for the Establishment of Intellectual Property Market

1.1 Legal Protection of Inventions and Utility Models

As in the previous years the examination of applications for inventions in 2004 was carried out in accordance with the Patent Law of the Russian Federation in two stages: formal examination and examination as to substance.



On the stage of formal examination much attention was paid to elaboration of the norms aimed at liberalizing the application filing procedure for a better satisfaction of applicant's needs, in particular, relating to the establishing of the filing date in cases where some parts of the application were missing (e.g. claims, translation of application into Russian).

A complex of works was undertaken to streamline the activities of the newly established Utility Models Division and to improve a technological support of the examination process for utility models applications.

The conducted re-distribution of examiner's staff between branch divisions allowed to increase the number of applications examined during the period not exceeding 12 months, especially with regard to the applications filed by Russian applicants.

For further improving the performance of examining divisions three specialized departments were established:

Chemistry Department

  • Organic Compounds Engineering Division,
  • Food Industry and Biotechnology Division,
  • Medicine and Medical Engineering Division,
  • Medicinal and Inorganic Chemistry Division.

Physics Department

  • Power Engineering Division,
  • Electro and Radio Engineering Division,
  • Instrument Engineering Division, and
  • Division for the Registration of Computer Programs, Databases and Topographies of Integrated Circuit.

Mechanics Department

  • Metallurgy and Mechanical Engineering Division,
  • Mining and Construction Division,
  • Transportation Means Department,
  • Light Industry and Agriculture Department.

The establishment of these Departments covering subject-related fields and similar objects of examination was intended to provide a further improvement in quality of the applications being examined by applying an uniform approach in respect of official actions taken by examiners, developing appropriate methodology and increasing control over the examiner's work at all levels.

Works on the improvement of examining practice for international applications continued. In 2004 for streamlining the stage of formal examination a new IMPACT Communication System developed by WIPO was introduced which facilitated the creation of the files of international applications which entered national phase in the Russian Federation. It allowed to completely waive the receipt of PCT related documents from International Bureau in paper form (copies of priority documents, international preliminary examination reports, certain forms relating to international application status etc.), to reduce labor expenditure required for the creation of the international applications files and to promptly provide examiners of the branch divisions with information which was previously inaccessible


As a result, a number of norms were introduced which allowed the implementation of some new procedures during the examination, in respect of:

  • the withdrawal of the earlier application upon filing by the same applicant an application claiming the priority of an invention, utility model of the earlier application and notification of the applicant;
  • the peculiarities of examination of the applications for identical inventions, utility models with the same priority date filed by different applicants or by one and the same applicant;
  • two applications for identical inventions, utility models with the same priority date filed by one and the same applicant in cases where a patent was granted on the basis of one of the applications for identical inventions or utility models;
  • granting a patent for identical invention or identical utility model on the basis of only one of these applications;
  • filing an appeal against the decision to consider application withdrawn;
  • legal protection of inventions and utility models;
  • extending and restoration of the terms within which a request for the substantive examination should be filed.


In the year under review a complex of works were carried out which were aimed
at a further transition to paperless technology

A procedure was developed and introduced which enabled to prepare annexes to granted patents for inventions and utility models and to generate information about the changes made in the patents in electronic format and to use it also for the preparation of annexes and publication of information about the changes made in the patents and in the State Registers of inventions and utility models of the Russian Federation.

In the year under review a complex of works were carried out which were aimed at a further transition to paperless technology. A procedure for preparation and transfer of information on applications for inventions to the publication stage was worked out, which relieved the examining and research divisions from the works not directly related with the examination of applications, namely preparation and transfer of the paper documents intended for publication of the information on applications for inventions.

Тable 1.1.1

INVENTIONS: Dynamics of Filings for Patents of the Russian Federation

Items

2000

2001

2002

2003

2004

2004 vs. 2003, (%)

Filed with Rospatent, Including:

28688

29989

29225

30651

30192

98,50

by Russian Applicants

23377

24777

23712

24969

22985

92,05

by Foreign Applicants

5311

5212

5513

5682

7207

126,84

 

Russian Applicants
Foreign Applicants
Тable 1.1.2

INVENTIONS: Dynamics of Granting of Patents of the Russian Federation

Items

2000

2001

2002

2003

2004

2004 vs. 2003, (%)

Patents Granted Total, Including:

17592

16292

18114

24726

23191

93,79

By Russian Applicants

14444

13779

15140

20621

19123

92,74

By Foreign Applicants

3148

2513

2974

4105

4068

99,10

 

Russian Applicants
Foreign Applicants

Тable 1.1.3

INVENTIONS: Number of Valid Patents of the Russian Federation as of December 31, 2004

