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Annual reports 2009 - Section 1

 



Annual Report of Rospatent 2009

 

Distinguished ladies and gentlemen!

I have the honor to present 2009 Annual Report of the Federal Service for Intellectual Property, Patents and Trademarks (Rospatent).

In 2009 Rospatent was actively participating in achieving the goals related to the legal protection of the results of intellectual activity, as well as to their utilization within the framework of creation of innovation economy in the country. Within the limits of its competence Rospatent has taken part in achieving the tasks to develop science and technology.

The world financial crisis affected and continues to affect negatively many trends of world and national economy, including international and national systems of protection of intellectual property. The current economic situation resulted in some decrease of the number of applications filed in respect to certain objects of industrial property (inventions, industrial designs and trademarks). However, there was an increase of the number of applications filed in respect to utility models, computer programs, topographies of integrated circuits (layout designs) and databases.

In general the figures of consideration of applications for the results of intellectual activity planned for 2009 have been reached and even exceeded at average 7%.

The work of staff of Rospaten and, before all, the expert staff was aimed at raising quality of examination of applications. Significant amount of work has been done in three main directions related to the quality of examination of applications. In particular, development of methodological support of examination of applications; monitoring of implementation of administrative regulations of executing functions incurred by the State to grant legal protection to the objects of patent rights and means of individualization; supervision over administrative procedures of examination of applications. The said work has been resulted in reduction of time frames of examination.

The year of 2009 was marked with the extension of international cooperation in the area of intellectual property, aimed at tangible results to ensure the protection of the interests of the Russian Federation. The internal procedures have been completed to accede to the Treaty on the Law of Parents, which has been enforced in respect with Russia since August 12, 2009. The memorandums to carry out pilot projects on “Patent Prosecution Highway” (PPH) with Japan Patent Office (JPO) and Korean Intellectual Property Office (KIPO) have been developed and signed.

Summarizing the outcome of the past year, one could be assured that all the goals put before us were achieved in full and I sincerely appreciate all, who facilitate this process in good faith.

I’d like to express my hope that the information contained in 2009 Report on the activity of Rospatent would be useful for you.

Yours sincerely,
Dr. Boris Simonov The Director General
The Federal Service for Intellectual Property,
Patents and Trademarks (Rospatent)

 

 

Throughout 2009 the efforts have been made to achieve one of the most important strategic goal of Rospatent’s development, i. e. to create the environment, facilitating the most comprehensive realization by physical persons and legal entities of their right for legal protection of the results of intellectual activity and means of individualization, as well as ensuring their protection under the circumstances of codified civil law, regulating the area of intellectual property, and entrance into force of Part IV of the Civil Code of the Russian Federation (hereinafter referred to as the Code).

During the past year a number of administrative regulations took effect. Those regulations supplementing the legal documents in effect defines the official functions of Rospatent’s competence incurred by virtue of the Government Resolution № 299 of June 16, 2004 (as amended), in particular:

  • Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks to fulfill the functions incurred by the State on official registration of contracts on transfer of the right for inventions, utility models, industrial designs, trademarks, service marks, protectable computer programs, databases, layout designs (topologies) of integrated circuits as well as the contracts of commercial concession for the use of objects of intellectual property, protectable under the patent legislation of the Russian Federation was endorsed by the Ordinance of the Ministry of Education and Science № 321 of October 29, 2008 (registered by the Ministry of Justice on March 5, 2009, ref. № 13482, published on June 1, 2009 in the Bulletin of normative acts of federal bodies № 22);
  • 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 to the invention concerning substances, for application of which the permission of the competent federal body is required under the Russian legislation, as well as on the extension of the term of patent’s validity for industrial design, certificate (patent) for utility model, certificate on the registration of trademark, service mark, certificate for the right to use appellation of origin, as well as restoration of validity term of patent for invention, utility model, industrial design terminated for failure to pay maintenance fee, was endorsed by the Ordinance of the Ministry of Education and Science № 322 of October 29, 2008 (registered by the Ministry of Justice on March 23, 2009, ref. № 13565, published on June 29, 2009 in the Bulletin of normative acts of federal bodies № 26);
  • Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks to fulfill the functions incurred by the State on organization of filing of applications for official registration of layout designs (topographies) of integrates circuits, consideration and issuance in due course of Russian certificate, was endorsed by the Ordinance of the Ministry of Education and Science № 323 of October 29, 2008 (registered by the Ministry of Justice on January 19, 2009, ref. № 13116, published on April 20, 2009 in the Bulletin of normative acts of federal bodies № 16);
  • Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks to fulfill the functions incurred by the State on organization of filing of applications for official registration of computer programs and applications for official registration of databases, their registration, consideration and issuance in due course of the Russian certificate was endorsed by the Ordinance of the Ministry of Education and Science № 324 of October 29, 2008 (registered by the Ministry of Justice on December 17, 2008, ref. № 12893, published on February 2, 2009 in the Bulletin of normative acts of federal bodies № 5);
  • Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks to fulfill the functions incurred by the State on organization of filing of applications for utility model, their consideration, examination and issuance in due course of the Russian patent for utility models was endorsed by the Ordinance of the Ministry of Education and Science № 326 of October 29, 2008 (registered by the Ministry of Justice on December 24, 2008, ref. № 12977, published on March 9, 2009 in the Bulletin of normative acts of federal bodies № 10);
  • Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks to fulfill the functions incurred by the State on organization of filing of applications for invention, their consideration, examination and issuance in due course of the Russian patent for invention was endorsed by the Ordinance of the Ministry of Education and Science № 327 of October 29, 2008 (registered by the Ministry of Justice on February 20, 2009, ref. № 13413, published on May 25, 2009 in the Bulletin of normative acts of federal bodies № 21);
  • Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks to fulfill the functions incurred by the State on organization of filing applications for official registration of appellation of origin and for granting the right to use this appellation of origin or the applications to grant the right to use of prior registered appellation of origin, their consideration, examination and issuance in due course of the Russian certificates was endorsed by the Ordinance of the Ministry of Education and Science № 328 of October 29, 2008 (registered by the Ministry of Justice on February 6, 2009, ref. № 13413, published on April 20, 2009 in Bulletin of normative acts of federal bodies № 16).

In the reported year the draft administrative regulations have been actively developed and coordinated by Rospatent in pursuance with the priority Scheduled Plan of the federal authorities under the Ministry of Education and Science to develop in 2007–2008 administrative regulations to fulfill state functions and rendering state services, which was endorsed by the Ordinance of the Ministry of Education and Science № 334 of December 21, 2006.

The draft administrative regulations of Rospatent placed on its official web site include the following state functions of Rospatent:

  • recognition of granting legal protection invalid and preterm termination of legal protection of trademark, service mark, appellation of origin, recognition of patent invalid and annulations of patent for invention, industrial design, of patent (certificate) for utility model, preterm termination of patent for invention, industrial design and patent (certificate) for utility model, annulations of the record in State Register of Russian appellations of origin and the certificate, as well as termination of validity of certificate on the exclusive right for appellation of origin;
  • organization of filing applications for trademarks and service marks, their registration and expertise, issuance in due course of Russian certificate for trademark, service mark, well-known mark of the Russian Federation;
  • official registration of deals concerning the utilization of single technologies of civil destination within the territories of foreign states.

The entrance into force of the developed draft administrative regulations would become another stage of strategic orientation of IP system at facilitating the creation of strong knowledge-based economy of the country with a global character, promotion of innovation-oriented investment and incentives of entrepreneurship.

Under reforming the legislation the issues of quality of examination of applications still are of priority for Rospatent. The realization of state program of combating corruption raised the importance of this particular direction.

The events, aimed at raising quality of examination of applications for objects of patent rights and means of individualization, have been reflected in the Strategy of Rospatent’s development, as well as in the Complex plans up to 2010 and up to 2015.

In order to achieve the goals defined Rospatent along with the Federal Institute of Industrial Property (FIPS) has made during 2009 a great deal of work in three main directions related to quality of examination of applications:

  • development of methodological basis of examination of applications;
  • monitoring of application of administrative regulations concerning fulfillment of state functions to grant legal protection to the objects of patent rights and means of individualization;
  • supervision over the pursuance of the administrative procedures related to consideration of applications.

The expected results were aimed at avoiding practice of dual standards, raising quality of examination of applications, maintaining the transparency of Rospatent’s activity.

In respect with methodological basis for examination of applications a set of methodological recommendations was developed and endorsed:

1. Recommendations on examination of applications for inventions were endorsed by the Ordinance of Rospatent № 199 of December 31, 2009;

2. Recommendations on examination of applications for utility models were endorsed by the Ordinance of Rospatent № 196 of December 31, 2009;

3. Recommendations on examination of applications for industrial designs were endorsed by the Ordinance of Rospatent № 48 of March 31, 2009;

4. Recommendations on implementation of the Civil Code provisions related to the consent of the right holder for the registration of similar trademark were endorsed by the Ordinance of Rospatent № 190 of December 30, 2009;

5. Methodological recommendations on defining similarity of goods and services while examining the applications for official registration of trademarks and service marks were endorsed by the Ordinance of Rospatent № 198 of December 31, 2009;

6. Recommendations on some issues of examination of signs taken as labels and polygraph packing were endorsed by the Ordinance of Rospatent № 170 of November 30, 2009;

7. Methodological recommendations on check up of similarity and identity of the filed signs were endorsed by the Ordinance of Rospatent № 197 of December 31, 2009;

8. Guidelines on the request while examining the application for invention were endorsed by the Ordinance of Rospatent № 195 of December 31, 2009.

