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Annual reports 2008 - Section 1

 



Section 1. Legal Protection of Intellectual Property Rights

1.1. Legal Protection of Innovations and Utility Models

On the 1st January 2008 Part IV of the Civil Code of the Russian Federation (hereinafter referred to as "the Code") has come into effect. The Code is aimed at the complete civil codification of the current IP legislation. Under the new legislation the work of the Office has required additional efforts of the expert staff to do their duties in all the areas of the Office’s competence.

On the first hand, it was conditioned that, while the Code entering into effect, a number of legal regulations has not been effected on the objective reasons. In particular, the administrative regulation on the implementation the function to accept the application for patents for invention, their registration, examination and issuing, in due course, the patents of the Russian Federation for inventions and the similar administrative regulation in respect to utility model. Thus, it was necessary to decide methodological tasks, to train the personnel, to organize roundtables, seminars for all the examiners’ staff to discuss the most complex questions. A number of clarifications, by-law documents and information letters were issued. As a result of a complex of measures aimed at implementation of the Code the necessary environment for a productive work of the expert staff was created under the codified legislation.

In absence of the afore said administrative regulations the actions as to filing, registering and examining the applications for patents for inventions or utility model have been taken in accordance with Part IV of the Civil Code, as well as in accordance with other legal instruments complying with the Code and previously registered by the Ministry of Justice of the Russian Federation.

In 2008 the scientific researches were made to fill up the legal gaps in order to ensure the work of experts while examining the applications for patents for inventions or utility models. The most important achievement of those researches in biotechnology was the list of collection-depositaries for implementation of the national procedures of patenting new species of microorganisms.

The R&D results and the proposals of normative and methodological character were discussed at the International science and practice conference “Practice of the Legal Protection of IPRs under Part IV of the Civil Code of the Russian Federation” held on October 8–9, 2008.

Despite of raising number of applications and corresponding increasing of plans on considerations of applications for innovations for 2000 as compared with 2007, the plan was fulfilled by the end of the year. In doing that the experts managed to schedule of consideration of applications within 12 months. The plan of consideration of utility models has been fulfilled at 107,15%. Thus, the quarter mailing of decisions on applications was kept during the year.

In the past year 600 information searches were made for the Patent office of Turkey, about 800 international searches and about 1000 — for the Eurasian Patent Office and CIS countries.

The results achieved confirmed that the structure of sector expert divisions with close competence of applications’ considerations for patents for inventions facilitated the decision of similar methodological problems in corresponding divisions (chemistry, physics and mechanics), as well as to uphold the quality of consideration of applications, despite of raising number thereof.

As in the previous years, a special attention was attached to the quality of the patents issued. Since 2006 the experts have had the opportunity to get consultations of the highly professional specialists, recommended by the Russian Academy of Science, on issues relating to technical aspects of the most complex applications for issuing patents for inventions. Such a practice, recognized as positive, was continued.

Moreover, a great importance was attached to the preparation of the young specialists of the expert divisions for the individual work. Special training and practical courses for young specialists were organized.

In 2008 the works, related to automation of the examination processes for innovation and utility models, facilitated the experts’ use of the new technology — working with electronic archive of application.

In 2008 the development of the search system «Patsearch» was accelerated. During the year the intensified work to download this system with the required volume of information, as well as training the experts with the skills to use this new search system.

The basic data of filing the applications and issuing patents for innovations and utility models are given in statistical Tables 1–16 in Annex 3.

Table 1.1.1
INVENTIONS: Filings for the Russian Patents

Indices

2004

2005

2006

2007

2008

2008 vs. 2007 (%)

Filed with Rospatent, TotalIncluding:

30192

32254

37691

39439

41849

106,11

by Russian Applicants

22985

23644

27884

27505

27712

100,75

by Foreign Applicants

7207

8610

9807

11934

14137

118,46

Considered at the Stage of Expertise and Decisions Made:

30715

30387

32416

35337

38021

107,60

Decisions on Granting, Including:

24489

24916

25382

28212

29903

105,99

российским заявителямto Russian Applicants

20333

20749

20323

22066

22668

102,73

to Foreign Applicants

4156

4167

5059

6146

7235

117,72

Decisions on Refusal, Including:

816

675

768

781

1230

157,49

to Russian Applicants

755

632

689

693

1078

155,56

to Foreign Applicants

61

43

79

88

152

172,73

Decisions on Withdrawal, Including:

5410

4796

6266

6344

6888

108,58

to Russian Applicants

3792

3512

4582

4712

4503

95,56

to Foreign Applicants

1618

1284

1684

1632

2385

146,14

 

Table 1.1.2
INVENTIONS: The Russian Patents Issued

Indices

2004

2005

2006

2007

2008

2008 vs. 2007 (%)

Patents Issued Total, Including:

23191

23390

23299

23028

28808

125,10

to Russian Applicants

19123

19447

19138

18431

22260

120,77

to Foreign Applicants

4068

3943

4161

4597

6548

142,44

 

Table 1.1.3
INVENTIONS: Number of Valid Russian Federation Patents as of December 31, 2008

Valid as of December 31, 2007

129910

Patents for Inventions Issued in 2008

28808

Ceased to be Valid in 2008 (upon expiry of the validity term and/or due to non-payment of the patent duty to support the validity)

11651

Valid as of December 31, 2008

147067

 

Table 1.1.4
UTILITY MODELS: Dynamics of Filings

Indices

2004

2005

2006

2007

2008

2008 vs. 2007 (%)

Filed with Rospatent, Total, Including:

8948

9473

9699

10075

10995

109,13

By Russian Applicants

8648

9082

9265

9588

10483

109,33

By Foreign Applicants

300

391

434

487

512

105,13

Considered at the Stage of Expertise and Decisions Made:

8502

8349

10362

10318

10715

103,85

Decisions on Granting, Including:

8205

7730

9614

9683

10000

103,27

By Russian Applicants

7943

7423

9213

9224

9555

103,59

By Foreign Applicants

262

307

401

459

445

96,95

Decisions on Refusal, Including:

10

12

12

16

25

156,25

By Russian Applicants

10

12

12

15

25

166,67

By Foreign Applicants

0

0

0

1

0

0

Decisions on Withdrawal, Including:

287

607

736

619

690

111,47

By Russian Applicants

281

589

689

591

648

109,65

By Foreign Applicants

6

18

47

28

42

150,00

 

Table 1.1.5
UTILITY MODELS: Dynamics of the Russian Patents Issued

Indices

2004

2005

2006

2007

2008

20087 vs. 2007 (%)

Patents Issued TotalIncluding:

8503

7242

9568

9757

9673

99,14

By Russian Applicants

8230

6958

9195

9311

9250

99,34

By Foreign Applicants

273

284

373

446

423

94,84

 

Table 1.1.6
UTILITY MODELS: Number of Valid Certificates of the Russian Federation as of December 31, 2008

Valid as of December 31, 2007

35082

Certificates for Utility Models Issued in 2008

9673

Ceased to be Valid in 2008(upon expiry of the validity term and/or due to non-payment of the patent duty to support the validity)

3663

Valid as of December 31, 2008

41092

 

1.2. The Legal Protection of Industrial Designs

The filing of applications for issuing patents for industrial designs has not increased and has been equal to 4711 (refer to Table 1.2.1.).

Table 1.2.1
INDUSTRIAL DESIGNS: Dynamics of Filings

Indices

2004

2005

2006

2007

2008

2008 vs. 2007 (%)

Filed with Rospatent, TotalIncluding:

3453

3917

4385

4823

4711

97,68

By Russian Applicants

2321

2516

2627

2742

2356

85,92

By Foreign Applicants

1132

1401

1758

2081

2355

113,17

Considered at the Stage of Expertise and Decisions Made:

2610

3082

4446

4377

5194

118,67

Decisions on Granting, Including:

2311

2579

3908

3636

4360

119,91

To Russian Applicants

1724

1726

2317

2142

2273

106,12

To Foreign Applicants

587

853

1591

1494

2087

139,69

Decisions on Refusal, Including:

121

81

81

110

179

162,73

To Russian Applicants

100

63

51

82

139

169,51

To Foreign Applicants

21

18

30

28

40

142,86

Decisions on Withdrawal, Including:

178

422

457

631

655

103,80

To Russian Applicants

156

315

384

513

495

96,49

To Foreign Applicants

22

107

73

118

160

135,59

The period of examination on substance of the applications for industrial designs in 2008 has been shortened and was equal to 8,9 months.

Table 1.2.2
INDUSTRIAL DESIGNS: Dynamics of Issuing Patents of the Russian Federation in the Following Years

Indices

2004

2005

2006

2007

2008

2008 vs. 2007 (%)

Patents Issued Total,Including:

2229

2469

2675

4020

3657

90,97

By Russian Applicants

1637

1630

1753

2298

2062

89,73

By Foreign Applicants

592

839

922

1722

1595

92,62

Table 1.2.3
INDUSTRIAL DESIGNS: The Quantity of Valid Patents of the Russian Federation as of 31.12.2008

Valid as of December 31, 2007

15729

Patents Issued in 2008

3657

Ceased to be Valid in 2008 (upon expiry of the validity term and/or due to non-payment of the patent duty to support the validity)

935

Valid as of December 31, 2008

18451

The examination of industrial designs has been conducted in accordance with the provisions of Part IV of the Code.

During the past year the practice of granting legal protection to industrial designs on the basis of the codified legislation has been formed. The examiners of the industrial designs division has been trained to fulfill their duties under the new by-law act, in particular the Administrative regulation of the Federal Service for Intellectual Property, Patents and Trademarks on the execution of state function of receipt of applications for industrial design patents, their registration, examination and issue of Russian Federation patents for industrial designs in due course, entered into force on December 26, 2008.

The new approaches have been made public for the interested persons while holding conferences, seminars and exhibitions. In November 2008 the study visit of the patent attorneys of the Russian Federation and other countries was held.

Since entrance into force of Part IV of the Code and forthcoming entering into force of the administrative regulation, in 2008 the development of methodological recommendations, devoted to the issues of check-up of patentability of industrial designs has been conducted. The corresponding draft has been prepared. The recommendations would enter into force by the end of the first quarter of 2009.

1.3. The Legal Protection of Trademarks and Service Marks

In 2008 the activity in the area of official registration and granting legal protection to trademarks was one of the priority tasks of Rospatent, what was reflected in the Complex Plan of Rospatent’s Development for the period up to 2010.