Valid as of December 31, 2003

106717

Patents for Inventions Issued in 2004 Granted

23191

Ceased to be Valid in 2004

21187

Valid as of December 31, 2004

108721

Тable 1.1.4

UTILITY MODELS: Filings for Patents of the Russian Federation

Items

2000

2001

2002

2003

2004

2004 vs. 2003, (%)

Filed with Rospatent, Including:

4631

6029

6696

7622

8948

117,40

By Russian Applicants

4549

5863

6511

7400

8648

116,86

By Foreign Applicants

82

166

185

222

300

135,14


Тable 1.1.5

UTILITY MODELS: Valid Patents (Certificates) of the Russian Federation as of December, 31, 2004

Valid as of December 31, 2003

24103

Certificates for Utility Models Granted in 2004

8503

Ceased to be Valid in 2004

3415

Valid as of December 31, 2004

29191


Major indicators of filing of applications and issuing of titles of protection for inventions and utility models are shown in statistical tables and in Annex 2.

1.2 Legal Protection of Industrial Designs

The year 2004 was marked by a continued growth in the number of filed applications for the grant of patents for industrial designs, this number amounted to 111 per cent as compared with 2003. This situation was equally true in respect of applications filed both by Russian and foreign applicants.


A period for carrying out the examination averaged 11 months. Beginning from 2004 the formal examination of the applications was carried out by the Industrial Designs division itself.

In 2004 an automated system for preparing Official Actions with regard to applications for industrial designs was brought into operation. All Official Actions are prepared and transferred to publication in electronic format. A new layout form of the patent for industrial designs comprising an annex of essential features was introduced, which would facilitate the evidence in case of its infringement.

Dynamics of filing of applications and issuing of Patents of the Russian Federation for industrial designs are summarized in Table 1.2, other statistics may be found in Annex 2.


Table 1.2

INDUSTRIAL DESIGNS: Dynamics of Filings and Issue of the Russian Federation Patents

Items

2000

2001

2002

2003

2004

2004 vs. 2003, (%)

Industrial Design Filing, total, Including:

2290

2544

2344

3104

3453

111,24

By Russian Applicants

1918

2106

1799

2298

2321

101,00

By Foreign Applicants

372

438

545

806

1132

140,45

Industrial Design Patent Granted

1626

1507

1920

2153

2229

103,53

Valid Industrial Design Patent

8573

9007

10686

12764

11542

90,43

1.3 Legal Protection of Trademarks and Service Marks

In the year under review the works were continued on providing a technological support of trademark examination and registration procedures established by the amended trademark legislation


Procedures providing for the improvements in the processing of the applications for the trademark registration were introduced. A procedure for making changes in the application documents was implemented which provided a reduction in material expenses and labor costs based on replacement of complete corrected Official Action by sending to the applicant the corresponding substitute sheets. This procedure also regulates the insertion of changes into the documents of the application after a decision on refusal to register a trademark has been sent to the applicant. The time-limits for issuing the certificate and publication of data concerning the trademark registration were reduced thanks to the implementation of a new procedure which provided for sending to the applicant an additional notification on the need for the payment of a registration fee and terms of payment. A special procedure of issuing a trademark certificate duplicate was developed, which allowed to reduce labor expenditure thanks to transferring and using the required information in electronic format for print-out of a duplicate.

Dynamics of filing applications for the registration of trademarks and service marks are summarized in Table 1.3.1 and 1.3.2. Other statistics may be found in Annex 2.


Тable 1.3.1

TRADEMARKS AND SERVICE MARKS: Dynamics of Filings

Items

2000

2001

2002

2003

2004

2004 vs. 2003, (%)

Total Number of Applications Filed, Including:

42809

53124

43258

34954

40877

116,95

By Russian Applicants

30338

39801

29279

20644

23779

115,19

By Foreign Applicants, Including:

12471

13323

13979

14310

17098

119,48

Under the Madrid Agreement

8043

8815

8088

8884

10210

114,93

 

Russian Applicants
Foreign Applicants
Under the Madrid Agreement (From the Number of Foreign Applicants)
Тable 1.3.2

TRADEMARKS AND SERVICE MARKS: Dynamics of Registrations

Items

2000

2001

2002

2003

2004

Trademarks and Service Marks Registered, Including:

21725

16920

34818

33511

27540

For Russian Applicants

11421

7657

21776

22043

15257

For Foreign Applicants

10304

9263

13042

11468

12283

Including Under the Madrid Agreement

6667

7558

8598

6199

7765

Renewals of Registrations, Including:

2012

1662

4269

3513

3630

For Russian Applicants

712

667

1946

1543

1552

For Foreign Applicants

1300

995

2323

1970

2078

Registrations Valid By the End of the Year*

130674

119283

145470

157965

170570


* International applications under the Madrid Agreement not included

1.4 Legal Protection of Appellations of Origin

In 2004 the works were in progress to provide a technological support for the procedure of the registration of appellations of origin established by the amended legislation relating to appellations of origin.