Thus, Rospatent managed to update the existing recommendations and brought them into compliance with the provisions of Part IV of the Code, as well as with administrative regulations in both the numerical references to the legislation and legal text of the codified legislation. In order to avoid dual standards the previous recommendations were amended in a manner to reflect the implementation practice, especially with respect to the issues not fully covered by Part IV of the Code and administrative regulations. All the uncertainties of previous recommendations concerning possible unfair actions of the applicant were lifted.

As in previous years the development of methodological approaches to such an IP object as “industrial design” was in the focus of attention of Rospatent. Tremendous efforts have been made to identify the position on the issue of checking the patentability of IP object claimed to be an invention. The results of this work were made public during the annual Science and Practical conference held in Rospatent in October 2009.

It was the first time when Rospatent has developed the Recommendations on checking the contracts on disposal of the exclusive right to the results of intellectual activity and means of individualization. Those Recommendations endorsed by the Ordinance of Rospatent № 186 of December 29, 2009 were clarified the formal checking of compliance of documents submitted for official registration of contracts to the existing requirements. The methodological approaches are based on the provisions of the Code and appropriate administrative regulation and take into account Rospatent’s practice and experience, as well as on the results corresponding R&D.

In order to develop unified approaches for taking note of the patent fees for legal actions in respect to objects of patent rights and means of individualization, in the reported year the appropriate documents were actualized due to the endorsement of the new Status of patent and other fees payable for legal actions concerning patent for invention, utility model, industrial design, official registration of trademark and service mark, official registration and granting exclusive rights to appellations of origin, as well as official registration of transferring of the exclusive rights to third parties and contracts on disposal of such rights. The Status was endorsed by the Government Resolution № 941 of December 10, 2008.

In 2009 the Division of quality along with other FIPS units launched the process of monitoring the implementation of administrative regulations. This monitoring would be continued in 2010. As a result of this work appropriate proposals would be submitted to amend corresponding administrative regulations.

In order to ensure the quality of examination the activity of Rospatent in 2009 was aimed at realization of administrative procedures related to the right of the applicant to appeal the actions (failure to act) of officials, as well as their decisions. Those procedures of appeal are set forth in administrative regulations.

Within the reported period the implementation of administrative regulations was under control while considering the requests of citizens and legal entities.

1.1. Legal Protection of Inventions and Utility Models

In 2009 г. filing, registration and consideration of the applications for patents for invention or utility model were carried out in accordance with Part IV of the Code and the Administrative Regulations enacted during the year. Thus, the Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks to fulfill the functions incurred by the State on organization of filing of applications for utility model, their consideration, examination and issuance in due course of the Russian patent for utility models was enacted on March 20, 2009, the Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks to fulfill the functions incurred by the State on organization of filing of applications for invention, their consideration, expertise and issuance in due course of the Russian patent for invention was enacted on June 5, 2009.

The vast majority of provisions of those administrative regulations were based on the provisions of previous Rules of filing and consideration of applications for patents for inventions and utility models. However, the administrative regulations include new provisions due to the novelties of Part IV of the Code.

The existing implementation practice of granting legal protection to inventions and utility models was reflected in the enacted administrative regulations. The novelties in granting legal protection to inventions and utility models required additional efforts of expert staff. Training courses and workshops were organized for expert staff, as well as the methodological recommendations were developed for the area of examination of inventions and utility models. Further development of methodology for examination of inventions and utility models and unification of implementation practice were in the focus of attention under the renovated legislation.

The complicated world financial situation insignificantly affected the level of innovation activity, although the level of filing applications for patents for inventions decreased by 7,85% as compared with 2008. This decrease relates equally to national and foreign applicants. The plan on consideration of application for patents for inventions (40 000 applications) was fulfilled at 100,2%.

In 2009 the reorganization of profile expert units was made, as a result of this reorganization led to lifting all the functions of units not directly pertaining to the examination of inventions in substance. Such lifted functions are now incurred to a separate unit of processing applications and fees.

The new Division III was established. This division consists of the above mentioned new unit, the unit of formal examination of applications for inventions and the unit of registration and supervision over the patent validity. This structure allows reaching the unified approaches on payments of fees, as well as on issues not related with applications’ consideration in substance.

The plan for issuing patents for utility models (10 000 applications) was fulfilled at 119,5%. The decisions on applications were posting quarterly during the year with a tendency for reducing consideration period.

However, the process of changing the structure of FGU FIPS linked with facilitation of the process of examination of applications for inventions and utility models was not completed. The change in implementation practice while examining utility models, conditioned by the new administrative regulation, required raising the level of qualification of experts involved in consideration of applications for utility models. There was a decision taken to exploit experts from profile units in examination of utility models. Moreover, due to irregular increase of applications for different IP objects there was a necessity in dissemination of different IP objects among expert units. In 2009 a great deal of work was done for the second stage of reorganization of FGU FIPS.

Besides examination of application for inventions and utility models, 636 information searches have been done in 2009 for Patent Office of Turkey, 709 international searches, 674 searches for Eurasian Patent Office and 683 searches for CIS countries.

FGU FIPS specialists took part in a number of seminars and roundtables devoted to the enacting of new administrative regulations. Those seminars were held in all the Russian regions.

The cooperation with the International Bureau of World Intellectual Property Organization was continued either in the area of search and information, or in the area of consideration of applications filed through PCT. Rospatent took part in a new program of cooperation in patenting inventions - Patent Prosecution Highway (РРН).

In the reported year a great deal of attention was drawn to automation of examination processes. The experts continued exploitation of the extended version of searching system PatSearch.

The basic data on filing applications for patents for inventions and utility models in 2009 are given in Tables 1.1.1–1.1.6, as well as in statistical Tables 1–16 of Annex 3.

Table 1.1.1

INVENTIONS: Filings for the Russian Federation Patents

Indices

2005

2006

2007

2008

2009

2009 vs. 2008 (%)

Filed with Rospatent, Total
Including:

32254

37691

39439

41849

38564

92,15

by Russian Applicants

23644

27884

27505

27712

25598

92,37

by Foreign Applicants

8610

9807

11934

14137

12966

91,72

Considered at the Stage of Expertise and Decisions Made:

30387

32416

35337

38021

40085

105,43

Decisions on Granting, Including:

24916

25382

28212

29903

32144

107,49

to Russian Applicants

20749

20323

22066

22668

23502

103,68

to Foreign Applicants

4167

5059

6146

7235

8642

119,45

Decisions on Refusal, Including:

675

768

781

1230

959

77,97

to Russian Applicants

632

689

693

1078

816

75,70

to Foreign Applicants

43

79

88

152

143

94,08

Decisions on Withdrawal, Including:

4796

6266

6344

6888

6982

101,36

to Russian Applicants

3512

4582

4712

4503

4060

90,16

to Foreign Applicants

1284

1684

1632

2385

2922

122,52

Table 1.1.2

INVENTIONS: The Russian Federation Patents Issued

Indices

2005

2006

2007

2008

2009

2009 vs. 2008 (%)

Patents Issued Total,
Including:

23390

23299

23028

28808

34824

120,88

To Russian Applicants

19447

19138

18431

22260

26294

118,12

To Foreign Applicants

3943

4161

4597

6548

8530

130,27

Table 1.1.3

INVENTIONS: Number of Valid Russian Federation Patents as of 31.12.2009

Valid as of December 31, 2008

147067

Patents for Inventions Issued in 2009

34824

Ceased to be Valid in 2009 (upon expiry of the validity
term and/or due to non-payment of the patent
duty to support the validity)

11627

Valid as of December 31, 2009

170264

Table 1.1.4

UTILITY MODELS: Dynamics of Filings

Indices

2005

2006

2007

2008

2009

2009 vs. 2008 (%)

Filed with Rospatent, Total,
Including:

9473

9699

10075

10995

11153

101,44

By Russian Applicants

9082

9265

9588

10483

10728

102,34

By Foreign Applicants

391

434

487

512

425

83,01

Considered at the Stage of Expertise and Decisions Made:

8349

10362

10318

10715

11953

111,55

Decisions on Granting, Including:

7730

9614

9683

10000

11094

110,94

By Russian Applicants

7423

9213

9224

9555

10710

112,09

By Foreign Applicants

307

401

459

445

384

86,29

Decisions on Refusal, Including:

12

12

16

25

42

168,00

By Russian Applicants

12

12

15

25

39

156,00

By Foreign Applicants

0

0

1

0

3

Decisions on Withdrawal, Including:

607

736

619

690

817

118,41

By Russian Applicants

589

689

591

648

775

119,60

By Foreign Applicants

18

47

28

42

42

100,00

Table 1.1.5

UTILITY MODELS: Dynamics of the Russian Patents Issued

Indices

2005

2006

2007

2008

2009

2009 vs. 2008 (%)

Patents Issued Total
Including:

7242

9568

9757

9673

10919

112,88

By Russian Applicants

6958

9195

9311

9250

10500

113,51

By Foreign Applicants

284

373

446

423

419

99,05

Table 1.1.6

UTILITY MODELS: Number of Valid Certificates of the Russian Federation
as of December 31, 2009

Valid as of December 31, 2008

41092

Certificates for Utility Models Issued in 2009

10919

Ceased to be Valid in 2009 (upon expiry of the validity term and/or
due to non-payment of the patent duty to support the validity)

3841

Valid as of December 31, 2009

48170

1.2. Legal Protection of Industrial Designs

The level of filing applications for patents for industrial designs in 2009 decreased by 20,61%, as compared with the previous year (see. Table 1.2.1). The period of examination of applications for patents for industrial designs in substance was reduced up to 7 months. The plan of consideration of applications for patents for industrial designs in 2009 г. (4 550 applications) was exceeded by 20%.