During this period the activity of Rospatent, including examination of applications for trademarks and service marks (hereinafter referred to as trademark), issuing certificates for trademarks, registration of contracts in this respect, has been conducted in accordance with Part IV of the Code.

The first results of this activity have been enlightened in the reports to the conference held within the margins of the XI Moscow international Saloon of  Industrial Property «Archimedes–2008» (April 2008), at the annual Science & Practice conference of Rospatent «Practice of the Legal Protection of IPRs under Part IV of the Civil Code of the Russian Federation » (October 2008), at the conference held within the framework of specialized exhibition «Trademarks and Industrial Design — 2008» held in December 2008, as well as while reporting to the conferences and seminars, organized in the Russian regions.

Under the modern circumstances of the economic development of Russia and raising interest of foreign producers in Russian market the quantity of the applications filed in 2008 was equal to 57112 what actually corresponds to 2007 level (57262). Some decrease has happened because of Russian applicants, in particular, in 2007 — 31502 and in 2008 — 30024. The number of applications filed by foreign applicants in 2008 was equal to 27088, this figure is more by 5% than in 2007 (25760).

The consideration of the big volume of applications and their registration became possible as a result of a complex of measures, aimed at diminishing of labor time spending through technological procedures, automation and modernization of examination processes and the registration of rights.

In doing that, the special attention was attached to raise quality of examination of application for trademarks. That was facilitated by the development and introduction of information technologies and program software to transfer to non-paper technology while making examination and interacting with the users.

In 2008 there was introduced the system of compiling the electronic file of application and synchronization with the effective systems of automation. The experimental electronic storage of legally meaningful documents has been developed; this storage was the basis for the Russian Official register of trademarks and service marks. The List of well-known marks of the Russian Federation was developed as well. Along with the said measures, the portal of publications designed to provide the users with the suitable form of access to all the information resources and services of Rospatent has been developed.

Besides that, in the past year the preparatory work for the complete transfer to electronic documentation exchange between FGU FIPS and WIPO has been continued (the first stage of this transfer has been realized since 01.09.2007). Such a transfer would allow reducing the timing to mail the documents.

Raising the quality of preparation of notifications in respect to full and clear formulations facilitated the reducing labor time spending and the prolonging applications’ processing due to secondary correspondence with the applicants.

In 2008 the goal of follow the procedures related to the legally meaningful actions set forth by virtue of Part IV of the Code was still actual. These time frames, including those related to processing in Rospatent and FGU FIPS t, were fixed in the administrative regulations.

The work to implement Part IV of the Code was embodied in legal acts drafted in 2008, as well as while introducing amendments in the effective documents, related, inter alia, to the processing in Rospatent and FGU FIPS.

In 2008 there was drafted (or being drafted) and approved a number of legal acts in respect to trademarks and aimed at facilitation of trademark registration and granting legal protection. The list of such documents includes: Manual on the use of the WHO database, containing data on International Nonproprietary  Names (INN) aimed at assisting while examining medicines and substances; drafts methodological recommendations in respect to check-up of the filed signs on similarity and confusing mix, classification of goods and services in relation of which the sign was filed, check-up of the signs filed for registration as trademarks on their similarity with the appellations of origin, implementation of Part IV of the Code related to letters of consent while examining the trademarks.

The cooperation of Rospatent with foreign offices, attendance of our specialists in WIPO events, such as the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, Madrid system on trademarks and Nice agreement on international classification of goods and services has made a positive influence on elaboration of the unique approached, embodied in the afore said documents, as well as in the enforcement practice in the area of trademarks. The dynamics of filing and consideration of applications for the official registration of trademarks (service marks) as well as the dynamics of registration of trademarks (service marks) are given in Tables 1.3.1 and 1.3.2.

Table 1.3.1
TRADEMARKS AND SERVICE MARKS: Dynamics of Filings and Consideration of Application for Registration of Trademarks and Service Marks of the Russian Federation

Indices

2004

2005

2006

2007

2008

2008 vs. 2007 (%)

Total Number of Applications for Trademark Registration Filed in the Russian Federation, Including:

40877

47087

52984

57262

57112

99,74

By Russian Applicants

23779

26460

29589

31502

30024

95,31

By Foreign Applicants, Including:

17098

20627

23395

25760

27088

105,16

Under the Madrid Agreement or Protocol

10210

12701

14567

15388

16738

108,77

Considered at the Stage of Expertise and Decisions Made:

34312

35254

40321

48186

50586

104,98

Decision on Granting

27548

29291

33197

39634

43002

108,50

Decision on Refusal

6092

5577

6805

8077

7333

90,79

Decision on Withdrawal

672

386

319

475

251

52,84

For the same period the positive dynamics was kept while registering trademarks — 36617 in 2008 году as compared to 30724 in 2007.

Table 1.3.2
TRADEMARKS AND SERVICE MARKS: Dynamics of Registration

Indices

2004

2005

2006

2007

2008

Trademarks and Service Marks Registered

27540

29447

29199

30724

36617

Including:For Russian Applicants

15257

14389

13694

14993

19895

For Foreign Applicants

12283

15058

15505

15731

16722

Including under the Madrid Agreement or Protocol

7765

10185

10240

9537

8518

Renewals of Registrations

3630

3475

4419

8015

6431

Including:For Russian Applicants

1552

1545

2243

4160

3550

For Foreign Applicants

2078

1930

2176

3855

2881

Registration Valid By the End of the Year

170570*

186352*

197055*

207562*

222208*

* Without regard for International applications filed under the Madrid Agreement

The legal provisions, related to well-known trademarks, set forth in Articles 1508 and 1509 of Part IV of the Code. The entirely new legislative provision is the provision of paragraph 1 of Article 1509 of the Code, it provides that the legal protection of well-known mark is to be granted upon the decision of Rospatent. Before entering into force of Part IV of the Code such a right was rested with the Chamber of Patent Disputes. To implement this provision Rospatent has adopted the Procedure on considering claims on recognition of trademark as well-known in the Russian Federation. This Procedure foresaw the establishment an expert commission to consider such claims, introduction of the list of Rospatent’s expert to be involved in this process, as well as the forms of correspondence to be used while making corresponding Rospatent’s decisions or communicating with the applicants. As per January 1, 2009 the List of well-known marks contained 73 trademarks. 66 trademarks continued to keep the status of well-known in the Russian Federation, 7 trademarks were recognized as well-known in 2008 upon Rospatent’s decision.

Table 1.3.3
Consideration of Claims on Recognition the Trademark or Sign, Used as Trademark, Well-Known in the Russian Federation

Type of Claim

2005

2006

2007

2008

On Recognition as Well-Known

Recognized

9

17

12

7

Not Recognized

3

7

6

4

1.4. Legal Protection of Appellations of Origin

In 2008 the examination of applications for registration and/or granting exclusive right for appellation of origin as well as issuing certificates on the exclusive right for appellation of origin were based on the provisions of Part IV of the Code.

In the reported period the quantity of applications filed for official registration of appellations of origin and granting the exclusive right for prior registered appellations of origin was equal to 35, i. e. 1,3% more as compared with 2007 (27). This figure includes 4 applications, filed by foreign applicants from Armenia, Germany, Italy and Ukraine.

Those filings were connected with the absence in Part IV of the Code of the provision effective in prior legislation and which reduced the opportunity for foreign applicants to file applications for registration of appellation of origin in the Russian Federation. The right to file the application was rested only with legal and physical persons of the countries granted such a right to Russian legal and physical persons.

In 2008 the work to raise public awareness of the importance of appellations of origin, the necessity of their legal protection and enforcement, including the participation of Russian regions, has been continued while reporting to conferences, seminars, roundtables devoted to IPRs held, in particular in Moscow, Nizhny Novgorod, Kazan, Vologda.

The said work was aimed at preservation of traditional productions, the necessity of additional incentives to develop them, including the attraction of appropriate investment that could be received from the accompanying appellations of origin of the traditional and unique goods produced in various Russian regions.

The dynamics of filing of applications and issuing certificates on the exclusive right for appellation of origin in the Russian Federation are given in Table 1.4.

Table 1.4
APPELATIONS OF ORIGIN: Dynamics of Filings in the Russian Federation

Indices

2004

2005

2006

2007

2008

Total Number of Applications for Registration and Granting of the Right to Use, Including:

58

28

41

27

35

From Russian Applicants

58

27

41

27

31

From Foreign Applicants

1

4

Certificates of the Exclusive Right to Appellation of Origin, Including:

6

23

21

25

14

From Russian Applicants

6

23

19

24

14

From Foreign Applicants

2

1

1.5. The Registration of Computer Programs, Databases and Topographies of Integrated Circuits and Contracts of the Use of these Objects

In respect to the legal protection for computer programs, databases and topographies of integrated circuits Part IV of the Code set forth a number of novelties, in particular the official registration was introduced instead of the official registration and obligatory registration of alignment of the exclusive right on the objects registered.

Table 1.5.1
Number of Registered Computer Programs, Databases, Topographies of Integrated Circuits in 2004-2008

Types of Objects

2004

2005

2006

2007

2008

Total

Computer Programs

2759

3282

4422

5308

6086

21857

Databases

283

327

389

426

441

1866

Topographies of Integrated Circuits

39

32

30

55

66

222

Total

3081

3641

4841

5789

6593

23945

The preparatory work allowed to make official registration starting from the first working day of 2008. Thus, on January 9, 2008 322 objects were registered. The new requirements of Part IV of the Code stimulated the increase of the number of contracts of alignment of the exclusive right from 94 to 213. In 2008 the State organizations have registered more than 2200 objects, non-state organizations have registered more than 2900 objects and physical persons have registered more than 1400 objects.

Table 1.5.2
Number of Registered Contracts for Computer Programs, Databases, Topographies of Integrated Circuits

Type of contract

2004

2005

2006

2007

2008

Total

Contracts for the Complete Transfer of Exclusive Rights (In of Registered Subject Matter)

42
(41)

61
(61)

41
(41)

94
(94)

213

451

Contracts for the Partial Transfer of Exclusive Rights

17

14

4

13

С 2008 г. не регистрируются

48

Total

59

75

45

107

213

499

Since Part IV of the Code has entered into force, the seminars on actual issues of legal protection of these IP objects for regional specialists were organized in Nizhny Novgorod, Yekaterinburg, Belgorod, Krasnodar, Kaluga, Moscow, Tyumen, Zelenograd and St.-Petersburg.