During 2004 works went on to provide technological support of the trademarks examination and registration process

A new procedure for making changes in the application documents was implemented. As in the case with the trademarks, according to this new procedure substitute sheets are sent to the applicant instead of a complete corrected Official Action. (Also, changes made in the application documents after sending to the applicant a decision on refusal to register an appellation of origin are subject to regulations.) The procedure of issuing of a duplicate of appellation of origin certificate is consistent with the similar procedure for issuing of trademark certificate duplicate. The procedure also implements the transfer and use of information in electronic format for duplicate publication.

Statistical data, characterizing dynamics of filing applications for the registration of appellations of origin are summarized in table 1.4.


Тable 1.4

APPELLATIONS OF ORIGIN: Dynamics of Filings and Registrations in the Russian Federation

Items

2000

2001

2002

2003

2004

Total Quantity for Registration and Granting of the Right to Use, Filed, Including:

55

51

32

62

58

From Russian Applicants

55

50

31

60

58

From Foreign Applicants

1

1

2

Appellations of Origin Registered including:

2

1

10

15

6

From Russian Applicants

2

1

10

15

6

From Foreign Applicants

1.5 Registration of Contracts for the Use of Inventions, Utility Models, Industrial Designs

A new procedure for trademark assignment contracts and license contracts registration was developed as a part of a single procedure covering all intellectual property (IP) titles. This procedure provides for an automated assignment of a current incoming number to the filed documents for all IP titles whereas it is carried out during the preparation of a notification of the receipt of the documents accompanied by a scanned first page of the request for contract registration. At the registration of a contract the latter is automatically assigned the registration number from the common numerical list for all IP titles. Such a contract registration system allows to reduce the time-limits of consideration of the requests for contracts and simplifies the control over the documents flow.

Of special importance is the information about the number of registered contracts for the assignment or transfer of rights for the industrial property titles and grant of permission to use. (see Table 1.5.1).


Table 1.5.1

Registration of License Contracts and Patent Assignment Contracts

Items

2000

2001

2002

2003

2004

Patent Assignment Contracts

1130

1131

1194

1484

1892

Exclusive License Contracts

179

201

184

208

162

Non­exclusive License Contracts

805

690

625

581

495

Total Number of Contracts Registered

2114

2022

2003

2273

2549

Registered Requests to Grant an Open License

89

120

121

169

75

Published Requests to Grant an Open License

146

79

111

158

64


A total number of contracts registered in 2004 made up a 12 per cent increase as compared to the year 2003, thus totaling 2549, which exceeds a similar indicator of all previous years. A substantial growth of this indicator is mostly remarkable against a moderately negative dynamics during 2001-2002.

The year 2004 was characterized by a continued tendency (started in 2000) towards a growth in the number of patent assignment contracts. A proportion of patent assignment contracts in the total volume of those registered amounted to as much as 74 per cent. The number of patent assignment contracts grew by 27 per cent as compared with the previous year and amounted to as much as 1892, leading to a substantial growth in the total volume of registered contracts.



At the State Registry Division

The overall number of license contracts declined insufficiently in comparison with the previous year, totaling to 657. In so doing, the number of nonexclusive license contracts was 15 per cent less than in the year 2003 and accounted for 495. A proportion of nonexclusive license contracts in the total volume accounted for 19 per cent. The number of exclusive license contracts dropped also by 22 per cent compared with 2003 and amounted to 162. A proportion of such contracts in the total volume of those registered amounted to 6,4 per cent.

In 2004, the total number of industrial property objects which received protection on a license basis made up a 9 per cent increase as compared with the previous year and amounted to 2561, including 1984 patents for inventions, 196 patents for industrial designs and 381 utility model patents (certificates).

In the year under review there was a growing demand in inventions related to metallurgy, electronics, light and food-processing industries, power engineering and electrical engineering. A slight but noticeable decrease was observed in such fields of technology as mechanical engineering, construction engineering, construction materials, chemistry and petroleum chemistry (table 1.5.2).