During the year the unified practice of implementation of Part IV of the Code and 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 patents for industrial designs in due course has been being formed.

The main attention was concentrated on the issues of implementation of novelties of the legislation, conditioned by the processes of harmonization with legislation of the European countries in the area of industrial designs. In particular, it concerns the provisions of the regulation on the extended list of objects protected as industrial designs, which includes the components of the product and self functioned parts of the product, as well as the requirements to use of lines in drawings of the products pretended to be industrial designs.

Due to the enactment in 2009 of the 9-th version of the International Classification of Industrial Designs the list of products considered to be industrial designs was extended. Graphical images were included in Class 32 of this Classification as self functioned part of the product.

In 2009 the work of training of expert staff of industrial designs unit to act under the revised legislation was continued. The main attention was focused on methodological basis for application examination. The Ordinance of Rospatent dated on March 31, 2009 № 48 has introduced the Recommendations on examination of applications for industrial designs. The Recommendations contains clarifications on implementation of appropriate provisions of Part IV of the Code and corresponding regulation.

The Recommendations on examination of applications for industrial designs is a sophisticated illustrated document, which includes, firstly, the issues of choosing from the composition of the outlook of the product the substantive signs of industrial designs and, secondly, the issues of checking of novelty and origin. The document was developed with due note of the appropriate experience of the European Union. The most remarkable part of the Recommendations is that the document for the first time clarifies the decree of the freedom of the designer while defining similarity of two industrial designs.

The separate attention during the year was drawn to strict following the time limits of administrative procedures while considering applications for industrial designs.

In 2009 the interest of applicants in holding negotiations and expert meetings in the process of consideration of applications for industrial designs was noted. During the year more than 200 expert meetings have been held.

In order to ensure the transparency of administrative procedures all the information on document processing of applications for industrial designs was reflected in Open registers of industrial designs placed on web site of Rospatent.

With the aim of experience exchange in the end of the year the study visit of officials of Khazakh patent office was organized.

The main data on applications for and issuance of patents for industrial designs are given in Tables 1.2.1–1.2.3 and in statistical Tables of Annex 3.

Table 1.2.1

INDUSTRIAL DESIGNS: Dynamics of Filings

Indices

2005

2006

2007

2008

2009

2009 vs. 2008 (%)

Filed with Rospatent,
Including:

3917

4385

4823

4711

3740

79,39

By Russian Applicants

2516

2627

2742

2356

1972

83,70

By Foreign Applicants

1401

1758

2081

2355

1768

75,07

Considered at the Stage of Expertise and Decisions Made:

3082

4446

4377

5194

5460

105,12

Decisions on Granting, Including:

2579

3908

3636

4360

4538

104,08

To Russian Applicants

1726

2317

2142

2273

2055

90,41

To Foreign Applicants

853

1591

1494

2087

2483

118,97

Decisions on Refusal, Including:

81

81

110

179

120

67,04

To Russian Applicants

63

51

82

139

99

71,22

To Foreign Applicants

18

30

28

40

21

52,50

Decisions on Withdrawal, Including:

422

457

631

655

802

122,44

To Russian Applicants

315

384

513

495

614

124,04

To Foreign Applicants

107

73

118

160

188

117,50

Table 1.2.2

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

Indices

2005

2006

2007

2008

2009

2009 vs. 2008 (%)

Patents Issued Total,
Including:

2469

2675

4020

3657

4766

130,33

By Russian Applicants

1630

1753

2298

2062

2184

105,92

By Foreign Applicants

839

922

1722

1595

2582

161,88

Table 1.2.3

INDUSTRIAL DESIGNS: The Quantity of Valid Patents
of the Russian Federation as of 31.12.2009

Valid as of December 31, 2008

18451

Patents issued in 2009

4766

Ceased to be Valid in 2009 (upon expiry of the validity term and/or due
to non-payment of the patent duty to support the validity)

816

Valid as of December 31, 2009

22401

1.3. Legal Protection of Trademarks and Service Marks

In 2009 examination of applications for trademarks and service marks (hereinafter referred to as trademark), issuance of certificates for trademarks and the registration of contracts in respect to trademarks in Rospatent were effected in accordance with Part IV of the Code.

The work to develop proposals to amend Part IV of the Code and further develop methodological recommendations related to different aspects of examination, registration and granting legal protection to trademarks has been continued.

The issues of legal protection of trademarks have been numerously discussed at conferences, seminars and meetings held in different Russian regions. Those issues were raised at XII Moscow international fair of industrial property «Archimedes–2009» and at 13 annual Scientific and Practical conference of Rospatent «Legal protection of IP objects under administrative regulations».

In recent years the national and foreign business entities expressed their interest to legal protection of their trademarks in Russia. That ensured the constant increase of filing applications to Rospatent for registration. However, some decrease of filing applications in 2009, it seems, was connected with economic crisis affected the decrease of activity.

Thus, in 2009 the number of applications for registration of trademarks was equal to 50107. This figure is less by 12,3%, as compared with 2008 (57112). The decrease in filing applications relates to both Russian applicants (by 11,9%) and foreign applicants (by 12,7%), including applicants using procedures of Madrid agreement on international registration of marks and the Protocol thereto (by 9,7%) (ref. Table 1.3.1).

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

2005

2006

2007

2008

2009

2009 vs. 2008 (%)

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

47087

52984

57262

57112

50107

87,73

By Russian Applicants

26460

29589

31502

30024

26448

88,09

By Foreign Applicants, Including:

20627

23395

25760

27088

23659

87,34

Under the Madrid Agreement or Protocol

12701

14567

15388

16738

15113

90,29

Considered at the Stage of Expertise and Decisions Made:

35254

40321

48186

50586

55852

110,41

Decision on Granting

29291

33197

39634

43002

46440

107,99

Decision on Refusal

5577

6805

8077

7333

9106

124,18

Decision on Withdrawal

386

319

475

251

306

121,91

However, the volume of applications considered in 2009 increased by 10,4%, namely, in 2008 50586 applications were considered and in 2009 this number was equal to 55852 (while the plan foresaw consideration of 52550 applications) (ref. Table 1.3.1).

46440 positive decisions were carried out and 36436 trademarks were registered (ref. Table 1.3.2).

Table 1.3.2

TRADEMARKS AND SERVICE MARKS: Dynamics of Registration

Показатели

Indices

2005

2006

2007

2008

2009

Trademarks and Service Marks Registered,
Including:

29447

29199

30724

36617

36436

For Russian Applicants

14389

13694

14993

19895

19585

For Foreign Applicants

15058

15505

15731

16722

16851

Including under the Madrid Agreement or Protocol

10185

10240

9537

8518

8101

Renewals of Registrations

3475

4419

8015

6431

6690

Including:
For Russian Applicants

1545

2243

4160

3550

4243

For Foreign Applicants

1930

2176

3855

2881

2447

Registration Valid By the End of the Year

186352*

197055*

207562*

222208*

246607*

*Without regard for International applications filed under the Madrid Adreement

The increase of volume of consideration of applications became possible due to the employment of full staff of the unit of trademarks (more than 20 officials). One third of this staff is the graduates of the Russian State Institute of Intellectual Property.

To meet the challenge to process with the above mentioned volume of applications a set of measures aimed at reducing time consuming exercises through automation of technological procedures, as well as organizational facilitation of examination process was realized. The realization of those measures was launched in 2007 and continued in 2009. The time limits for information exchange on application for trademarks filed under Madrid agreement on international registration of marks and the Protocol thereto have been reduced significantly due to electronic exchange between WIPO and Rospatent in respect to posting and receiving corresponding notifications.

Besides that, under Part IV of the Code the work on facilitating the methodological basis for examination of trademark, aimed at raising quality of examination and excluding dual standards, has been continued. The results of this work were reflected in actualization of previous methodological recommendations on signs filed in respect with identity and similarity, defining whether goods and services are homogeneous while examining applications for registration of trademarks and service marks and on issues of defining signs filed, trademarks and service marks for certain types of goods and cervices as public domain.

Along with the above mentioned the new recommendations and information letters have been developed relating to:

  • certain aspects of examination of signs embodying labels and polygraph packing;
  • implementation of the provisions of Part IV of the Code, concerning the consent of the right holder for the registration of the similar trademark;
  • examination of signs filed for registration as trademarks whether they are identical or confusingly similar to appellations of origin;
  • certain aspects of examination of trademarks used in technical regulations and national (state) standards.