1.6. The Registration of Contracts in respect to Inventions, Utility Models and Industrial Designs

The consideration and registration of contracts on use of the excusive right to the IP results, including inventions, utility models and industrial designs, have been conducted in 2008 in accordance with the Procedure of registration of contracts on alignment of the exclusive right to the inventions, utility model, industrial design, trademark, service mark, registered topography of integrated circuits and the right to use thereof, the entire or partial alignment of the exclusive right for computer program, database, approved by Rospatent’s Ordinance № 64 of April 29, 2003 and registered by the Ministry of Justice on May 5, 2003, as not contradicting to Part IV of the Code.

In 2008 in respect to patented inventions, industrial designs and utility models Rospatent has registered 2744 contracts on alignment of the exclusive right to the said objects and granting the right to use them with respect to 4663 patents.

The Table 1.6.1 contains the data on dynamics of registered contracts for the period from 2004 up to 2008.

The comparative data on the quantity of registered contracts, including amending contracts and on termination of registered contracts, as well as on the quantity of inventions, utility models, industrial designs with respect to which the contracts have been registered is given in Table 1.6.4.

The comparative dynamic of the data on the quantity of the patents involved in contracts for the period from 2006 to 2008, indicated in Table 1.6.4, shows insignificant, but stable increase in quantity of the protective documents with respect to which the contracts have been registered.

The share of the contracts on alignment of the exclusive right for the patented object of industrial property in the total amount of registered contracts is equal to 55,5%, that is lower, than in 2007 (58,7%).

Despite of the decrease of the total amount of contracts registered in 2008 in respect to inventions,, utility models and industrial designs it should be noted the tendency towards increase of registered licensing contracts. As compared with 2007 the number of registered licensing contracts raised from 1178 up to 1220 in 2008. it should be noted as well, that the increase in number of registered contracts was connected with the increase in number of the contracts of non exclusive license (at 11,4% as compared with 2007). The share of contracts of non exclusive license in the total amount of licensing contracts registered in 2008 was equal to 82,4%.

In 2008 the right holders filed with Rospatent 92 claims to grant to any person the right to use invention, utility model or industrial design (open license). The data on open license in respect to 72 patents was published in the bulletin of Rospatent. It should be noted that in 2008 Rospatent received only one claim from the right holder to withdraw open license. Such a situation allows to presume that for certain number of the right holders, the majority of which are state enterprises, maintaining of patents in the form of open license is the most favorable.

The comparative data on the dynamics of filing the claims for open license and published data are given in Table 1.6.1.

Table 1.6.1
Dynamics of Registration of License Contracts and Patent Assignment Contracts

Indices

2004

2005

2006

2007

2008

Patent Assignment Contracts*

1892

1281

1451

1674

1524

Exclusive License Contracts

162

167

212

276

215

Non-Exclusive License Contracts

495

674

751

902

1005

Total Number of Contracts Registered

2549

2122

2414

2852

2744

Registered Requests to Grant a Free License

75

101

63

66

92

Published Requests to Grant a Free License

64

65

82

68

72

* Up to 2008 — Patent Transfer Contract

In 2008 there was an increase of demand of the registered IP objects (inventions, utility models, industrial designs) in oil extracting industry. At the same time the tendency for decrease of demand in chemistry and oil chemistry industries and non significant decrease in demand as compared with 2007 in energy sector was noted. The dynamics of registration of contracts in the area of technique is given in Table 1.6.2.

Table 1.6.2
Distribution of Registration Contracts by Fields of Technology

Fields of Technology

Contracts

2004

2005

2006

2007

2008

Light and Food-Processing Industries

459

105

160

211

186

Mechanical Engineering, Machine-Tool Industries, Tool Production

410

417

414

366

373

Medicine

276

249

295

120

140

Power Engineering, Electrical Engineering

265

223

220

390

364

Chemistry, Petroleum Chemistry

251

268

500

120

94

Electronics, Computer Sciences, Instrument Making

226

165

157

137

101

Metallurgy

158

69

181

245

186

Oil and Gas Industry

139

136

100

434

449

Construction Engineering and Construction Materials

104

108

160

423

266

Others

261

382

227

406

585

Total

2549

2122

2414

2852

2744

The share of contracts with participation of physical persons as both transferring and receiving party as compared with 2007 didn’t practically change. This fact shows the stabilization of the activity of physical persons in both transferring and receiving the rights for inventions, utility models and industrial designs. In respect to the activity of parties to the registered contracts as compared with 2007, 2008 year was characterized by the decrease of the activity of the state enterprises as transferring party (5%) and receiving party (29%) to the registered contracts and insignificant increase in activity of non state enterprises. Thus, as compared with 2007 the activity of non state enterprises as transferring party has raised by 4,3%  and as receiving party — by 2 %.

The dynamics of activity of the parties of registered contracts is given in Table 1.6.3.

Table 1.6.3
Activity of Parties to Registered Contracts

Categories of Economic Entities

Proportion of the Total Number of Contracts, per cent

Transferor

Transferee

2004

2005

2006

2007

2008

2004

2005

2006

2007

2008

Natural Persons

38,6

33,0

16,4

36,0

33,9

16,3

9,6

4,1

10,9

10,2

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

8,4

8,3

3,1

8,0

7,6

3,3

4,0

1,5

3,8

2,7

Non-Governmental Organizations, Including:

52,9

58,7

80,5

56,0

58,4

80,4

86,42

94,4

85,3

87

Joint-Ventures

0,2

 —

0,2

0,06

 —

Foreign Companies

10,1

11,8

14,0

9,8

10,9

11,4

12,6

11,7

11,0

12,1

Others

4,0

3,4

0,1

3,2

2,4

0,1

Therefore, despite of the total decrease of registered in 2008 contracts, the increase of the number of registered amendments, introduced in registered contracts on the use of exclusive right (259 amendments) as compared with 2007 (158 amendments) has been noted.

In 2008 73 terminations of the registered contracts have been noted as well. That is compared with 2007(80 terminations of contracts).

1.7. The Registration of Contracts in respect to Trademarks and Service Marks

The consideration and registration of contracts on the use of the excusive rights to the means of individualization, including trademarks, in 2008 have been made in accordance with Part IV of the Code and the Procedure of registration of contracts on alienation of the exclusive right to invention, utility model, industrial design, trademark, service mark, registered integrated circuit and the rights to use thereof, full or partial alienation of the excusive right to the computer program and database, approved by Rospatent’s Ordinance № 64 of April 29, 2003 and registered by the Ministry of Justice as non contradicting to Part IV of the Code.

Totally in 2008 there were registered 8437 contracts on the use of the exclusive right to trademarks, including the contracts on alienation of the exclusive right to trademarks and granting the rights to use them in respect to 15574 trademarks.

Table 1.7.1 contains the data on the number of trademarks contracted on the alienation of the exclusive right to trademarks and the contracts on granting the right to use trademarks, including licensing contracts and contracts of commercial concession, within the period from 2004 up to 2008.

Table 1.7.1
Number of Trademarks in respect of which Trademark Assignment Contracts and License Contracts to Confer of Using a Trademark were Registered

Type of contract

2004

2005

2006

2007

2008

Trademark Assignment Contracts, Including:

3922

4540

5039

7719

6767

From Russian Owners

3002

3524

4061

5748

5222

From Foreign Owners

920

1016

978

1971

1545

License Contracts Including:

4395

5574

8097

9288

8807

From Russian Owners

2875

4310

6142

6438

6367

From Foreign Owners

1520

1264

1955

2850

2440

* Up to 2008 — Trademark Transfer Contracts

As Table 1.7.1 shows, in 2008 the total amount of trademarks contracted on alienation or contracts on granting the right to use, as compared with 2007 has been decreased.

In 2008 3511 contracts on alienation of the exclusive right to trademarks were registered, as a result of it the exclusive right has been alienated in respect to 6767 trademarks, including 5222 or 77,2 % which were trademarks of Russian right holders and correspondingly 1545 or 22,8% — trademarks of foreign right holders.

With respect to 8807 trademarks in 2008 contracts on granting the right to use (totally 4926 contracts) were registered. The share of trademarks of Russian right holders was equal to 6367 or 72,3 % and the share of trademarks of foreign right holders was equal to 2440 or 27,7%.

In 2008 the tendency towards the increase of the number of trademarks on which the rights holders have granted the rights to use (8807 or 56,5 % of the total amount of trademarks), as compared with the trademarks on which the exclusive rights have been alienated (6767 or 43,5 % of the total amount of trademarks) has been noted. The comparison with the same data in 2007 год (9288 or 54,6% and 7719 or 45,4 %, correspondingly) allows to presume, that for the right holders the most favorable form of the use of the exclusive right to trademark was the license or commercial concession, but not the alienation of the trademark.

The Federal Law № 231-FL of December 18, 2006 «On introduction into force of Part IV of the Civil Code of the Russian Federation » has amended Part II of the Code, including Articles 1027 and 1028, relating to contracts of commercial concession. Since January 1, 2008 the complex of the exclusive rights of the right holder to be granted under the contract on the commercial concession should include the right to trademark in question. The commercial concession contract should be subject to official registration in Rospatent. In 2008 the stable growth of registered by Rospatent contracts of commercial concession was noted, including commercial sub concession contracts. Thus, in 2008 519 commercial concession contracts have been registered, which is by 29,4% more than in 2007 (401 commercial concession contracts), and by 69,9% more than in 2006 (306 commercial concession contracts).

The comparative data on nationalities of the parties of contracts registered in 2005 — 2008 is given in Table 1.7.2.

Table 1.7.2
Belonging of Parties to Contracts to the Russian and Foreign Persons

Parties to Contract

Trademark Assignment Contract

License Contracts

2005

2006

2007

2008

2005

2006

2007

2008

The Parties are Russian Persons

2467

3249

3152

2642

2974

5221

4254

4023

The Parties are Foreign Persons

762

782

585

418

316

293

129

105

Transferor is a Russian Person, Transferee is a Foreign Person

1057

812

305

375

1336

921

46

28

Transferor is a Foreign Persons, Transferee is a Russian Persons

254

196

92

76

948

1662

743

770

The comparative data on the number of the registered contracts and on the number of contracted trademarks is given in Table 1.7.3.