Table 1.5.2

Distribution of Registration Contracts by Fields of Technology

Fields of Technology

Proportion, percent

2000

2001

2002

2003

2004

Light and Food­Processing Industries

15,3

13,3

13,3

15,9

18,0

Mechanical Engineering, Machine­Tool Industries, Tool Production

16,3

15,4

16,1

19,3

16,1

Medicine

12,49

14,2

14,4

16,4

10,8

Power Engineering, Electric al Engineering

7,1

5,8

7,1

5,6

10,4

Chemistry, Petroleum Chemistry

9,6

13,4

9,0

13,0

9,8

Electronics, Computer Sciences, Instrument Making

3,7

5,1

7,3

6,7

8,9

Metallurgy

4,0

3,1

4,3

3,6

6,2

Oil and Gas Production

10,6

6,5

4,6

5,4

5,4

Construction Engineering, and Construction Materials

4,2

5,7

4,1

5,5

4,1

Others

16,7

17,5

19,8

8,6

10,2


A proportion of contracts with the involvement of natural persons as transferors increased by 9,3 per cent in comparison with the previous year and as transferees — by 6,3 per cent, which was indicative of growing activities of natural persons both in the acquisition and transfer of industrial property rights (data are summarized in Table 1.5.3).


Table 1.5.3

Activity of Parties to Registered Contracts

Categories of Economic Entities

Proportion of the Total Number of Contracts, per cent

Transferor

Transferee

2000

2001

2002

2003

2004

2000

2001

2002

2003

2004

Natural Persons

34

38

34,5

29,3

38,6

10

13

12,5

10,0

16,3

State Enterprises, R&D Institutions, Universities, Design Offices

11

8

8,8

8,2

8,4

8

7

7

4, 8

3,3

Non­governmental Organizations, Including:

55

54

56,7

62,5

38,6

82

80

80,5

85,2

65,8

Joint­ventures

0,1

0,2

0,1

Foreign Companies

7,4

8,7

9,9

11,6

10,1

9 ,1

11,7

11,5

12,9

11,4


A tendency for a declining proportion of contracts in which the State structures: enterprises, research institutes, design offices, institutes of higher education, acted as transferees continued to persist. A proportion of contracts with their involvement in comparison with the previous year decreased by 1,5 per cent.

In 2004 natural persons acted as transferors in contracts on 997 industrial property objects and as transferees — on 430 objects, legal persons acted as transferors — on 1505 objects and as transferees — on 2098 objects.

1.6 Registration of Assignment Contracts and License Contracts on the Right to Use Trademarks and Service Marks

Statistics of the year 2004 reveal the data showing the number of registered contracts and the total number of trademarks in respect of which the owners conceded the exclusive right or transferred the right to use their trademark.

Data on the number of trademarks in respect of which trademark assignment contracts and license contracts were registered in 2000-2004 are given in Table 1.6.1.


Table 1.6.1

Data on the Number of Trademarks in Respect of Which Trademark Assignment Contracts and License Contracts on Grant of Rights to Use Trademark Were Registered

Type of contract

2000

2001

2002

2003

2004

Trademark Assignment Contract, Including:

3175

2682

4581

4155

3922

From Russian Right Holders

2485

2207

3381

3104

3002

From Foreign Right Holders

690

475

1200

1051

920

License Contracts, Including:

2799

2773

3748

4101

4395

From Russian Right Holders

2216

2246

2826

3024

2875

From Foreign Right Holders

583

527

922

1077

1520


Comparative data on the Nationality of the parties to contracts registered in 2001-2004 (i.e. Russian and/or foreign persons) are shown in Table 1.6.2.


Table 1.6.2

Comparative Data on the Belonging of Parties to Contracts to the Russian and Foreign Persons

Nationality of the Parties to Contract

Registration by Years

Trademark Assignment Contract

License Contracts

2001

2002

2003

2004

2001

2002

2003

2004

The Parties are Russian Persons

1554

2971

2235

2101

1551

2291

1814

1725

The Parties are Foreign Persons

286

878

788

690

69

278

274

386

Transferor is a Russian Person, Transferee is a Foreign Person

87

410

869

901

32

535

1210

1150

Transferor is a Foreign Person, Transferee is a Russian Person

48

322

263

230

140

644

803

1134


Comparative data on the number of registered contracts and that of the trademarks in respect of which the contracts were registered are tabulated in Table 1.6.3.