Raising quality of examination and development of appropriate methodological documents have been carried out with due note to the experience of some foreign countries, information received while participating in the events held under the Madrid system and the Nice Agreement on international classification of goods and services, as well as to the materials and outcome of the WIPO Standing Committee on trademarks, industrial designs and geographical indications, which activity focused on the most actual problems of the area of trademarks.

In 2009 Rospatent has continued its activity to consider applications to recognize trademarks as well-known marks in the Russian Federation. As per 01.01.2010 the List of well-known marks contains 85 trademarks. Thus, in 2009 Rospatent took the decision to recognize 9 trademarks as well-known marks (ref. Table 1.3.3).

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

2006

2007

2008

2009

On Recognition as Well-Known

Recognized

17

12

7

9

Not Recognized

7

6

4

7

1.4. Legal Protection of Appellations of Origin

In 2009 the examination of applications for official registration of appellations of origin, granting exclusive rights for prior registered appellations of origin and issuing certificates of exclusive rights to appellations of origin have been carried out in accordance with Part IV of the Code and the Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks to fulfill the functions incurred by the State on organization of filing applications for official registration of appellation of origin and for granting the right to use this appellation of origin or the applications to grant the right to use of prior registered appellation of origin, their consideration, examination and issuance in due course of the Russian certificates (hereinafter referred to as administrative regulation).

In 2009 30 applications for appellations of origin have been filed with Rospatent (in 2008 г. 35 applications have been filed). Subsequently, the number of issued certificates for exclusive rights has been decreased. In particular 9 certificates have been issued in 2009 and 14 certificates had have been issued in 2008.

However, the positive aspect of this situation is that foreign applicants became more active in filing applications for appellations of origin in Russia. At present the examination of 6 applications from Germany, Italy and Armenia are under way.

Noted low quality of applications and issuing certificates for appellations of origin had objective reasons. In particular, the competent federal authorities defined by Russian Government (Ministry of Agriculture and Ministry of Health and Social Development) had not issued their conclusions to the applicants. Such conclusions are required under Article 1522 of Part IV of the Code to be attached to the applications for appellation of origin; otherwise the appropriate examination cannot be carried out. Those situations occurred because the competent federal authorities were in process of developing administrative regulations to fulfill the functions incurred by the State to issue such conclusions. After endorsement of relevant administrative regulations in 2009 there was a period of adaptation. Rospatent at that time made efforts to adjust the content of the required conclusions to requirements of corresponding provisions of Part IV and appropriate administrative regulation.

In 2009 Rospatent has been coordinating its activity with other federal authorities in different directions. In particular, it was working on lifting impediments faced by the applicants while enjoying their exclusive rights to use appellations of origin. To reach this particular goal Rospatent was closely collaborated with the Federal Agency on technical regulation and metrology (Rostechregulirovanie) in respect to exclusion and prevention of the use of the geographical names in national standards and technical regulations.

For the sake of raising the awareness of the essence and the role of appellations of origin marking traditional goods of high quality, in 2009 Rospatent has communicated with 83 regions of the Russian Federation. Such communications were designed to activate regional authorities to identify appellations of origin to file applications for their registration.

In order to raise efficiency of the legal protection of appellations of origin in 2009 Rospatent has developed proposals to amend Part IV of the Code to include provisions ensuring supervision over the maintenance of specific quality of goods in respect of which appellations of origin have been registered.

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

Table 1.4

APPELLATIONS OF ORIGIN: the dynamics of filing applications and issuing
certificates on the exclusive right for appellation of origin in Russia

Indices

2005

2006

2007

2008

2009

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

28

41

27

35

30

From Russian Applicants

27

41

27

31

27

From Foreign Applicants

1

4

3

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

23

21

25

14

9

From Russian Applicants

23

19

24

14

9

from Foreign Applicants

2

1

1.5. Registration of computer programs, databases and topographies of integrated circuits and contracts for use of those objects

In 2009 administrative regulations defining the sequence of actions (administrative procedures), time tables and order while filing applications for official registration of computer programs, databases and topographies of integrated circuits have been enacted. Those administrative regulations defined also the procedures of consideration of the filed applications and of issuing certificates of official registration, as well as registration of contracts on granting the right and transfer of the exclusive right to those objects without contract.

Administrative regulation in respect to computer programs and databases was enacted on February 13, 2009 and administrative regulation in respect to topographies of integrated circuits was enacted on May 1, 2009.

Despite of the global economic crises, the number of filed applications for registration of computer programs, databases and topographies of integrated circuits in 2009 increased by 23%, as compared with 2008, and was equal to 8400 applications (7629 — computer programs, 701 — databases and 70 topographies of integrated circuits). Totally in 2009 7711 items were registered. This figure is exceeds by 17% the indices of 2008 (ref. Table 1.5.1).

Table 1.5.1

Number of Registered Computer Programs, Databases, Topographies
of Integrated Circuits in 2005–2009

Indices

2005

2006

2007

2008

2009

Total

Computer Programs

3282

4422

5308

6086

7057

26155

Databases

327

389

426

441

609

2192

Topographies of Integrated Circuits

32

30

55

66

45

228

Total

3641

4841

5789

6593

7711

28575

This increase became possible to certain extent, due to information transparency of Rospatent’s activity, creation of the environment for applicants to obtain all the necessary information, documents, consultation, including the opportunity of on-line communication.

In accordance with the provisions of Articles 1232:2, 1265:5 and 1452:7 of the Civil Code of the Russian Federation the registration of transfer of the exclusive right without contract has been carried out. In 2009 13 applications to register transfer of the exclusive right for computer programs, databases and topographies of integrated circuits without contract were filed. 5 applications have been satisfied (registered).

The number of registered contracts on transfer of the exclusive right for computer programs, databases and topographies of integrated circuits is given in Table 1.5.2.

Table 1.5.2

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

Indices

2005

2006

2007

2008

2009

Total

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

61 (61)

41 (41)

94

(94)

213

227

636

Contracts for the Partial Transfer of Exclusive Rights

14

4

13

С 2008 г.
не регистрируются

С 2008 г.
не регистрируются

31

Total

75

45

107

213

227

667

During the year FIPS specialists participated in the different events devoted to the legal protection of computer programs, databases and topographies of integrated circuits delivering reports. Such events were organized, for example, in the cities of Krasnodar, Moscow, Perm, St. Petersburg, Saransk, Cheboksary, Cheliabinsk.

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

The consideration and registration of contracts on the disposal of the exclusive right for inventions, utility models and industrial designs in 2009 have been carried out in accordance with Part IV of the Code and Rules on official registration of contracts on the disposal of the exclusive right for invention, utility model and industrial design, registered computer programs, databases and topographies of integrated circuits and transfer of the exclusive right on invention, utility model, industrial design, trademark, service mark, appellation of origin, registered computer programs, databases and topographies of integrated circuits without contract endorsed by Russian Government Resolution dated on December 24, 2008 № 1020.

The Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks to fulfill the functions incurred by the State on official registration of contracts on transfer of the right for inventions, utility models, industrial designs, trademarks, service marks, protectable computer programs, databases, layout designs (topologies) of integrated circuits as well as the contracts of commercial concession for the use of objects of intellectual property, protectable under the patent legislation of the Russian Federation was enacted on June 11, 2009.

In 2009 г. Rospatent has registered 2365 contracts in respect to patented inventions, utility models and industrial designs on alienation of the exclusive right and granting the right to use those IP objects to the total number of patents equal to 4503, what is lower than in 2008.

However, despite of the decrease of number of contracts registered, the increase of demand in civil turnover of patented IP objects should be noted. Thus, 3103 applications were filed in 2009 to register contracts in respect to around 6689 patented IP objects. In comparison 3118 applications were filed in 2008 to register contracts in respect to 5680 patented IP objects.

Table 1.6.1 contains data on dynamics of registered contracts for the period from 2005 up to 2009.

Table 1.6.1

Dynamics of Registration of License Contracts and Patent Assignment Contracts

Indices

2005

2006

2007

2008

2009

Patent Assignment Contracts*

1281

1451

1674

1524

1054

Exclusive License Contracts

167

212

276

215

228

Non-Exclusive License Contracts

674

751

902

1005

1083

Total Number of Contracts Registered

2122

2414

2852

2744

2365

Registered Requests to Grant a Free License

101

63

66

92

88

Published Requests to Grant a Free License

65

82

68

72

79

* With no regard to the transfer of the exclusive right to other persons without contract, e. i. as a result of inheritance or reorganization of the legal entity — right holder.

The comparative data on the number of registered contracts, including contracts of amendments and data on termination of registered contracts, and on number of contracted inventions, utility models and industrial designs are given in Table 1.6.4.

The data contained in Tables 1.6.1, 1.6.2 и 1.6.4 show the decrease, as compared with 2007 and 2008, of the total number of registered contracts and number of patents subjected to the said contracts.