Table 1.7.3
Number of Registered Contracts and that of Trademarks in respect of which the Contracts were Registered

Type of contract

2006

2007

2008

Contracts

Trademarks

Contracts

Trademarks

Contracts

Trademarks

Trademark Assignment Contracts,Including:

3124

5039

4134

7719

3511

6767

From Russian Owners

2624

4061

3457

5748

3017

5222

From Foreign Owners

500

978

677

1971

494

1545

License Contracts, Including:

4071

8097

5172

9288

4926

8807

From Russian Owners

3574

6142

4300

6438

4051

6367

From  Foreign Owners

497

1955

872

2850

875

2440

The activity of Russian right holders in the area of registration of contracts on trademarks has been increased. As Table 1.7.3 shows, the share of contracted trademarks of Russian right holders was equal in 2008 to 74,4 % against 71,7 % in 2007. The number of registered contract in respect to trademarks of Russian right holders has increased insignificantly and was equal to 83,8 % of the total amount of contracts (83,4 % in 2007)

The share of registered contracts in respect to trademarks of foreign right holders has decreased and was equal to 16,2 % of the total amount of contracts (16,6 % in 2007). The number of contracts of foreign right holders has decreased as well and was equal to 1369 contracts (as compared with 1549 contracts in 2007).

Analyzing the data on the comparative number of registered contracts and the number of contracted trademarks, it could be noted that in 2008 the comparison of the figures of registered contracts and trademarks shows that the level of contracts on alienation of the exclusive relates to the number of trademarks was kept at the level of the previous years as 1 to 1,9 and decreased insignificantly as compared with the contracts to grant the right to use as 1 to 1,8.

The data contained in Table 1.7.3 shows, that in 2008 the decrease of not only the quantity of contracted trademarks, but of the total amount of registered contracts has been noted.

Therefore, despite of the total decrease of contracts registered in 2008, the growth of the registered amendments, introduced in the registered contracts to grant the right to use the exclusive right has been noted (1432 amendments with respect to 5004 trademarks), as compared with 2007 (1155 registered amendments with respect to 3953 trademarks).

In 2008 644 termination of contracts were registered, there is an increase as compared with 2007 (582 terminations).

1.8. Resolution of the Administrative Disputes, related to the Legal Protection of the Results of Intellectual Activity and the Means of Individualization

The codified legislation provides for the prejudicial procedure of enforcement of intellectual property rights. The resolution of disputes according to administrative procedure is entrusted under paragraph 2 of Article 1248 of Part IV of the Code with Rospatent and established under it chamber of patent disputes. Thus, the enforcement of IPRs related to filing and consideration of applications for issuing patents for inventions, utility models, industrial designs, to official registration of the results of the intellectual activity, to issuing the appropriate legal documents, to contesting the granting legal protection or its termination, is being implemented by Rospatent. Its decisions shall come into force upon approval and may be contested in court in the course set forth by the law.

Taking into account the afore said, Part IV of the Code has changed the approaches of the legislators to the issue of the subject empowered to make decisions according to the results of consideration of disputes within the administrative procedure and related to the enforcement of rights to the results of intellectual activity and means of individualization. Before, in accordance with separate laws the Federal State Enterprise «Chamber of Patent Disputes of the Federal Service for Intellectual Property, Patents and Trademarks» has been empowered to make decisions which should be approved by the Director General of Rospatent.

As for now Rospatent is entrusted the authority to make decisions on the results of dispute’s consideration and the chamber of patent disputes, envisaged in Part IV of the Code as a functional structure, is designed to prepare decisions on the results of the collective consideration of dispute executed by its panel. Such a decision is of the expert nature and is not a normative act of the state authority, but only could serve as the basis for the decision of Rospatent.

In order to implement the provisions of Article 1248 of Part IV of the Code, set forth the establishment within Rospatent the chamber of patent disputes, the Resolution of the Government of the Russian Federation № 1791-р of December 1, 2008 has been adopted. It deals with the restructuring of the Federal State Enterprise «Federal Institute of Industrial Property of the Federal Service for Intellectual Property, Patents and Trademarks» and Federal State Enterprise «Chamber of Patent Disputes of the Federal Service for Intellectual Property, Patents and Trademarks » to attend the latter to the first.

As a result of this restructuring none of the Rospatent’s function have been transferred, but the accumulation of all divisions in one state enterprise to ensure the decision making by Rospatent in accordance with Part IV of the Code would allow optimizing the technological process, to use unified information infrastructure, to reduce personnel involved in technical and administrative proceedings. That would allow to increase the number of experts involved and to reduce the timetables of consideration of cases.

Part IV of the Code directly set forth, if the dispute appears and its resolution could be made in administrative procedure, a number of claims and objections on the concrete grounds have to be forwarded to the chamber of patent disputes, and another number of claims and objections have to be forwarded to Rospatent directly. Thus, the administrative proceedings of dispute resolution related to the legal protection of the results of intellectual activity and means of individualization should include:

a) administrative procedures of consideration of claims and objections which filing to the chamber of patent disputes is directly envisaged in Part IV of the Code;

b) administrative procedures of consideration of claims and objections which filing to Rospatent is directly envisaged in Part IV of the Code.

Taking into account the provisions of Part IV of the Code and of the international agreements to which Russia is a party, the following types of claims and objections could be forwarded to the chamber of patent disputes:

  • claims on preterm termination of legal protection of trademark, including well-known in Russia trademark, on preterm termination of legal protection of international sign throughout the territory of the Russia Federation because of non use. The filing of such claims is provided for in paragraph 1 of Article 1486 of the Code and in paragraph 2 of Article 1514 of the Code;

  • objection to the decision on the refusal to issue patent for innovation, utility model and industrial design. The filing of such objection is provided for in paragraph 3 of Article 1387 of the Code;

  • objection to the decision on the recognition of the application for innovation, utility model and industrial design as withdrawn. The filing of such objection is provided for in paragraph 3 of Article 1387 of the Code;

  • objection to the issuing of patent for innovation, utility model and industrial design. The filing of such objection is provided for in paragraph 2 of Article 1398 of the Code;

  • objection to the decision on refusal to file the application for trademark, service mark, as well as for appellation of origin. The filing of such objection is provided for in paragraph 1 of Article 1500 of the Code and paragraph 1 of Article 1528 of the Code;

  • objection to the decision on recognition of the application for trademark, service mark, as well as for appellation of origin as withdrawn. The filing of such objection is provided for in paragraph 1 of Article 1500 of the Code and paragraph 1 of Article 1528 of the Code;

  • objection to the decision on official registration of trademark, service mark or on the refusal of the official registration of trademark, service mark, to the decision on official registration of appellation of origin and on granting the exclusive right to such appellation of origin, as well as to the decision on preliminary refusal of granting legal protection throughout the Russian territory in respect to international sign. The filing of such objection is provided for in paragraph 1 of Article 1500 of the Code and paragraph 1 of Article 1528 of the Code, in paragraph 3 of Article 5 of Madrid Agreement on the international registration of marks dated April 14, 1891 (hereinafter referred to as "Madrid Agreement"), adopted by the Resolution of the USSR Council of Ministers № 775-243 of September 3, 1975 «On Joining to the Madrid Agreement» or by paragraph 3 of Article 5 of the Protocol to the Madrid Agreement on the international registration of marks dated June 27, 1989 (hereinafter referred to as "Protocol to the Madrid Agreement"), adopted the Resolution of the Government of the Russian Federation № 1503 of December 19, 1996 «On the Adoption of the Protocol to the Madrid Agreement Concerning the International Registration of Marks»;

  • objection to granting legal protection of trademark, service mark, as well as to granting legal protection to international marks on the grounds foreseen in sub paragraphs 1–4 of paragraph 2 of Article 1512 of the Code and in paragraph of Article 5 of the Protocol to the Madrid Agreement;

  • objection to granting legal protection of the well-known mark on the grounds foreseen in paragraph 3 of Article 1512 of the Code;
  • objection to granting legal protection of trademark in the name of the agent or the person, representing the owner of the exclusive right in a Member-State of the Paris Convention. The filing of such objection is provided for in paragraph 3 of Article 1513 of the Code;

  • objection to effectiveness throughout the territory of the Russian Federation of the Eurasian patent issued in accordance with the Eurasian patent convention dated September 9, 1994 and ratified by Federal Law № 85-FL of June 1, 1995 «On ratification of Eurasian patent convention». The filing of such objection is provided for in Article 13 of the Eurasian patent convention.

In 2008 Administrative regulation of the Federal Service for Intellectual Property, Patents and Trademarks on the execution of state function of invalidation of grant or preterm termination of legal protection of trademarks, service marks, appellations of origin of goods, invalidation of patents for inventions, industrial designs, certificates (patents) for utility models, certificates for the right to use appellations of origin (hereinafter — the Administrative Regulation) was being coordinated. Therefore, due to the adoption of the Resolution of the Government of the Russian Federation № 1791-р dated on December 1, 2008 Rospatent should make some additional drafting.

Till the adoption of the Administrative Regulation, the Procedure of filing objections and claims, as well as their consideration by the Chamber of Patent Disputes in part not contradicting Part IV of the Code, and the Rospatent’s Ordinance № 32 of February, 2008 are still in force. The Ordinance provides for:

  1. References of penal of the Chamber of Patent Disputes;

  2. Procedure of work of penal of the Chamber of Patent Disputes;

  3. Requirements to the decisions of penal of the Chamber of Patent Disputes;

  4. Forms of the decisions of penal of the Chamber of Patent Disputes;

  5. Forms of the decisions of Rospatent.

This document approved the list of specialists involved in panels of chamber of patent disputes. At present the list includes 156 specialists.

The statistical data on the work of the Chamber of Patent Disputes in 2008 is given in Tables 1.8.1–1.8.6.

Table 1.8.1
The Number of Objections and Claims Filed with the Chamber of Patent Disputes on the Results of Intellectual Activity and Means of Individualization

The Results of Intellectual Activity

2004

2005

2006

2007

2008

Inventions

258

233

295

430

334

Utility Models

94

106

119

167

106

Industrial Designs

33

29

30

22

49

Trademarks

1634

1736

2097

2876

2392

Appellations of Origin

4

7

1

Granting Exclusive Right for Prior Registered Appellation of Origin

1

4

1

Total

2024

2104

2552

3497

2881

As the data in table 1.8.1 shows, the number of objections and claims filed has decreased as compared with 2007 by 17,6%, but still their level is significantly higher than in 2004, 2005 and 2006.