Table 1.6.3

Comparative Data on the Number of Registered Contracts And Number of Trademarks In Respect of Which the Contracts Were Registered

Type of Contract

2002

2003

2004

Contracts

Trademarks

Contracts

Trademarks

Contracts

Trademarks

Trademark Assignment Contract, Including:

2451

4581

2670

4155

2394

3922

From Russian Right Holders

1913

3381

2259

3104

1960

3002

From Foreign Right Holders

538

1200

411

1051

434

920

License Contracts Including:

1962

3748

2029

4101

2426

4395

From Russian Right Holders

1743

2826

1763

3024

1915

2875

From Foreign Right Holders

219

922

266

1077

511

1520


As follows from Table 1.6.3 above, in the year under review a sum total of trademarks in respect of which assignment contracts or license contracts were registered, remained practically at the same level as in the year 2003.

In 2004, there were registered 2394 trademark assignment contracts on the basis of which the exclusive right was transferred for 3922 trademarks; out of this number 3002 trademarks, or 76,5 per cent, belonged to the Russian owners and 920 trademarks, or 23,5 per cent, belonged to foreign right holders.

In 2004, license contracts (totaling 2426 contracts) were registered with respect to 4395 trademarks of which 2875 trademarks, or 65,4 per cent, belonged to the Russian owners and 1520 trademarks, or 34,6 per cent, belonged to foreign right holders.

In the year under review, there was a trend toward the increase in the number of the trademarks in respect of which the right holders granted a permission to use their trademarks (4395 or 52,8 per cent of the total number of trademarks) as compared with the number of assigned trademarks (3922 or 47,2 per cent of the total number of trademarks). Comparison with similar data for the year 2003 (4101 or 49,7 per cent and 4155 or 50,3 per cent, respectively) leads to the conclusion that a license, rather than a trademark assignment, continues to be a more attractive form of exclusive rights administration for the right holders of trademarks. Besides, for the first time the number of license contracts and trademarks in respect of which these contracts were registered exceeded the number of assignment contracts and assigned trademarks.


Activities of the Russian right holders in the sphere of trademark contract registration slightly decreased. As follows from Table 1.6.3, with a steadily high proportion of trademarks belonging to the Russian persons in respect of which the contracts were registered (71,6 per cent versus 74,2 per cent in 2003), the number of registered contracts in respect of trademarks of the Russian right holders slightly decreased and accounted for 80,4 per cent of the total number of contracts registered in 2004 (versus 85,6 per cent in 2003).

While analyzing data on the ratio of the number of registered contracts and that of trademarks involved in contracts, one can note that in the year 2004 the ratio of the number of registered contracts to that of trademarks remained at the level of 2003 and accounted for 1:1,6 (in relation to assignment contracts) and 1:1,8 (in relation to license contracts).

1.7 Registration of Computer Programs, Databases and Topographies of Integrated Circuits

In 2004 there was a certain stabilization of the number of applications filed for registration of computer programs, databases and topographies of integrated circuits at a level of 2003 (table 1.7.1).


Table 1.7.1

Data on the Registration of Computer Programs, Databases, Topographies of Integrated Circuits (2000–2004)

Years

Computer Programs

Databases

Topographies of Integrated Circuits

Total per Year

2000

1388

107

5

1500

2001

1830

199

6

2035

2002

2105

209

25

2339

2003

2748

270

50

3068

2004

2759

283

39

3081

Total for 5 years

10830

1068

125

12023


For the first time there was no increase in the number of registered objects as compared with the previous year. To some extent it is indicative of reaching an optimal level of interest shown by patent holders in the registration of programs, databases and topographies of integrated circuits. The amount of the State fee introduced from 1 st January 2005 for legal acts related with the registration of computer programs, databases and topographies of integrated circuits, was two times less than the size of registration fees, and this fact can become a further motivation of increase in the number of the objects being registered.

The deletion from article 13, paragraph 5, Law of the Russian Federation of September 23, 1992, No. 3523-I “On the Legal Protection of Computer Programs and Databases” (Law of the Russian Federation of December 24, 2002, No. 177-FZ “On Introduction of Changes and Amendments to the Law of the Russian Federation “On the Legal Protection of Computer Programs and Databases”), of the requirement relating to compulsory registration of the contracts on the full transfer of all economic rights to registered computer programs and databases undoubtedly affected the number of filings for registration (table 1.7.2).


Table 1.7.2

Registered Contracts

Year

Contracts f or the Complete Transfer of Exclusive Rights (CCT) (Including Registered Objects)

Contracts f or the PartialTransfer of Exclusive Rights (CPT)

Total Per Year

2000

82 (70)

53

135

2001

60 (56)

46

106

2002

112 (110)

45

157

2003

68 (57)

39

107

2004

42 (41)

17

59

Total for 5 years

364 (334)

200

564


Contracts for the Complete Transfer of Exclusive Rights
Contracts for the PartialTransfer of Exclusive Rights

It should be noted that in 2004 the number of applications filed from 16 subject entities of the Russian Federation was several times more than in 2003, inter alia, from the Moscow Region — 150 and 91 applications respectively; from Krasnodar Territory — 102 and 34; from Tyumen Region – 99 and 40; from Saratov Region — 67 and 35; from Tatarstan Republic — 47 and 18. For the first time the applications were received from Taimyr Autonomous Area, Sakhalin Region and Karachayevo-Cherkess Republic.