Presumably the said data is conditioned by more strict requirements, introduced by administrative regulation. Such requirements relate to identification the name of the owner of the excusive right mentioned in documents on contract registration and in the Official register of inventions of the Russian Federation or in the Official register of utility models of the Russian Federation or in the Official register of industrial designs of the Russian Federation, as well as the need of official registration of the transfer of the exclusive right to the other person without contract, set forth in Article 1232:6 of the Code.

The share of contracts on alienation of the exclusive right for the patented IP object in the total number of registered contracts is equal to 44,6%. This figure is more than 10% lower than in 2008 (55,5%) (ref. Table 1.6.1).

At the same time the above mentioned data reflects the tendency noted in 2008 for the increase of number of registered license agreements in respect to inventions, utility models and industrial designs. This fact is proved by the absolute data on registration of the said agreements (ref. Table 1.6.1). The share of contracts on non-exclusive license registered in 2009 in the total number license agreements of is equal to 82,6%. This figure practically corresponds with the same indices of 2008 (82,4%).

During 2009 the patent holders filed 88 requests on the possibility of transfer to any person of the right to use inventions, utility models or industrial designs (open license). In respect to 79 patents there were publications on open license in the Official Bulletins. The noted dynamics of increase of published requests on open license gives the opportunity to presume that for a number of patent holders maintaining patent in the “open license” regime is more preferable (ref. Table 1.6.1).

The year of 2009, as compared with the previous year, was characterized by insignificant increase of number of contracts in respect to patented IP objects in the area of construction and construction materials, as well as by stability of the level of registration of contracts in chemistry and petrochemical areas of technique. Practically all the rest areas of technique, mentioned in Table 1.6.2, were characterized by the decrease of number of contracts in 2009. However, this decrease is conditioned by the general decrease of registered contracts as a sequence of those circumstances and cannot be reflect the reality economically objectively.

Table 1.6.2 contains the dynamics of registration of contracts in different areas of technique.

Table 1.6.2

Distribution of Registration Contracts by Fields of Technology

Fields of Technology

Contracts

2005

2006

2007

2008

2009

Light and Food-Processing Industries

105

160

211

186

173

Mechanical Engineering, Machine-Tool Industries, Tool Production

417

414

366

373

250

Medicine

249

295

120

140

76

Power Engineering, Electrical Engineering

223

220

390

364

247

Chemistry, Petroleum Chemistry

268

500

120

94

94

Electronics, Computer Sciences, Instrument Making

165

157

137

101

73

Metallurgy

69

181

245

186

133

Oil and Gas Production

136

100

434

449

338

Construction Engineering and Construction Materials

108

160

423

266

272

Others

382

227

406

585

709

Total

2122

2414

2852

2744

2365

The year of 2009 was characterized by raising the activity of the state enterprises, R&D institutions, Design Offices, high schools and non-government organizations as parties to the registered contracts. Thus, in 2009, as compared with 2008, the share of the state enterprises, R&D institutions, Design Offices, high schools in transfer and in obtaining the rights for inventions, utility models and industrial designs increased by 1,3% and by 2%, appropriately, while the share of non-government organizations decreased by 0,2% and increased by 0,7%, appropriately. It should be noted that in respect to physical persons as transferring party to the contract those indices decreased by 1%, and in respect to physical persons as receiving party to the contract those indices decreased by 2,6%. Table 1.6.3 contains the dynamics of activity of the parties to the registered contracts.

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

2005

2006

2007

2008

2009

2005

2006

2007

2008

2009

Natural Persons

33,0

16,4

36,0

33,9

32,9

9,6

4,1

10,9

10,2

7,6

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

8,3

3,1

8,0

7,6

8,9

4,0

1,5

3,8

2,7

4,7

Non-Governmental Organizations, Including:

58,7

80,5

56,0

58,4

58,2

86,4

94,4

85,3

87

87,7

Joint-Ventures

0,2

0,06

Foreign Companies

11,8

14,0

9,8

10,9

12,4

12,6

11,7

11,0

12,1

11,1

Others

3,4

0,1

2,4

0,1

The indices included in Table 1.6.4 are characterizing the tendency to the increase of number of patents subjected to one contract. This fact shows the interest of the receiving party to have the produced goods protected. As compared with 2008 the average indices of number of patent under one contract increased from 1,75 up to 1,9.

The attention should be drawn to the coincidence of data on contracts registered in 2009, see Tables 1.6.4 and 1.6.2.

Table 1.6.4

Number of Registered Contracts and that of Patents in respect of which
the Contracts were Registered

Indices

2007

2008

2009

Number of Registered Contracts (including amendments
and cancellations)/Number of Patents, Total

3082/5072

3076/5369

2365/4503

Including
Inventions

2089/3183

2077/3445

1550/2568

Utility Models

783/1450

720/1304

576/1305

Industrial Designs

210/439

279/620

239/630

That was conditioned by the introduction in 2008 of the new provision of the law on the need of the official registration of the transfer of the exclusive right to the other person without contracts. Such situations occur while reorganizing the legal entity being the right holder or in case of inheriting patent. As consequence of that one could observe the decrease of filing applications for registration of amendments to the registered contracts.

In accordance with Article 1241 of Part IV Rospatent is empowered to fulfill the state function officially register the transfer of exclusive right to the other party without contract with the right holder in cases and under the conditions, set forth by the law, including the cases of universal legal succession (inheritance, reorganization of legal entity), as well as while the property of the right holder is ceased. The registration of the transfer of the exclusive right for the results of intellectual activity is being effected by Rospatent in accordance with administrative regulation enacted in June 2009.

In 2009 Rospatent has filed 184 applications from right holders with the request to register the transfer of the exclusive right without contract in respect to 1349 patented inventions, utility models and industrial designs. The consideration of 122 applications has been completed in respect to 624 patented IP objects. The transfer of the exclusive right to the other person without contract has been registered under 54 applications in respect to 232 patented IP objects.

It should be noted that from the total number of satisfied applications in 19 cases the owners of the exclusive right and its successor were foreigners (58 patents), in 35 cases there were Russian persons (174 patent).

1.7. Registration of Contracts in Respect to Trademarks and Service Marks

Statistical data for 2009 includes the number of registered contracts and the total number of trademarks, on which the right holders transferred the exclusive right (contract of alienation of the exclusive right for trademark) or granted the right to use trademark (license contract).

Table 1.7.1 contains the data on the number of trademarks subjected to the registered contracts on alienation of the exclusive right and license contract within the period of 2005–2009.

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

2005

2006

2007

2008

2009

Trademark Assignment Contract,
Including:

4540

5039

7719

6767

6121

From Russian Owners

3524

4061

5748

5222

4888

From Foreign Owners

1016

978

1971

1545

1233

License Contracts
Including:

5574

8097

9288

8807

9157

From Russian Owners

4310

6142

6438

6367

5902

From Foreign Owners

1264

1955

2850

2440

3255

Table 1.7.2 contains the comparative data of nationalities (Russian of foreign) of parties to the contracts registered in 2006–2009.

Table 1.7.2

Belonging of Parties to Contracts to the Russian and Foreign Persons

Parties to Contract

Trademark Assignment Contract

License Contracts

2006

2007

2008

2009

2006

2007

2008

2009

The Parties are Russian Persons

3249

3152

2642

2323

5221

4254

4023

3947

The Parties are Foreign Persons

782

585

418

365

293

129

105

153

Transferor is a Russian Persons, Transferee is
a Foreign Persons

812

305

375

244

921

46

28

29

Transferor is a Foreign Persons, Transferee
is a Russian Persons

196

92

76

68

1662

743

770

787

Table 1.7.3 contains the comparative data on the number of registered contracts and the number of trademarks subject to registered contracts.

Table 1.7.3

Number of Registered Contracts And That of Trademarks In Respect
of Which the Contracts Were Registered

Type of contract

2007

2008

2009

Contracts

Trademarks

Contracts

Trademarks

Contracts

Trademarks

Trademark Assignment Contract,
Including:

4134

7719

3511

6767

3000

6121

From Russian Owners

3457

5748

3017

5222

2567

4888

From Foreign Owners

677

1971

494

1545

433

1233

License Contracts
Including:

5172

9288

4926

8807

4916

9157

From Russian Owners

4300

6438

4051

6367

3976

5902

From Foreign Owners

872

2850

875

2440

940

3255

Table 1.7.1 shows that in 2009 the total numbers of trademarks, on which the contracts on alienation of the exclusive right for trademarks or the license contracts were registered, as compared with the previous year decreased.

3000 contracts on alienation of the exclusive right for trademarks were registered in 2009. As a result of those registrations the exclusive right has been transferred in respect to 6121 trademark, including 4888 or 79,9% were trademarks of Russian right holders and 1233 or 20,1% were trademarks of foreign right holders (ref. Table 1.7.3).

The license contracts (in total 4916 contracts) were registered in 2009 in respect to 9157 trademarks, 5902 or 64,5% trademarks belonged to Russian right holders and 3255 or 35,5% belonged to foreign right holders.

In 2009 the tendency to increase of the number of trademarks on which the right holders granted permissions to use (9157 or 59,9% from total number of trademarks), as compared with the number of assigned trademarks (6121 or 40,1% from total number of trademarks). The comparison with the same data of 2008 (8807 or 56,5% and 6767 or 43,5%, appropriately) allows to presume that for right holders the license is the most preferable form of getting profit, than the alienation of trademark.