In 2008, like in previous 2006–2007, in order to reduce the timetable of consideration of objections and claims as well as to exclude cases ungrounded prolongation of such consideration, the supervision over the postponement of consideration has been conducted. With the same purpose, there was established a system of motivation of collaborators to fulfill their duties with maximum efforts and high quality.

The data contained in Table 1.8.2 shows significant increase of number of decisions taken in respect to objections and claims (about 10%). That was possible in absence of requests to postpone the dates of consideration, well grounded postponements of panel hearings, and due to well motivation of expert staff to fulfill its duty in respect to the additional volume of work.

Table 1.8.2
The Number of Filings with the Chamber of Patent Disputes and Rospatent’s Decisions Taken

Type of Filings

2005

2006

2007

2008

Filed

Decisions Taken

Filed

Decisions Taken

Filed

Decisions Taken

Filed

Decisions Taken

Objections to Examination Decisions

604

624

723

625

1107

555

901

729

Objections to Granting Legal Protection

642

563

753

639

712

548

564

419

Claims

858

738

1076

799

1678

903

1416

1159

Not Recognized  as Objections and Claims

434

0

556

0

662

0

404

Objections and Claims Recognized Withdrawn

21

0

66

0

44

0

32

Total

2104

2380

2552

2685

3497

2712

2881

2743

In 2008 at the stage of consideration of objections and claims 32 cases have been stopped at the requests of persons filed the objections and claims. It was 27,3% less than in 2007 (44%).

Besides that, 404 requests to the Chamber of Patent Disputes were not put into proceedings as the requirements of filing of objections and claims set forth in chapter II of the Procedure of filing objections and claims, as well as their consideration by the Chamber of Patent Disputes have not been met.

Like in previous years the majority of cases of refusal to start proceedings was connected with failure to meet requirements on documents confirming the payment of fee for the consideration of objectives or claims to the established amount, filing of objections or claims in violation of the established timetables and other infringements.

Table 1.8.3 demonstrates the sharing of decisions taken by Rospatent on different types of the results of intellectual activity and means of individualization. The number of decisions taken in 2008 on trademarks, like in previous years, many times exceeds the number of decisions taken in respect to other objects.

Table 1.8.3
The Number of Decisions Taken by Rospatent as per the IP Objects

Types of the Results of Intellectual Activity and Means of Individualization

Years

Decisions

Total

On Objections to the Decisions of Examination

On the Objections to Granting Legal Protection

On Claims

Inventions

2006

72

86

158

2007

94

80

174

2008

204

59

263

Utility Models

2006

6

70

76

2007

11

89

100

2008

6

77

83

Industrial Designs

2006

2

34

36

2007

4

19

23

2008

4

13

17

Trademarks

2006

545

447

798

1790

2007

446

356

903

1705

2008

515

270

1159

1944

Appellations of Origin

2006

2

1

3

2007

3

3

2008

0

Exclusive Rights in Appellations of Origin

2006

0

2007

1

1

2008

0

It should be noted that in 2008 the number of decision taken on innovations has been increased as compared with 2006 by 66,5%, and with 2007 by 51,1% .

Table 1.8.4 contains the results of consideration of objections on different types of the results of intellectual activity and means of individualization. 542 objections were met and 534 were rejected.

Table 1.8.4
The Results of Consideration of Objections

Types of the Results of Intellectual Activity and Means of Individualization

Years

Results of Consideration

Total

Objection Met

Objection Rejected

Inventions

2006

38

103

141

2007

52

108

160

2008

142

117

259

Utility Models

2006

29

40

69

2007

32

63

95

2008

31

46

77

Industrial Designs

2006

16

16

32

2007

10

9

19

2008

8

8

16

Trademarks

2006

447

441

888

2007

344

401

745

2008

361

363

724

Appellations of Origin

2006

1

0

1

2007

3

3

2008

0

0

Exclusive Rights in Appellations of Origin

2006

0

0

2007

1

1

2008

0

0

Total

2006

531

600

1131

2007

438

585

1023

2008

542

534

1076

The number of rejected objections as compared with 2006 and 2007 has been significantly reduced due to raising the quality of objections and claims filed with the chamber of patent disputes.

Table 1.8.5 shows that the number of decisions of examination which have been approved by the decisions of Rospatent as a result of consideration of objections by chamber of patent disputes to the examination’s decisions has increased as compared with 2007 by 4,3 %, the number of withdrawn decisions has increased by two folds.

Table 1.8.5
The Number of Decisions on the Results of Consideration of Objections

Type of Decision

2005

2006

2007

2008

Decision of Examination on Applications

Kept as Valid

260

333

302

315

Changed

98

76

73

82

Withdrawn

250

195

163

318

Document of Protection

Recognized not Valid Entirely

146

137

115

106

Recognized not Valid Partially

105

124

97

48

Kept in Effect

216

266

273

204

Processing Stopped

112

133

80

75

Total 

1187

1264

1103

1148

Table 1.8.6 shows that a significant share of the filed and considered by the chamber of patent disputes claims deals with preterm termination of legal protection because of non use.

Table 1.8.6
The Number of Considered Applications on Trademarks as Distributed on the Types of Applications

Type of Applications

Type of Decisions

2005

2006

2007

2008

On Non-Use

Satisfied Partially

172

256

253

394

Satisfied Totally

317

334

436

482

Rejected

22

25

38

35

Document Processing Stopped

215

158

157

246

Total

738

799

903

1159

As a result of consideration of claims on the termination of legal protection of trademarks because of non use 876 claims were met in full or partially, 35 claims were rejected and on 246 claims the proceedings were stopped.

In 2008 administrative procedures of consideration of objections and requests provided for by Part IV of the Code and falling within the competence of Rospatent were carried out only in respect of the following types of objections and requests:

objection to grant of legal protection to a trademark if the actions of the rightholder connected with the state registration of the trademark were in due course determined as abuse of rights or unfair competition, filing of which is provided for by paragraph 3 of Article 1513 of the Code;

request for a pre-term termination of legal protection of trademark in case of its transformation into a designation that became commonly used as a designation of goods of a special kind,  filing of which is provided for by paragraph 1.6 of Article 1514 of the Code;

Consideration of requests for a pre-term termination of legal protection of trademark in case of its transformation into a designation that became commonly used as a designation of goods of a special kind before 2008 was carried out by the Chamber on Patent Disputes. However, due to the entry into force of Part IV of the Code the procedure for consideration of such requests has been changed. Such requests are considered by expert commissions of Rospatent. Four requests of such kind have been received in 2008; however decisions on the basis of their consideration have not been carried out yet.

Objections to grant of protection to trademarks if the actions of the rightholder connected with the state registration of the trademark were in due course determined as abuse of rights or unfair competition are considered by Rospatent without expert commissions.

Eleven objections motivated by the fact that the actions of the rightholder connected with the state registration of the trademark were determined as unfair competition by Antimonopoly Authority were filed with Rospatent in 2008. Upon consideration of 10 of the requests received, decisions on satisfaction of the requests and invalidation of the grant of legal protection to trademarks in full have been carried out.

Satisfaction of one request has been refused due to the fact that the decision of the Antimonopoly Authority has been cancelled by court.

1.9. Interaction of Rospatent with Federal Executive and Judicial Bodies

In 2008 Rospatent in cooperation with federal executive bodies has continued the work on elaboration and coordination of legal acts aimed at realization of provisions of Part IV of the Civil Code. As a result of such work the following legal acts have been adopted:

  1. Federal Law of June 30, 2008 № 104-FL “On Amendments to Article 1249 of Part IV of the Civil Code of the Russian Federation”;

  2. Federal Law of December 30, 2008 № 316-FL “On Patent Attorneys”;

  3. Decree of the Government of the Russian Federation of December 10, 2008 № 941 “On Adoption of the Rules of Patent and other Fees for Conduction of Legal Actions Connected with Patents for Inventions, Utility Models, Industrial Designs, State Registration of Trademarks and Servicemarks, State Registration and Grant of Exclusive Rights in Appellations of Origin, and also State Registration of Transfer of Exclusive Rights to Third Persons and Contracts on Exploitation of Such Rights”;

  4. Decree of the Government of the Russian Federation of December 24, № 1020 “On State Registration of Contracts on the Use of Exclusive Right in an Invention, Utility Model, Industrial Design, Registered Topology of Integrated Circuits, Computer Program, Database and Non-Contractual Transfer of Exclusive Rights in an Invention, Utility Model, Industrial Design, Trademark, Service Mark, Appellation of Origin, Registered Topology of Integrated Circuits, Computer Program, Database”;

The following administrative regulations have been elaborated and registered:

  1. Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks on the execution of state function of receipt of applications for industrial design patents, their registration, examination and issue of Russian Federation patents for industrial designs in due course, adopted by Order of the Ministry of Education and Science of the Russian Federation of 29.10.2008 № 325, registered by the Ministry of Justice of the Russian Federation on 27.11.2008, registration number 12748;

  2. Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks on the execution of state function of receipt of applications for utility model patents, their registration, examination and issue of Russian Federation patents for utility models in due course adopted by Order of the Ministry of Education and Science of the Russian Federation of 29.10.2008 № 326, registered by the Ministry of Justice of the Russian Federation on 24.12.2008, registration number 12977;

  3. Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks on the execution of state function of keeping registers of registered intellectual property objects, publication of information on registered intellectual property objects, filed applications and issued patents and certificates, on the validity, termination and renewal of legal protection of such intellectual property objects, transfer of rights in the protected objects, on official registration of intellectual property objects, adopted by the Order of the Ministry of Education and Science of the Russian Federation of 12.12.2007 № 346, registered by the Ministry of Justice of the Russian Federation on 30.05.2008, registration number 11785;

  4. Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks on the execution of state function of receipt of applications for state registration of computer programs and applications for state registration of databases, examination and issue in due course of Russian Federation certificates on official registration of computer program or database, adopted by Order of the Ministry of Education and Science of the Russian Federation of 29.10.2008 № 324.