Data on applications for the registration filed from the Federal Districts of the Russian Federation are given in Annex 2.

1.8 Examination of Disputes Related with the Legal Protection of Intellectual Property Rights

As in 2003, a major portion of disputes associated with the legal protection of industrial property rights occurred in respect of trademarks and accounted for about 80,7 per cent of the total number of objections and appeals received by the Chamber of Patent Disputes.

The overall picture of the 2003 and 2004 receipts according to the types of industrial property rights is shown in Table 1.8.1.


Table 1.8.1

Comparative Data on Receipt of Objections and Appeals with Respect to Different Industrial Property Titles

Type of Statement

2003

2004

Number

%

Number

%

Inventions

406

12,4

258

12,80

Utillity Models

58

1,8

94

4,65

Industrial Designs

35

1,1

33

1,60

Trademarks

2756

84,2

1634

80,70

Appellations of Origin

7

0,2

4

0,20

Comparative Data on Consideration of Statements Associated with Trademarks According to Types of Statements

10

0,3

1

0,05

Total:

3272

100

2024

100


On the basis of the examination of objections and appeals in 2004, 2050 cases were decided, affirmed and dispatched, which was about 2,5 times more than in the previous year. Such a steep growth could be explained by the fact that the Chamber of Patent Disputes started its activities in the mid-2003.

On the basis of the examination of objections and appeals in 2004, 2050 cases were decided by the Chamber of Patent Disputes

166 cases were withdrawn at the stage of their consideration. In addition, 383 cases filed were not accepted for examination due to of non-compliance with the requirements for filing objections and appeals, as provided for by “Rules for filing statements and appeals” after a formal consideration thereof at the Chamber of Patent Disputes. For the most part, a rejection to accept cases for consideration was due to the absence or incorrect presentation of a document confirming the payment of the prescribed fee for consideration of objection or appeals and due to filing petitions for objections and appeals in contravention of prescribed terms.

Consolidated data on the receipt of objections and statements and the number of decisions made in 2004 according to the types of objections and appeals are shown in table 1.8.2.


Table 1.8.2

Comparative Data on the Receipt of Objections and Appeals and the Number of Decisions Made by the Chamber of Patent Disputes

Types of Receipts

2003

2004

Received

Decisions Made

Received

Decisions Made

Number

Per Cent

Number

Per Cent

Number

Per Cent

Number

Per Cent

Objections Against Decisions of the Examiner

1495

45,7

393

50,4

636

31,4

943

46,0

Objections Against the Grant of the Legal Protection

722

22,1

110

14,1

620

30,6

461

22,5

Petitions of Appeal

1055

32,2

277

35,5

768

38

646

31,5

Total

3272

100

780

100

2024

100

2050

100


Received
Decisions Made

As seen from Table about 50,4 per cent of the total number of cases were objections against decisions of the Examiner, i.e., prior to the grant of the legal protection. This was 10 per cent more than in 2003; 14,1 percent of cases accounted for objections against protection already granted, i.e. was 8 per cent less than in 2003; 35,5 per cent were petitions of appeal to terminate the legal protection of and to recognize a mark as a well-known one, i.e. was 3,3 per cent more than in 2003.

Table 1.8.3 demonstrates the distribution of decisions made by the Chamber of Patent Disputes with respect to different industrial property titles. It follows from the Table that the number of decisions made in 2004 with respect to trademarks exceeds the number of decisions made with respect to other industrial property titles by more than 6,5 times.


Table 1.8.3

Comparative Data on the Decisions Made by the Chamber of Patent Disputes with Respect to Different Industrial Property Titles


  Decisions of the Chamber of Patent Disputes
  Inventions   Utility
 Models
  Industrial
   Designs
   Trademarks       Appellations
         of Origin
  Assignment
       of  Appellations
    of Origin
2003  2003
 2004 2003
2004 2003
2004   2003
  2004    2003
  2004      2003
  2004
On Objections against Examiner's Decision    93
 119    1
   3    6
   2    293
  817      —
     2       —
    —
On Objections against the Grant of the Legal Protection    29
  74   15
  55    7
  18     59
  312      —
     1       —
     1
On Petions    —
   —   —
  —   —
  —    277
  646      —
    —       —
    —
Total   122
 193   16
  58   13
  20    629
 1775      —
     3       —
     1

Table 1.8.4 shows the results of the examination of objections related to different industrial property titles, from the table it evident that more than 58,2 per cent of objections considered in 2004 were affirmed and 41,8 per cent denied.