The activity of Russian right holders in the area of registering contracts on trademarks has been decreased. Table shows that the share of trademarks of Russian right holders subject to contracts was equal in 2009 to 70,6% vs. 74,4% in 2008. The number of registered contracts in respect to trademarks of Russian right holders decreased insignificantly and was equal to 82,6% of the total number of contracts (83,8% in 2008).

The share of registered contracts in respect to trademarks of foreign right holders increased and was equal to 17,4% of the total number of contracts (16,2% in 2008). The number of contracts of foreign right holders increased and was equal to 1373 contracts (1369 contracts in 2008).

Analyzing data on number of registered contracts and number of trademarks under those contracts, one could note that in 2009 the correlation between the number of registered contracts and the number of contracts on alienation of the exclusive rights to trademarks was at the same level as in previous years and was equal approximately 1:2 with insignificant increase in respect to license contracts (1:1,9 vs. 1:1,8 in 2008).

In 2009 Rospatent carried out the official registration of transfer of exclusive right to the other person without contract with the right holder under conditions set forth by the law, including the cases of universal правопреемства (inheritance, reorganization of legal entity), as well as while the property of the right holder is ceased, as prescribed by Article 1241 of Part IV of the Code. The procedure of the said registration is necessary for the successor of the exclusive right for the patented IP objects as prescribed by Article 1232:6 of Part IV of the Code.

Since June 2009 when the Administrative Regulation of the Federal Service for Intellectual Property, Patents and Trademarks to fulfill the functions incurred by the State on official registration of contracts on transfer of the right for inventions, utility models, industrial designs, trademarks, service marks, protectable computer programs, databases, layout designs (topologies) of integrated circuits as well as the contracts of commercial concession for the use of objects of intellectual property, protectable under the patent legislation of the Russian Federation was endorsed by the Ordinance of the Ministry of Education and Science № 321 of October 29, 2008 the procedure of registration of transfer of the exclusive right without contract has been being effected under the requirements of the said Administrative regulation.

Rospatent filed 646 applications with the request to register transfer the exclusive right without contract in respect to 937 trademarks. The consideration of 412 applications has been completed in respect to 563 trademarks. The transfer of exclusive right without contract was registered on 377 applications in respect to 528 trademarks. It should be noted that from the total number of satisfied applications 218 applications have been filed by foreigners as the owners of the exclusive right or its successor (230 trademarks) and 159 applications have been filed by Russian persons (298 trademarks).

1.8. Consideration of Administrative Disputes, Concerning the Legal Protection of the Results of Intellectual Activity and Means of Individualization

In accordance with Article 1248 of Part IV of the Code the protection of intellectual property in respect to filing and consideration of applications for issuing patents for inventions, utility models, industrial designs, trademarks and appellations of origin, to official registration of these results of intellectual activity and means of individualization, to issuing appropriate legal documents, as well as contesting the granting legal protection, is to be effected under administrative procedures (Article 11:2 of the Code) by the federal authority empowered in the area of intellectual property. Part IV of the Code provides for filing claims and appeals either directly with ROSPTENT, or with the Chamber of Patent Disputes established under Rospatent.

In 2009 the activity of Rospatent on protection of intellectual property was connected with the implementation of the Government Resolution of the Russian Federation dated on December 1, 2008 № 1791-r on merging of federal state entities “Federal Institute of Industrial Property” and “Chamber of Patent Disputes”.

As per the said resolution the term of reference of FGU FIPS is carrying out preparatory work for realization of legal actions on consideration by Rospatent in an administrative manner of disputes concerning legal protection of the results of intellectual activity and means of individualization and taking appropriate decisions. Thus, as a result of reorganization practically all the preparatory functions are incurred to one organization — FGU FIPS. Such a stay of play aimed at raising the effectiveness of staff, establishing single technological structure, exploitation of single automation and information databases and, as a result, reducing the staff of administrative and supporting staff, as well as increasing expert staff. In the result of such reorganization it became possible to reduce the time periods for considering cases by Rospatent.

In December of 2008 the following Ordinances were issued: Ordinance of December 16, 2008 № 147 “On reorganization of Rospatent’s subordinary entities” and Ordinance of December 22, 2008 № 367/16 “On reorganization of FGU FIPS”. The working party was established to deal with organizational and financial issues, as well as on reviewing organizational documents such as the Charter of FGU FIPS, which was duly coordinated and registered on March 30, 2009.

Thus FGU FIPS is the successor of the federal state entity “Chamber of Patent Disputes” and has carried out filing and registration of claims and appeals on decisions taken on the results on intellectual activity and means of individualization, as well as recognizing invalid or preterm termination of legal protection of the results of intellectual activity and means of individualization, preparing and posting documents on consideration and taking decisions by Rospatent of the claims and appeals filed with the Chamber of Patent Disputes under the provisions of Part IV, as well as holding panels of the Chamber of Patent Disputes and preparation of information on the results of fulfilling by Rospatent appropriate state function for publication.

On the basis of the above mentioned documents the structure of FGU FIPS was adjusted and the Division “Chamber of Patent Disputes” has been established, including the unit of consideration of claims and appeals and unit representation in judicial procedures. This merging was aimed first of all at reaching the goal of effective adjustment of approaches used by chamber of patent disputes while carrying out the preparation works for legal actions connected with consideration of disputes concerning the protection of intellectual rights in administrative manner with due account of judicial practice.

The Division “Chamber of Patent Disputes” has been a part of FGU FIPS since April 1, 2009. For that period of time the following has been carried out:

  • Model correspondence forms, used by the Chamber of Patent Disputes, have been developed and approved;
  • A number of technical units of former “Chamber of Patent Disputes” have been transferred to FGU FIPS. Those units were engaged in posting correspondence, computer technical support, cam cording of panels, automation of databases and publishing the decision taken;
  • The procedures of coordinating of the unit of consideration of claims and appeals with other units of FGU FIPS have been established;
  • The technology of processing and formal checking of claims and appeals filed to reduce time periods of their consideration has been adjusted;
  • The new time frames and procedures for panels of the Chamber of Patent Disputes and for unit of representation in judicial procedures have been approved;
  • The new system of remuneration aimed at stimulation of carrying out additional work has been introduced.

In 2009 the work to exclude cases of applying different approaches in panels’ work was continued. In particular, the information letter “On defining the interests of the person filed the claim on preterm termination of legal protection of trademark linked with non use” was published on May 20, 2009. The approaches mentioned in that letter were justified by a number of judicial decisions. Besides that, the work on summing up the practice of delaying panels has been conducted and unified approaches to grounds of delaying panels by the party to the dispute and by the panel were elaborated.

Tables 1.8.1–1.8.6 contain data for 2009.

Data in Table 1.8.1 shows that the number of claims and appeals decreased in 2009, as compared with 2008 by 19,0%.

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

Results of intellectual activity and means
of individualization

2005

2006

2007

2008

2009

Inventions

233

295

430

334

347

Utility models

106

119

167

106

140

Industrial designs

29

30

22

49

34

Trademarks

1736

2097

2876

2392

1813

Appellations of origin

7

1

Granting exclusive right for prior registered
appellation of origin

4

1

Total

2104

2552

3497

2881

2334

Data contained in Table 1.8.2 shows that significant increase of the number of decisions taken by Rospatent on claims and appeals as compared with the previous years, despite of some decrease of claims filed in 2009 as compared with 2008 (by 19,0%). This fact was conditioned by extension of expert staff, introduction of new system of remuneration stimulating carrying out additional work and reduction of cases of delaying panels.

Table 1.8.2

The Number of Fillings with the Chamber of Patent Disputes and Rospatent’s Decisions Taken

Type of application

2006

2007

2008

2009

Filed

Decisions taken

Filed

Decisions taken

Filed

Decisions taken

Filed

Decisions taken

Appeals against the decisions of examination

723

625

1107

555

901

729

1001

1002

Appeals against granting legal protection

753

639

712

548

564

419

492

532

Claims

1076

799

1678

903

1416

1159

841

1393

Applications not recognized as claims and appeals

0

556

0

662

0

404

0

378

Claims and appeals recognized withdrawn

0

66

0

44

0

32

0

31

Total

2552

2685

3497

2712

2881

2743

2334

3336

During 2009 proceedings in respect to 31 cases were stopped at the request of persons filed claims or appeals. This figure corresponds with the indices of the previous year (32 cases).

Besides that, the number of applications to the Chamber of Patent Disputes not considered on the grounds of not meeting the requirements of filing set forth on part II of Rules of filing claims and appeals and their consideration in the chamber of patent disputes has been decreased by 6,4%.

As in previous years most cases, when the consideration of cases have been rejected, were conditioned by the absence or incorrect filling of documents on payment of patent fee for consideration of claims and appeals to due amount or by filing outdated claims and appeals.

Table 1.8.3 demonstrates the distribution of decision taken by Rospatent on different types of the results of intellectual activity and means of individualization.