The following Administrative Regulations have been adopted by Orders of the Ministry of Education and Science of the Russian Federation:

  1. Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks on the execution of state function of extension of the validity of the exclusive right in the invention concerning medicines, pesticides or agrochemicals, the use of which requires duly granted permission, and the patent certifying such a right, exclusive right in an industrial design and the patent certifying such a right,  exclusive right in a utility model and the patent certifying such a right, exclusive right in a trademark, service mark, certificate of exclusive right in a appellation of origin of goods, and also renewal of patent for invention, utility model, industrial design terminated due to failure to timely pay patent maintenance fee, adopted by Order of the  Ministry of Education and Science of the Russian Federation of 29.10.2008 № 322;

  2. Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks on the execution of state function of receipt of applications for state registration of topographies of integrated circuits, adopted by Order of the  Ministry of Education and Science of the Russian Federation of 29.10.2008 № 323;

  3. Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks on the execution of state function of receipt of applications for invention patents, their registration, examination and issue of Russian Federation patens for inventions in due course, adopted by Order of the Ministry of Education and Science of the Russian Federation of 29.10.2008 № 327;

  4. Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks on the execution of state function of receipt of applications for state registration of appellations of origin and grant of exclusive rights to use such appellations, and also applications for grant of an exclusive right to use earlier registered appellations of origin, their consideration, examination and issue in due course of Russian Federation certificates of exclusive rights in the appellation of origin, adopted by Order of the Ministry of Education and Science of the Russian Federation of 29.10.2008 № 328;

  5. Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks on the execution of state function of receipt of applications for trademarks, service marks, well-known marks of the Russian Federation, adopted by the Order of the Ministry of Education and Science of the Russian Federation of 29.10.2008 № 329.

Measures on implementation of administrative regulations have been elaborated in order to ensure the realization of the provisions of the administrative regulations.

An anti-corruption program of the Federal Service for Intellectual Property, Patents and Trademarks for the years 2008–2011 has been adopted, approved by the Ministry of Education and Science of the Russian Federation on November 28, 2008 and entered into implementation by the Rospatent’s order of December 4, 2008 № 259/l.

Rospatent has continued work under the procedure of ratification of the Singapore Treaty on the Law of Trademarks signed by the Director General of Rospatent on behalf of the Russian Federation Government on March 26, 2007. As a result, the Government of the Russian Federation has issued a Decree of December 25, 2008 № 1026 “On Submission for Ratification of the Singapore Treaty on the Law of Trademarks”. Draft Federal Law № 146995-5 “On the Ratification of the Singapore Treaty on the Law of Trademarks” submitted by the Government of the Russian Federation is currently under consideration of the State Duma (Russian Parliament) of the Federal Assembly of the Russian Federation.

Interaction of Rospatent with judicial bodies was carried out by a joint legal service of Rospatent — Division for Judicial Representation. This division continues to take part disputes settlement procedures in arbitration courts and courts of common jurisdiction, and also to carry out control over due implementation of court acts and provisional measures on issues concerning intellectual property objects.

Division for Judicial Representation systematically carries out work on analysis and summary of legal practices, study of analytical materials concerning the issues of application of law in the field of protection of results of intellectual activities and means of individualization, in particular, published by judicial bodies (e.g. information letters, plenum decisions, legislation and practice reviews).

In the year 2008 the staff of the Division for Judicial Representation has taken part in more than 1280 court hearings. In the mentioned period courts of different levels have issued more five hundred final court acts on disputes concerning intellectual property objects.

The provided data shows that courts dismiss the most part of objections/appeals on the decisions/actions of Rospatent and subordinate organizations (424 court cases), which is a proof of reasonableness of decisions/actions of Rospatent and subordinate organizations.

Таble 1.9.1
The Results of Consideration of Cases Involving Rospatent and its Subordinates by Arbitration Courts and Courts of General Jurisdiction in 2008

Types of Objects

Results of Consideration

Total Number of Judicial Decisions

Arbitration Courts

Courts of General Jurisdiction

Rejected

Satisfied

Rejected

Satisfied

Trademarks

283

72

5

360

Appellations of Origin

Inventions, Utility Models, Industrial Designs

77

19

59

7

162

Total

360

91

64

7

522

Besides, a significant part of court cases on which the requests of the filers were satisfied (98 court cases), are cases on which Rospatent and subordinate bodies were not the defendants, i.e. cases in which the legality of decisions/actions of Rospatent was not contested (e.g. cases on the determination of author/patent holder of an invention, utility model, industrial design, disputes on the invalidation of contracts concerning results of intellectual activities and means of individualization, disputes on the breach of exclusive rights in the results of intellectual activities and means of individualization, etc.).

As for the court decisions on the satisfaction of claims of filers, the objections and requests, on the basis of which the contested decisions were carried out, they were sent by the Director General of Rospatent for additional consideration.

Besides, in 2008 Rospatent’s legal service took part in drafting proposals and comments on the draft Decision of the Plenum of the Supreme Arbitration Court of the Russian Federation and the Supreme Court of the Russian Federation “On Certain Issues in Connection with the Entry into Force of Part IV of the Civil Code of the Russian Federation”.

It should be noted that personal participation of corresponding Rospatent’s specialists in the Plenum of the Supreme Arbitration Court of the Russian Federation and the Supreme Court of the Russian Federation on the mentioned issue added value the formation of a unified approach of courts to the consideration of cases concerning the results of intellectual activities and means of individualization. The mentioned draft decision is currently amended to include, in particular, the position of Rospatent.

Informational and organizational support of the law enforcement bodies and judicial bodies in the reported year was carried out through consideration of requests of these bodies and preparation of written consultations, opinions and provision of requested documents.

In 2008 requests of internal affairs bodies, Federal Anti-Monopoly Service and its territorial bodies, Federal Customs Service and its territorial departments, Federal Bailiff’s Service, Federal Tax Service, prosecutors and judicial bodies were considered by Rospatent. All the data on the requests received and considered is shown in Table 1.9.2.

Таble 1.9.2
Number of Requests Received from Law-Enforcement and Individual Authorities

Federal Executive Authority

Number of Requests in 2008

Ministry of Internal Affairs

266

Federal Customs Service

926

Office of the General Prosecutor

32

Courts

96

Federal Antimonopoly Service

59

Taxation Authorities

136

Ministry of Economic Development

5

Federal Bailiff’s Service

2486

The data in Table 1.9.2 shows that in 2008 the most part of requests was received from the Federal Bailiff’s Service (2486), Federal Customs Service (926), Ministry of Interior of the Russian Federation (266), Federal Tax Service (136).

In comparison with the previous year there is a significant increase in requests from the Federal Customs Service and internal affairs bodies, there is a decrease in requests from prosecution bodies, judicial bodies, Federal Anti-Monopoly Service.

Requested data and explanations were provided on such requests, in certain cases organizational and technical assistance was also provided were needed.

The most part of requests was concerning:

  • opinions on the extent of similarity between unregistered designations used to label the goods and trademarks; on the homogeneity of goods; on the use in any object of features of a protected invention, utility model, industrial design;

  • information on registration of results of intellectual activities and means of individualization, scope of protection granted, number and date of issue of the protection title, its validity term, rightholders and registration of contracts on alienation of exclusive rights, license contracts.

1.10. Cooperation with the Regions of the Russian Federation

In 2008 Rospatent and FGU FIPS continued to implement the Program of Cooperation with the Russian Federation Regions (hereinafter — the Program). During the year Rospatent has re-concluded cooperation agreements with administrations of St. Petersburg and Tula region, governments of Kaluga, Sverdlovsk regions and also Bashkortostan Republic, Khabarovsk region. A Cooperation Agreement was also signed with the Government of the Ulyanovsk region.

Rospatent’s Director General Boris Simonov and Governor of the Sverdlovsk region Eduard Rossel signing Agreement on Cooperation between Rospatent and the Government of the Sverdlovsk region — Yekaterinburg, November 26, 2008.

In order to implement the provisions of the agreements 8 cooperation agreements between FGU FIPS and corresponding regional organizations were re-concluded (hereinafter — the agreements), including with: Tver Region Versatile Scientific Library named after A. Gorky; Voronezh CNTI; St. Petersburg CNTI; Kaliningrad State Technical University; Kouban State Technological University; RNTIK “Bashtechinform” AN RB; Izhevsk State Technical University; trilateral agreement with Sochi city VOIR Council and Sochi State University of Tourism and Recreation Industry. Four new agreements have been concluded with: Volgograd Chamber of Commerce and Industry, Ulyanovsk State Technical University, Autonomous Non-Profit Organization “Far-East Agency for Innovation Promotion” and Institute of International Business and Law of the Saint Petersburg State University of Information Technologies, Mechanics and Optics.

At present Rospatent has agreements with administrations of 18 regions and FGU FIPS cooperates on the basis of agreements signed with 47 regional organizations from 35 regions of the Russian Federation (Table 1.10 and Fig.1).

 

Federal district

Regions concluded cooperation agreements with Rospatent

Regional focal points concluded cooperation treaties with FIPS

Central

Moscow

 

Yaroslavl Science and Technology Center

Tver

Tver regional universal scientific library named after A.M. Gorky

Tula

Tula regional universal scientific library

Kaluga

Kaluga Science and Technology Center

Orel

Orel state technology university

Belgorod state universityBelgorod regional universal scientific library

Ryazan Science and Technology Center

Voronezh Science and Technology Center

Northwest

St. Peterburg

St. Petersburg Science and Technology Center

Institute of international business and low of Saint-Petersburg State University of information Technologies, Mechanics and Optics

Arkhangelsk

Arkhangelsk regional scientific library named after N. A. Dobrolyubov

Kaliningrad state technology university

South

Volgograd

Volgograd Science and Technology Center

Volgograd chamber of commerce and industry

Astrakhan regional scientific library named after N.К. Кrupskaya;Astrakhan state medical academy

State university of tourism and recreation of Sochi;Sochi city council of the society of inventors

Kuban state technology university

Krasnodar Science and Technology Center

By-Volga

Plenipotentiary Representative of Russian President in By-Volga Federal district

Republic of Tatarstan

Tatarstan Science and Technology Center

Republic of Bashkortostan

Bashtechimform

Nizhegorod region

Nizhegorod Science and Technology Center

Ulianovsk

Ulianovsk state technology university

Samara regional universal scientific library

Chuvashiya Science and Technology Center;National library of Chuvashiya

Perm Science and Technology Center

Saratov

Saratov state university named after N.G. Chernishevsky

Izhevsk state technology university (Udmurd Republic)

Mordovia

Mordovia center of intellectual property

Ural

Sverdlovsk

Ural house of science and technology;Non-commercial partnership of patent attorneys “Novation”