Table 1.8.4

Comparative Data on the Results of Examination of Objections

  Results of Examination
Total
Industrial Property Titles
Inventions
Utility Models
Industrial Designs
Trademarks
Appellations of Origin
Assignment of Appellations of Origi
  2003
  2004
  2003
  2004
  2003
  2004
  2003
  2004
  2003
  2004
  2003
  2004
  2003
  2004
            Objection Affirmed    279
   817
    29
    74
     9
   24
     8
     7
   233
   712
    —     —     —     —

Objection Denied

   224
   587
    93
   119
     7
   34
     5
    13
   119
   417
    —      3
    —      1
            Total    503
  1404
   122
   193
    16
   58
    13
    20
   352
  1129
    —      3
    —      1

A structure of decisions regarding various types of objections is shown in Table 1.8.5. The table shows that as a result of consideration of objections against Examiner's decision in more than 30 per cent cases the decisions were revoked.


Table 1.8.5

Comparative Data on the Types of Decisions taken and dispatched as a Result of Examination of Objection

Type of Decision

2003

2004

Number

Per cent

Number

Per cent

Decision of the Examiner

Kept in Force

177

35,2

327

23,3

Changed

73

14,5

166

11,8

Revoked

143

28,4

443

31,6

Title of Protection

Invalidated In Full

40

8

111

7,9

Invalidated in Part

21

4,2

98

7

Kept in Force

43

8,5

219

15,6

Proceedings Closed

6

1,2

40

2,8

Total:

503

100

1404

100


As a result of the examination of objections against the termination of legal protection and of appeals on early termination of legal protection of trademarks, legal protection was held to be valid in 15,6 per cent of the cases decided, which was 7 per cent more than in 2003.

Appeals on early termination of legal protection of trademarks because of their non-use constituted a major part of cases received and considered by the Chamber of Patent Disputes. Relevant data are tabulated in Table 1.8.6.


Table 1.8.6

Comparative Data on the Examination of Appeals Related with Trademarks According to Types of Appeals

Type of Statement

Type of Decision

2003

2004

Number

Per cent

Number

Per cent

On non­use

Satisfied in Part

73

26,4

217

33,6

Satisfied in Full

165

59,6

331

51,2

Dismissed

26

9,4

43

6,7

Proceedings Closed

13

4,6

36

5,6

On notoriety (well­known marks)

Satisfied

19

2,9

Dismissed

Total

277

100

646

100


As a result of consideration of appeals on the termination of legal protection of trademarks because of their non-use 548 petitions were satisfied in full or in part, 43 were dismissed and proceedings for 36 cases were closed.

Data on decisions made by an Arbitration Court and by courts of general jurisdiction concerning the cases on revocation of the decisions made by the Chamber of Patent Disputes are summarized in Table 1.8.7. As seen from the Table, in 176 cases the courts confirmed the decisions of the Chamber of Patent Disputes.


Table 1.8.7

The Results of Considerations of Arbitration Court and Courts of General Jurisdiction Proceedings of Objections Against the Decisions of the Chamber of Patent Disputes in 2004

Industrial Property Titles

Types of Court's Decision

Total

Arbitration Court

Court of General Jurisdiction

216

Dismissed

Re­examination

Affirned

Dismissed

Re­examination

Affirned

Inventions

15

1

12

2

Trademarks

131

6

27

1

Utility Models

1

1

Utility Models

7

3

4

Appellations of Origin

5


It should be noted that in the 4-th quarter of 2004 a special procedure was introduced which provided for dispatching notifications and documents relating to objections and appeals to the parties involved into disputes by the use of advice-of-receipt post. The said procedure allowed to provide for a more complete realization of enforcement rights for the right holders of industrial property titles, reduced the number of cases which required re-hearings in courts because of a undue notification of the parties.

Besides, the Chamber of Patent Disputes carried out the work on improvement of its structure, in particular, a Division for Legal Support was established which also represented the interests both of the Chamber of Patent Disputes and Rospatent in courts of various jurisdiction.

In the year under review the work was continued on elaborating proposals on the improvement of practice of consideration of objections and appeals filed. In particular, the proposals were prepared on introduction of amendments and additions to the Rules for filing objections and appeals and processing thereof at the Chamber of Patent Disputes.