Table 1.8.3

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

Types of results of intellectual
activity and means
of individualization

Years

Decisions

On appeals against
examination decisions

On appeals against granting
legal protection

On requests

Inventions

2007

94

80

2008

204

59

2009

231

80

Utility models

2007

11

89

2008

6

77

2009

4

78

Industrial designs

2007

4

19

2008

4

13

2009

14

20

Trademarks

2007

446

356

903

2008

515

270

1159

2009

753

354

1393

Appellations of origin

2007

3

2008

2009

Granting exclusive right for prior
registered appellation of origin

2007

1

2008

2009

This Table demonstrates also that the number of decisions taken in 2009 in respect to trademarks (2500), as in previous years, significantly exceeds the number of decisions taken in respect to objects of patent law (427).

It should be noted that in 2009 the number of decisions taken on inventions, as compared with 2008 increased by 18,3%, and a compared with 2007 г. by 78,7%.

Table 1.8.4 contains results of consideration of appeals on different types of the results of intellectual activity and means of individualization, in particular 621 appeals were satisfied and 828 appeals were not satisfied.

Table 1.8.4

The Results of Considerations of Objections

Types of results of intellectual activity
and means of individualization

Years

Results of consideration

Appeal satisfied

Appeal not satisfied

Inventions

2007

52

108

2008

142

117

2009

36

256

Utility models

2007

32

63

2008

31

46

2009

32

44

Industrial designs

2007

10

9

2008

8

8

2009

3

29

Trademarks

2007

344

401

2008

361

363

2009

550

499

Appellations of origin

2007

3

2008

0

2009

Granting exclusive right for prior
registered appellation of origin

2007

1

2008

0

2009

Total

2007

438

585

2008

542

534

2009

621

828

Table 1.8.5 demonstrates that number of decisions of examination on applications supported by the decisions of Rospatent increased as compared with 2008 by 77,8%. At the same time the number of amended and out ruled decisions of examination increased as well by 9,3%.

Table 1.8.5

The Number of Decisions of the Results (of Considerations of Objections)

Types of decisions

2006

2007

2008

2009

Decision of examination
on applications

Regognized as valid

333

302

315

560

changed

76

73

82

21

outruled

195

163

318

416

Protection document

Recognized not valid totally

137

115

106

98

Recognized not valid partially

124

97

48

105

Recognized valid

266

273

204

249

Processing stopped

133

80

75

85

Total

1264

1103

1148

1534

Table 1.8.6 demonstrates that in the results of consideration of appeals on termination of legal protection of trademarks for non use 857 appeals were satisfied entirely or partially, 22 appeals were not satisfied and proceedings on 514 appeals were stopped (mostly because of absence of interested persons filed the appeal).

Table 1.8.6

The Number of Considered Application on Trademarks
(as Distributed on the Types of Applications)

Types of decision

2006

2007

2008

2009

Appeal for non use of trademark

Satisfied partially

256

253

394

560

Satisfied totally

334

436

482

297

Not satisfied

25

38

35

22

Proceedings stopped

158

157

246

514

Total

799

903

1159

1393

In 2009 Rospatent carried out the administrative procedures on consideration of appeals to be filed under the provisions of Part IV directly with Rospatent. Thus, 10 appeals against granting legal protection of trademark motivated by the actions of right holder in respect to official registration of trademark were recognized as acts of unfair competition and (or) as abuse on the grounds of the decisions of the Federal antimonopoly service and its territorial offices (9 appeals) and on the grounds of judicial decisions (1 appeal). In the results of consideration of 8 filed appeals the decisions were taken to recognize granting legal protection of trademarks invalid entirely or partially. One appeal was rejected on the grounds of the judicial decision recognized the decision of antimonopoly authority invalid. The proceeding of another appeal was stopped as the appeal has been withdraw by the petitioner.

Rospatent carried out the work on summing up of implementation practice concerning appeals. As a result of this work the proposals were prepared and used while drafting the Administrative regulation of the Federal Service for Intellectual Property, Patents and Trademarks to fulfill the functions incurred by the State on organization on recognition as invalid granting legal protection and preterm termination of legal protection of trademark, service mark, appellation of origin, recognition as invalid and annulations of patent for invention, industrial designs, patent (certificate) for utility model, preterm termination of the validity of patent for invention, industrial designs, patent (certificate) for utility model, annulations of records on the Official register of appellations of origin of the Russian federation and certificates on the exclusive right for appellation of origin. This Administrative regulation is being coordinated by the Russian Ministry of education and science.

1.9. Cooperation of Rospatent with the Federal Authorities and Judicial Authorities

In accordance with the Status of the Federal Service for Intellectual Property, Patents and Trademarks, Rospatent is carrying out the activity in coordination with other federal authorities, including the information and methodological support to federal authorities enforcing legislation in the area of civil turnover of the objects of intellectual property.

In 2009 г. Rospatent concluded a number of agreements on cooperation and coordination with federal authorities, in particular:

  • Agreement on cooperation between the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Service of Bailiffs of March 12, 2009. Under this agreement Rospatent provides the Federal Service of bailiffs and its territorial offices free of charge with the Internet access to its information databases, containing officially published information on protected in Russia results of intellectual activity and means of individualization, as well as the opportunity to make information searches of such results and means of individualization in order to identify of the material status of debtors;
  • Agreement on cooperation between the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Agency on technical regulation and metrology of October 15, 2009. Under this agreement Rospatent provides the Federal Agency on technical regulation and metrology free of charge at the requests of the latter information from appropriate official registers of inventions, utility models, industrial designs, trademark, service marks, appellations of origin and from the List of well-known marks in Russia, as well as information on legal protection of IP objects by virtue of international treaties of the Russia Federation. The Federal Agency on technical regulation and metrology, in its turn, provides Rospatent free of charge with the Internet access to the databases on national standards of the Russian Federation.

Generally speaking, the conclusion of the said agreements allows to facilitate coordination between federal authorities and to ensure:

  • information exchange of mutual interest;
  • providing methodological assistance while coordinating the efforts;
  • conducting joint actions in order to fulfill incurred functions effectively;
  • accounting the results of intellectual activity protected within the territory of Russia while developing new standards and revising the existing ones, as well as while optimizing the results of preliminary assessment of similarity of signs used in civil turnover with the protected means of individualization and industrial designs.

Besides that, the Agreement on cooperation between the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Customs Service dated on July 30, 2007 was amended on May 8, 2009. Those amendments were focused on procedures, forms and volume of information required by customs authorities. After amending this Agreement Rospatent shall:

  • Firstly, to submit information on the protected within Russia means of individualization, in particular: on trademark, service marks and appellations of origin, protected on the grounds of their registration in Rospatent; on well known trademarks; on trademarks protected in Russia by virtue of international treaties;
  • Secondly, to submit on a monthly basis information on changes in previously submitted information of means of individualization. The volume of such information is being submitted along with the searching facilities to ensure the search in all bibliographical margins and wording elements of trademarks;
  • Thirdly, to submit at the request of the Federal Customs Service the available information on security measures, taken in respect to means of individualization.

The submission of the said information was aimed, before all, at ensuring the coordination of efforts while realizing the competence of Rospatent and the Federal Customs Service, prevention, combating and investigating the cases of infringements of Russia legislation in the area of intellectual property.

The agreement on procedures of information sharing between the Federal Service for Intellectual Property, Patents and Trademarks and Russian Ministry of Justice was signed on October 16, 2009. The provisions of this agreement are aimed at facilitating enforcement practice and carrying out the control over compliance of non commercial organizations, including political parties, public and religious organizations to the legislation of the Russian Federation on official registration of symbols, as well as at raising the efficiency of the protection and enforcement of intellectual property. Under this agreement the Federal Service for Intellectual Property, Patents and Trademarks and Russian Ministry of Justice carried out the information exchange in respect to protected in Russia means of individualization (trademarks, service marks, appellations of origin), industrial designs and registered emblems of non commercial organizations and symbols of public associations.

Besides that, Rospatent at the request of Russian Ministry of Justice is conducting studies in respect to emblems of non commercial organizations and symbols of public associations, submitted to Russian Ministry of Justice for official registration, in order to identify confusingly similar signs, protected in Russia as trademarks, service marks, appellations of origin and industrial designs.

Besides the above mentioned agreements, on February 16, 2009 Rospatent signed the agreement on cooperation between the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Service on supervision in the area of health care and social development. The main aim of this agreement is to ensure the effective legal protection and enforcement of the results of intellectual activity and means of individualization in the area of medicine and pharmacology. 

In order to implement this agreement the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Service on supervision in the area of health care and social development have issued the joint Ordinance of 03.06.2009 № 86/4373-Pr/09 and established interagency working party with a certain terms of reference and participating officials of both federal authorities. The Directors General of the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Service on supervision in the area of health care and social development endorsed the 2009 Plan of actions of this interagency working party on June 3, 2009. This Plan of action was successfully fulfilled.

In 2009 specialists of the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Service on supervision in the area of health care and social development have drafted the “lists of terms” relating to pharmacology, biotechnology and medicine, mentioned in applications for patents for inventions and used in turnover of medicines, with due account of definitions of terms contained in normative acts effective in the area of health care and existing practice. It was decided that this “list of terms” would be published in the 1-st quarter of 2010 as the joint information letter and placed on official web sites of the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Service on supervision in the area of health care and social development. This list is subject to annual revision.