Ural state technology university;Ural state law academy

Tumen Regional Counsil of the society of inventors

Kurgan

Kurgan regional universal scientific library named after А.К. Yugov

South-Ural chamber of commerce

Uralpatent

Sibir

Novosibirsk

Science and Technology Library

Omsk state technology university

Kemerovo Science and Technology Center

Krasnoyarsk Science and Technology Center

Irkutsk state railway university

Far East

Khabarovsk

Khabarovsk Science and Technology Center

Far East agency of assistance to innovations

Total

18

47

Fig.1
FGU FIPS Cooperation Coverage

1 — Arkhangelsk Region, 2 — Astrakhan Region, 3 — Belgorod Region, 4 — Voronezh Region, 5 — Volgograd Region, 6 — Irkutsk Region, 7 — Kaliningrad Region, 8 — Kaluga Region, 9 — Kemerovo Region, 10 — Krasnoyarsk Territory, 11 — Krasnodar Territory, 12 — Kourgan Region, 13 — Moscow, 14 — Nizhniy Novgorod Region, 15 — Novosibirk Region, 16 — Omsk Region, 17 — Orel Region, 18 — Perm Territory, 19 — Republic of Bashkortostan, 20 — Republic of Tatarstan, 21 — Republic of Mordovia, 22 — Ryazan Region, 23 — Samara Region, 24 — St. Petersburg, 25 — Saratov Region, 26 — Sverdlovsk Region, 27 — Tver Region, 28 — Tula Region, 29 — Tyumen Region, 30 — Republic of Udmurtia, 31 — Khabarovsk Territory, 32 — Cheliabinsk Region, 33 — Ulyanovsk Region, 34 — Republic of Chuvashia, 35 — Yaroslavl Region.

In the course of implementation of the Program of information support of the regions (Rospatent’s Order of 26.02.2004 № 18) free access through website to the full-text databases (hereinafter — DB) of national inventions was provided to 125 organizations in 7 Federal districts of the Russian Federation.

Access was provided to: 42 regional organizations, with which FGU FIPS has contracts; 8 scientific cities — Korolev, Dubna, Reutov, Friazino, Protvino of the Moscow region, Obninsk of the Kaluga region, Michurinsk of the Tambov region and Koltsovo of the Novosibirsk region; 41 state scientific center and 34 scientific centers of the Russian Academy of Sciences.

In 2008 5 new organizations received access to full text FGU FIPS databases: Voronezh NCTI, GOU VPO “Astrakhan State Medical Academy of the Roszdrav”, GOU VPO “Ulyanovsk State Technical University”, Autonomous Non-Profit Organization “Far-East Agency for Innovation Promotion”, “Protvino” Techno park.

In 2008 Rospatent has organized and conducted in twenty regions of six federal districts 28 conferences and seminars on the issues of intellectual property; 80 Rospatent, FGU FIPS, Chamber of Patent Disputes and RGIIS representatives took part in them as speakers.

More than 3000 people participated in the conferences and seminars.

6 in the Central Federal District:

  • April 22–23 — Regional Seminar for the specialists of the Central federal district of the Russian Federation on the issues of Madrid system organized by WIPO and Rospatent (GUK Tver Regional Versatile Scientific Library named after A. Gorky, Tver);

  • April 23–25 — Second all-Russian Forum “Intellectual Property in Russia — 2008” (Ministry of Culture of the Russian Federation, Moscow);

  • June 16–17 — Regional Seminar for the specialists of the Central federal district of the Russian Federation “Patent Cooperation Treaty” organized by WIPO and Rospatent (Yaroslavl CNTI, Yaroslavl);

  • September 9–10 — Scientific and Practical Conference for the specialists of the Central federal district of the Russian Federation “Urgent Issues of Intellectual Property Protection under Part IV of the Civil Code of the Russian Federation” (GOU VPO “Belgorod State University”, Belgorod);

  • September 29–October 4 — All-Russian seminar on the intellectual property protection by customs authorities (Federal Customs Service, Smolensk);

  • November 18 — Conference “Issues of Legal Protection and Effective Exploitation of Intellectual Property Objects in Innovative Activities of Enterprises” (Kaluga center of scientific and technical information — branch of the FGU “Union “Rosinformresurs” of the Ministry of Industry of Energy of the Russian Federation, Kaluga).

In the Northwest Federal District — 5:

  • March 26–28 — International Seminar “Com-Microfilming as a Perspective Technology of Ensuring the Safety of Documents” (FGU “Russian National Library”, St. Petersburg);

  • April 24–25 — Regional Seminar for the specialists of the Northwest Federal district of the Russian Federation on the issues of Madrid system organized by WIPO and Rospatent (GOU PO “St. Petersburg” State University of Information Technologies, Mechanics and Optics, St. Petersburg);

  • June 26–27 — 10th Annual Scientific and Practical Conference “Collegiums Readings — 2008” (St. Petersburg Chamber of Patent Attorneys, St. Petersburg);

  • September 30–October 2 — Seminar “Practice of Application of Provisions of Part IV of the Civil Code of the Russian Federation in the Field of Information and Communication Technologies“ (AIS “Egida” Ltd., St. Petersburg);

  • December 2–3 — Scientific and Practical conference for the specialists of the Northwest Federal district of the Russian Federation “Urgent Issues of Intellectual Property Protection under Part IV of the Civil Code of the Russian Federation” (GOU AONB named after N. Dobrolyubov, Arkhangelsk).

In the Volga Federal District — 5:

  • March 25–26 — Regional Conference “Urgent Issues of Intellectual Property Protection under Part IV of the Civil Code of the Russian Federation” (GOU DPO “Nizhniy Novgorod scientific and information center”, Nizhniy Novgorod);

  • March 27 — Seminar on the issues of protection of intellectual property in the field of medicine and pharmacology (GOU VPO NizhGMA of the Roszdrav, Nizhniy Novgorod);

  • May 27–30 — Fourth International Conference “Stroyprogress-XXI» (Saratov Institute of Glass, Saratov);

  • June 19–20 — Regional Seminar for the specialists of the Volga federal district of the Russian Federation “Patent Cooperation Treaty” organized by WIPO and Rospatent (Perm CNTI, Perm);

  • June 17–18 — Seminar “Protection of Rights of Trademark Holders in the Russian Economy” (“PatentVolgaService” Ltd, Saratov).

In the Ural Federal District — 3:

  • April 23–25 — Seminar on the legal protection of the results of intellectual activities for enterprises, organizations and entities of Tyumen and Tyumen region (Tyumen regional VOIR council, Tyumen);

  • May 20–21 — 1st Ural District Scientific and Practical Conference “Outstanding Issues of Intellectual Property Protection under Part IV of the Civil Code of the Russian Federation” (Non-Profit Partnership of Patent Attorneys “Novation”, Yekaterinburg);

  • November 26–27 — 6th International Conference “Intellectual property — From Reliable Protection to Reliable Management” (Sverdlovsk region Government, Yekaterinburg).

In the South Federal District — 5:

  • September 9–11 — XII International Conference “Science Intensive Chemical Technologies — 2008” (Volgograd State Technical University, Volgograd);

  • September 24 — Seminar on the basics of intellectual property for teachers, post-graduates and students of the Sochi universities (Sochi city VOIR Council, Sochi);

  • October 13–17 — Seminar “Ensuring Intellectual Property Protection, Prohibitions and Limitations” (South customs department of the Federal Customs Service, Tuapse);

  • November 11–12 — Scientific and Practical Conference for the specialists of the South federal district of the Russian Federation “Outstanding Issues of Intellectual Property Protection under Part IV of the Civil Code of the Russian Federation” (GOU VPO “Kouban State Technological University”, Krasnodar);

  • November 12–15 — International Scientific and Practical Conference “Strategy of Innovation Development: Problems, Directions, Perspectives” (Sochi city VOIR Council, Sochi).

In the Siberia Federal District — 4:

  • June 26–27 — Regional Scientific and Practical conference “Urgent Issues of Intellectual Property Protection under Part IV of the Civil Code of the Russian Federation” (GPNTB SO RAN, Novosibirsk);

  • September 18–19 — Regional Seminar for the specialists of the Siberia federal district of the Russian Federation “Patent Cooperation Treaty” organized by WIPO and Rospatent (GOU VPO “Irkutsk Railway University”  Irkutsk);

  • October 24 — joint Rospatent — EPO Seminar “Patent Information for Innovations” (Innovation and Technology Center of the Scientific and Technological Park “Novosibirsk”, Novosibirsk);

  • December 18–19 — Scientific and Practical Conference “Issues of Protection and Exploitation of Intellectual Property Objects in the Khanty-Mansiysk Autonomous Region — Ugra” (Government of the Khanty-Mansiysk Autonomous Region — Ugra, Khanty-Mansiysk).

In the Far-East Federal District — 0.

1.11. Statistics of Consideration of Requests of Individuals and Legal Entities in Rospatent and Subordinate Organizations

In 2008 Rospatent and subordinate organizations have considered 2180 requests (37 received by e-mail) from individuals (1353) and legal entities (827).

The central body of Rospatent has received 1120 requests (743 addressed directly to Rospatent, other transferred from state authorities and Public Chamber of the Russian Federation), which is by a quarter more than in 2007. 257 of the total number of requests were considered in the central body of Rospatent (same figure as in 2007). Other 863 requests were sent for consideration to the subordinate bodies.

Table 1.11.1 contains data on the distribution of the received requests by the addressees and geography of the origin of the requests.

Табл. 1.11.1
Data on Distribution of Requests Received by Rospatent and its Subsidiaries on Addresses and Geography of Submitted Requests

Appeals Addressed:

Number of Appeals

To Rospatens

743

To Other State Bodies

391

To Russian Public Chamber

14

To Subordinate Bodies of Rospatent

1032

Appeals Received:

Number of Appeals

From the Russian Federation

2057

From CIS Countries

94

From Other Countries

29

2008 shows the continued increase in the number of requests that started in 2006; the pace of the increase for the past two years (2007 and 2008) is the same — 25% increase in comparison with the previous period.

The mentioned increase of the flow of requests is due mainly to the requests of the Russian Federation citizens (from 1689 to 2057). The requests of the individuals are prevailing — about 65% from the total number of requests.

Table 1.11.2 shows the distribution of the requests of Russian Federation citizens by Federal districts.