For the purposes of informing the interested parties about the most urgent questions arising from dispute consideration in the field of legal protection of industrial property rights a preparatory work was carried out on planning of subject-related seminars, the corresponding curricula were developed.

The realization of the said program will start in 2005.

1.9 Rospatent Cooperation with Federal Executive Authorities

The Federal Service for Intellectual Property, Patents and Trademarks interacts and cooperates with federal legislative and executive authorities which deal with law enforcement functions in the sphere of civil commercialization of intellectual property rights.

In the year 2004 the Federal Service for Intellectual Property, Patents and Trademarks responded to various queries from the Internal Security Authorities (Ministry of Internal Affairs) and the Office of Public Prosecutor, judicial authorities, the Federal Anti-Trust Service, including its territorial offices, the Ministry of Justice of the Russian Federation, including departments of the Service of Bailiffs, the Federal Customs Service, including its regional departments and other state bodies.

The greatest number of queries were received from the Ministry of Internal Affaires (291, judicial authorities (250), the Ministry of Justice, including bailiffs (94), the Federal Anti-Trust Service and its territorial offices (68), State Trade Inspection (51).

1.10 Consideration of Queries and Requests Addressed by Natural Persons and Legal Entities

In 2004, Rospatent and its subordinate organizations received and considered 1702 queries and requests addressed by natural persons (969) and legal entities (733) to:

State power authorities

285

Federal executive authorities

37

Administration of Rospatent and subordinate organizations

1380


Geographically, the queries and requests originated from:


Regions of the Russian Federation

1588

CIS countries

65

Other countries

49


The amount of queries and requests from countries other than CIS remained the same as in the previous year, there was a slight increase in the amount of queries and requests from regions of the Russian Federation and a decrease in the amount of queries and requests from CIS-countries.

In comparison with the year of 2003 the number of queries and requests received from natural persons increased by 97 ( from 872 to 969).

The amount of queries and requests received from regions of the Russian Federation as distributed according to federal districts is given in Table 1.10.1

As compared with 2003 in the year under review there was redistribution in the amount of queries and requests from various districts of the Russian Federation. The amount of queries and requests from the Central District changed most of all (dropped by 5 per cent).

As to the types of queries and requests, they were distributed as follows:

  • requests and petitions — 1261 (65 per cent were satisfied), including:

668 from natural persons (61 per cent satisfied);

593 from legal entities (69 per cent satisfied);

  • complaints — 414 (of which 6 per cent were recognized as justified, reasons for complaints were associated with the procedure of the examination of applications for industrial property rights, as well as with the issue of protective titles);
  • proposals — 27 (not accepted since they were either implemented or were accepted earlier, or they were in conflict with the legislation or international norms in the field of industrial property, or they did not relate to the competence of Rospatent).

It should be noted that the ratio of the types of queries and requests remained the same as in the previous year (requests — 74,2 per cent, complaints — 24,3 per cent, proposals — 1,6 per cent). The proportion of satisfied requests increased (from 54 to 65 per cent) and the proportion of justified complaints remained at the same level.


Table 1.10.1

Federal District

Addresses From Federal District

Central

768

North­Western

202

Southern

199

Pryvolzhsky

168

Siberian

111

Urals

89

Far Eastern

51



Data on the amount of queries and requests received with Rospatent and its subordinate organizations for the period of 1999–2004 are given in Table 1.10.2.


Table 1.10.2

Types of Problems Raised in Queries and Requests

Amount of Queries and Requests

2000

2001

2002

2003

2004

Examination of Applications (Time­Limits, Procedure, Examination Results, Proceedings)

463

810

897

772

738

Inventive Activity

240

211

184

217

229

Protective Titles (Registration, Renewal and Restoration, Amendments, etc)

157

143

231

227

201

Payment of Patent Fees

197

195

286

201

177

Legal Issues

209

172

101

86

142

Patent Information Services

127

107

92

102

75

Registration of Discoveries

35

40

28

15

30

Contracts (Registration, Disputes Between the Parties)

38

42

54

31

25

Publication (Time­Limits, Errors)

30

20

9

15

9

Training, Enhancing of Professional Skills, Activities Related with Patent Attorneys, International Cooperation

35

28

3

6

7

Staff Matters and Activities of Patent Attorneys

4

Others

32

34

29

29

65

Total

1563

1802

1914

1701

1702


Every year the greatest amount of queries and requests is related with matters concerning the examination of applications for industrial property rights. In the period from 1999 to 2004 the proportion of queries and requests motivated by these matters remained at the same level (about 45 per cent). As in the previous years, about a half of queries and requests concerned the inventive activities, protective titles, payment of patent fees, patent information services and legal issues.

 



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