Table 1.11.2
The Requests Received by Rospatent and its Subsidiaries from Federal Districts

Federal district

Number of Appeals Received from Federal District

Central

1050

Northwest

262

Volga

303

South

185

Siberia

132

Ural

98

Far East

27

In 2008 almost three quarters of requests of individuals came from three federal districts: Central, Northwest and Volga, the largest number of requests is from the Central district (51%), mainly from individuals and legal entities of Moscow and Moscow Region.

Table 1.11.3 contains data on the number of requests filed with Rospatent and subordinate bodies by generalized categories for the years 2004–2008.

Table 1.11.3
Data on the Number of Appeals Received by Rospatent and its Subordinate Bodies in 2004-2008 and Grouped

Groups in Which the Problems Raised in Appeals and Addresses are Classified

The Amount of Appeals and Addresses

2004

2005

2006

2007

2008

Patent Examination (Time Limits, Procedure, Examination Results, Office Work)

738

526

579

621

855

Assistance to Inventors

229

168

207

307

346

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

201

125

157

182

185

Legal Issues

142

121

129

200

270

Payment of Patent Fees

177

95

93

108

80

Patent Information Services

75

54

83

165

223

Contracts (Registration, Disputes Between the Parties)

25

84

61

54

78

Publication (Time Limits, Errors)

9

19

21

43

29

Registration of Discoveries

30

18

16

38

31

Training, Improvement of Professional Skills, Activity in Regard to Patent Attorneys, Issues of International Cooperation

7

6

7

15

37

Personnel Issues and Work of Patent Attorneys

4

4

4

5

9

Other (basically unrelated to the competence of Rospatent and its subordinate organizations)

65

60

93

62

37

Total

1702

1280

1450

1800

2180

The mentioned increase in the requests in comparison with the previous year is mainly explained by increase in certain groups of requests motivated by:

  • Examination of applications for results of intellectual activities and means of individualization (procedure of consideration of applications, including the time limits of consideration, results of examination, paper flow issues, etc.);

  • Legal issues (explanation of provisions of patent legislation, protection of rights in intellectual property objects, proposals on amending the current legislation, etc.);

  • Patent and information services (provision of information on authors, patent holders, on the fact of registration, requests of copies of application files, patent documents, information searches, etc.);

  • Assistance to inventors (assistance in drawing up and filing applications, assistance in commercialization and exploitation of industrial property objects, finding resources for new developments, proposals on the improvement of innovative activities, etc.).

The amount of requests falling within the mentioned categories is about 78% of their total number, which is by 8 % more than the figure for 2007.

The amount of requests concerning the issues of examination of applications for results of intellectual activities that in 2007 lowered to 35%, in the reported period has reached the level of 2004–2006 and amounted to about 40% of their total number.

In the reported period, as in the year 2007, there was a big amount of requests concerning legal issues, in particular, amendment of legislation governing the relations in the field of intellectual property protection and the entry into force of the Part IV of the Code.

While the total number of requests has increased, a certain decrease in the amount of requests concerning the payment of patent and other fees and publication can be noted.

The biggest part of the total number of requests considered are claims — 78%, remaining are — proposals — 3% and complaints — 19%.

Consideration of a significant part of requests (about a quarter) was conducted by Quality Service of Rospatent (including about 60% of complaints).

The activities of the Quality Service of Rospatent were aimed at one of the main tasks of Rospatent contained in the strategy of development till 2010, namely — improvement of quality of examination of applications for intellectual property objects and the quality of the protection titles themselves.

The Quality Service conducts checks of quality of examination including checks based on complaints, planned and operative control of the activities of Rospatent’s units including the control of quality of documents prepared in connection with state registration of results of intellectual activities and means of individualization and transfer of rights in them.

Technological checks (technological supervision) were also conducted in addition to checks of the quality of examination itself, since the quality of examination depends in particular on the functioning of the supporting (functional) units.

53 complaints on the actions of Rospatent’s employees that were determined to be justified (JC) have been filed in 2008.

The complaints leaded to checks of the justification of the motives of discontent, report of breach of rights and interests of the filers.

Of the total number of complaints 34 JC were concerning the consideration of applications, which is 0,03% from the total number of examined applications for inventions, utility models, industrial designs, trademarks, appellations of origin; here:

  • concerning trademark registrations — 15 JC (more than 50000 applications examined);

  • concerning patents for:

  • inventions — 10 JC (more than 37000 applications examined);

  • utility models — 8 JC (more than 10000 applications examined);

  • industrial designs — 1 JC (more than 5000 applications examined).

Complaints concerning the examination of applications for intellectual property objects are mainly of subjective character (mistakes of examiners). Filing of JC is mainly due to lack of compliance with the rules and procedures of applications examination and as a result breach of time limits for their consideration.

7 justified complaints were concerning the registration of contracts, which is 0,06% from the total number of the registered contracts on the alienation of exclusive rights in inventions, utility models, industrial designs and trademarks and on the transfer of rights to use them.

3 JC were concerning the actions connected with alterations of the protection titles and their prolongation.

Complaints concerning registration of contracts and alterations are mainly explained by lack of compliance with the procedures for registration of contracts set forth by legal acts, which led to increase in the timeframe of their registration.

The remaining justified complaints were concerning the actions connected with the consideration of objections and claims in the chamber on patent disputes, timeframe of transfer of data on registered intellectual property objects for publication, conduction of automated search using the automated system “Russian Federation Trademarks” (AS “TM RF”), conduction of international search.

Lack of technical means of the process of preparation of application data for publication, insufficiency of information search explained by delays of input of data in the AS “TM RF” due to unplanned significant increase of initial applications, lack of coordination of activities of divisions conducting different types of searches and examination in compliance with international agreements and other reasons were determined as the objective reasons for justified complaints’ filings. Measures aimed at the elimination of subjective and objective reasons of complaints were undertaken.

In cases of breach of rights and legal interests of individuals (less than 2,4%  of the total number of requests) measures in respect of the violators have been undertaken, organizational and other measures to prevent similar future violations have also been developed.

Control of conduction of international searches and searches on orders of the WIPO International Bureau (WIPO IB) for developing countries and orders of Rospatent’s foreign partners (the EAPO, Turkish Patent Office, CIS patent offices) has also been conducted in 2008.

Since the time limits for sending international search reports, written communications of the international search authority and the reports of the international preliminary examination to the WIPO IB and the applicant are strictly defined, the control over the observance of time limits of preparation of reports and opinions has been conducted on each international application.

Besides, the conformity of the search report, written communications and examination opinions on each international application with the requirements of the Guidelines for international search and international preliminary examination was also checked.

804 search reports and written communications of the international search authority and 112 opinions of the international preliminary examination have been checked in 2008. Detected drawbacks have been eliminated. The most part of drawbacks was due to lack of justified statement on the inventive step in written communications and opinions of the examination.

The control of the international search reports, written communications and opinions of the international preliminary examination in respect of examination of novelty, inventive step and industrial applicability and other requirements to international search reports and opinions of the international preliminary examination resulted in special classes for the examiner staff of the sectoral divisions.

In 2008 the Quality Service of Rospatent has conducted checks concerning the evaluation of conformity of drafting the examination documents with the requirements of the legislation, including checks of drafting new examination documents prepared to be sent to the applicants for inventions, utility models and industrial designs under Part IV of the Code; analysis of notifications on the results of the patentability examination; analysis of practice of invalidation of examination decisions on applications for inventions, utility models and industrial designs. In cases where violations of the legal requirements by young examiners due to insufficient knowledge were detected, additional trainings were conducted, as individually, as internally in the divisions, and also using the OLYMP automated system.

In the course of implementation of anti-corruption measures regular control of the time limits of examination of applications for inventions, utility models, industrial designs and trademarks was conducted; checks of time limits of registration of contracts on alienation of exclusive rights in inventions, utility models, industrial designs and trademarks and transfer of rights for their use were also conducted.

The checks detected lack of success in meeting the set technological terms for applications’ consideration.

It is explained by the fact that in respect of all objects excluding industrial designs an increase in the number of applications has been registered. In order to decrease the time of consideration of applications by the examiners divisions 3%  more than the planned number of patent applications have been considered, 7% more of utility models applications, 5% more of trademark applications, 14% more of applications for industrial designs.

Failure to meet the time limits for registration of certain contracts is due to constant increase in the number of received applications for registration of contracts and also by different numbers of objects contained in one contract. To eliminate the cases of failure to meet the time limits work on organization of stable process of sending the files of registered documents is conducted, and also control over timely detection and separation of contracts into separate cases when the latter contain materials on other cases.

Besides the checks of the legality of the actions of the examiners in 2008 checks of timeliness of answers to the requests of bailiffs and also checks within technological supervision over the instructions of the office documents were conducted: compliance with the procedure of preparation to the publication of data on inventions that seized to be secret; compliance with the procedure of paper flow on the applications and patents for identical inventions and utility models of one inventor; implementation of court prescriptions and further publication of data on their implementation in the section “Open Registers” on the website of Rospatent.

Issues concerning the activities of Rospatent have been personally discussed with 6 individuals at Rospatent.

Rospatent constantly conducts work on ensuring the realization of the rights of the individuals to send requests into federal executive bodies, improvement of the quality of protection of their constitutional rights and legal interests.

In compliance with the recommendations of the Administration of the President of the Russian Federation on the procedure for consideration of Russian citizens a draft administrative regulation of the Federal Service for Intellectual Property, Patents and Trademarks on the execution of the state function on consideration of requests of individuals was elaborated in 2008 (currently sent for coordination to the Ministry of Education and Science of the Russian Federation and further registration in the Ministry of Justice of the Russian Federation).

Regular analysis of the status of work with requests of individuals at weekly operative meetings has been brought into the practice of Rospatent’s work. Attention is paid to the comments and proposals contained in the requests of the individuals with a view to further take them into account in the legislative proposals. In cases when violations of rights and legal interests are detected measures aimed at their elimination and prevention are developed (administrative measure, internal normative acts).

In order to improve the work on providing consultations and reference information to individuals a consultancy service was created in Rospatent in June 2008. The work of the service is supervised by the Head of the Quality Service of Rospatent. The task of the service is not only to provide consultations (in particular, by telephone) in the field of legal protection of results of intellectual activities, but also the analysis and systematization of issues, and determination of the most commonly asked question and their transfer in due course to respective specialists for answers and publication and/or uploading to the website of Rospatent.



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