In order to clarify the issues concerning the legal protection and enforcement of objects of medicines and pharmacology on the basis of patenting the results of intellectual activity and registration of trademarks, there was established an information exchange between specialists of the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Service on supervision in the area of health care and social development, as well as holding consultations on the issues pertaining to intellectual property in the area of medicines and pharmacology. Besides that, the specialists of the Federal Service on supervision in the area of health care and social development, at the requests of the Federal Service for Intellectual Property, Patents and Trademarks, took part in consultation on the constant basis on issues on prolongation of validity term of patent for invention pertaining to medicines in order to solve problematic issues.

The specialists of the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Service on supervision in the area of health care and social development have developed the issue of inclusion in the title page of patent of the Russian Federation for the object of medical destination of the record that “patent for the object of medical destination” cannot be utilized without permission of the appropriate federal authority. At present the proposals to include this provision in appropriate administrative regulation have been developed.

The specialists of the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Service on supervision in the area of health care and social development are developing the issue on international non patent names of pharmacological substances, in particular development of procedures of appealing to the World Health Organization in cases when the Federal Service for Intellectual Property, Patents and Trademarks identifies trademarks identical or similar to international non patent names of pharmacological substances protected in Russia in order not to include them in the lists of international non patent names of pharmacological substances.

The positive consequence of cooperation between of the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Service on supervision in the area of health care and social development is that when the Federal Service for Intellectual Property, Patents and Trademarks registers trademark the Official Register of medicines of the Federal Service on supervision in the area of health care and social development is to be used.

In 2009 Rospatent and FIPS have carried out to the work on preparation the responses to requests from enforcement, antimonopoly, customs, tax agencies, offices of prosecutors, judicial authorities, bailiff’s offices and other federal authorities concerning submitting necessary information and clarifications, as well as rendering organizational and technical assistance. Most of such requests concerned:

  • submission of information on the results of studies the degree of confusion between registered signs used to label goods and trademarks;
  • homogeneous goods;
  • use in any object the signs of the protected invention, utility model, industrial designs;
  • submission of information on registration of any object of patent right, volume of protection granted, references of the protection document, its validity term, right holder, as well as of the contracts on alienation of the exclusive right, license contract.

All the received and considered requests were duly accounted and systemized (ref. Table 1.9.1).

Table 1.9.1

Number of Requests Received from Law-Enforcement and Individual Authorities

Federal Executive Authority

Number of Requests in 2009

Ministry of Internal Affairs

432

Federal Customs Service

712

Office of the General Prosecutor

88

Courts

132

Federal Antimonopoly Service

134

Ministry of Economic Development

7

Government of the city of Moscow

28

Federal Bailiff’s Service

3240

Taxation Authorities

268

As compared with the previous year the number of requests from the Ministry of Internal Affairs, Taxation Authorities, Federal Antimonopoly Service, as well as from Office of the General Prosecutor, Courts increased.

Rospatent has developed draft agreements on cooperation with the Ministry of Internal Affaires and Federal Antimonopoly Service. Those agreements could lead to reduction of number of requests in the nearest future. The work of concluding agreement on cooperation between Rospatent and the Federal Tax Service would be continued in 2010.

The number of requests from customs authorities has been reduced due to the Agreement on cooperation between the Federal Service for Intellectual Property, Patents and Trademarks and the Federal Customs Service. The vast majority of requests of the Federal Service of Bailiffs (total number 3240 requests) were received in the first half of 2009, e. i. for the period before signing the interagency agreement. In second half of the year the number of requests decreased significantly, what proved the tendency for reducing the number of requests after signing interagency agreement.

In 2009 Rospatent was represented in 1255 judicial hearings. During that period the courts of different levels issued more than 500 judicial decisions on disputes connected with intellectual property objects.

The practice demonstrates that the courts rejected most claims to contest decisions (actions) of Rospatent and FIPS (470 court case), proving the well grounded decisions of Rospatent and FIPS and high quality of examination.

Besides that, significant number of cases when courts satisfied claims of applicants (60 court cases) did not define Rospatent and FIPS as parties to the case, e. i. the decisions of Rospatent were not contested (for example, disputes on identification of author/patent holder for invention, utility model, industrial designs, disputes on invalidity of contracts in respect to objects of patent rights, disputes on infringements of exclusive rights for IP objects etc.).

The appeals and claims, on which the courts decided in favor of applicants recognizing decisions of Rospatent invalid, would become subject to second hearing to be initiated by the decision of the Director General of Rospatent.

Table 1.9.2 contains the results of consideration court cases with the participation of Rospatent in 2009 by arbitration courts and courts of first instance.

Table 1.9.2

The Results of Consideration of Cases Involving Rospatent and its Subordinates
by Arbitration Courts and Courts of General Jurisdiction in 2009

Total number
of court hearings

Types of IP objects

Results of court hearings

Total number
of court decisions

Arbitration courts

Courts of first instance

Rejected

Satisfied

Rejected

Satisfied

1255

trademarks

333

42

7

1

383

Appellations of origin

2

2

Inventions, industrial designs,
utility models

77

10

51

7

145

Total

412

52

58

8

530

In 2009 Rospatent took part in discussions of the concept of draft constitutional law “On amendments to the federal constitutional laws “On judicial system of the Russian Federation” and “On Arbitration Courts of the Russian Federation” (hereinafter referred to as Concept), developed by the High Arbitration Court of the Russian Federation. The main idea of the Concept is the establishment of specialized arbitration court to resolute disputes in the area of intellectual property. The title of the new court is planned to be the Patent Court of the Russian Federation or the Court on the rights of intellectual property.

In the view of specialists of Rospatent the idea of establishment in the Russian Federation of the specialized court to consider cases on infringements of intellectual property and decisions of Rospatent deserves to be justified. It is not a secret that nowadays the court hearings are lengthy (up to 3 years), including prejudicial hearings in Rospatent, as well as further consideration in different judicial instanced. This would require reduction of staff involvement through inviting to the process qualified specialists.

The world practice demonstrates that this category of cases is the most complicated and requires specially trained judges. This idea became even more actual under the new Part IV of the Code and extending practice of using intellectual property objects in economic turnover, including those created at the expense of federal budget. That is why the importance of goals put in the Concept to raise the effectiveness of system of enforcement of intellectual property and quality of justice while considering cases on infringements of intellectual property.

Taking into account the above mentioned, while considering the issue of establishing specialized court to deal with cases on intellectual property, the interests of a human being and his rights are in the focus of this work.

At present the work on the Concept is being continued.

1.10. Cooperation with the Regions of the Russian Federation

In 2009 г. Rospatent and FIPS continued to follow the Program of cooperation with the regions of the Russian Federation (hereinafter referred to as Program). Rospatent has signed revised Agreements on cooperation with Administrations (Governments) of Arkhangelsk, Volgograd and Orel and concluded Agreements with Administrations (Governments) of Altay, Astrakhan and Kaliningrad, as well as with Counsel of Ministers of Chuvash Republic.

Besides that, in 2009 the additional agreement was signed with the Government of Astrakhan region on cooperation through the Multifunctional centers of rendering state and municipal services and FIPS concluded agreement with the Autonomous entity of Astrakhan region “Multifunctional center” on receiving documents of application for the results of intellectual activity and means of individualization.

FIPS concluded the revised agreement with Non government educational entity “Togliatti Institute of technical creativity and patents”.

At present Rospatent concluded agreements with Administrations (Governments) of 20 regions and FIPS is collaborating on the basis of agreements with 48 regional organizations from 36 regions of the Russian Federation (ref. Table 1.10.1 and drawing 1).

Table 1.10.1

Cooperation of Rospatent with the Regions of the Russian Federation

Federal district

Regions concluded
cooperation agreements
with Rospatent

Regional focal points
concluded cooperation
treaties with FIPS

Central

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 university

Belgorod 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

Kaliningrad state technology university

South

Volgograd

Volgograd Science and Technology Center

Volgograd chamber of commerce and industry

Astrakhan

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

Chuvashia

Chuvashiya Science and Technology Center

National library of Chuvashiya

Perm Science and Technology Center

Togliatti institute of technical creativity and patents

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

Altai

Far East

Khabarovsk

Khabarovsk Science and Technology Center

Far East agency of assistance to innovations

Total

20

russia.ai

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, 36 — Altay

In 2009 FIPS has granted free of charge the access to patent databases of FIPS on national inventions and utility models to 42 organizations, including 41 organizations under the Federal targeted program “Development of infrastructure of nanoindustry in the Russian Federation for 2008–2010» and to1 regional focal point.

Totally within the framework of the Program of information support of the regions (endorsed by Ordinance of Rospatent on February 26, 2004 №18) free access through web site to full text databases on national inventions and utility models was granted to 164 organizations in 7 Federal Districts of the Russian Federation. Such an access was granted to 40 regional organizations, having cooperation agreements with FIPS; to 8 science city-centers, including cities of Korolev, Dubna, Reutov, Friazino, Protvino of Moscow region, Obninsk of Kaluga region, Michurinsk of Tambov region and Koltsovo of Novosibirsk region; 41 state science centers and 34 science centers of Academy of Science, as well as to 41 organization within the framework of the Federal targeted program “Development of infrastructure of nano-industry in the Russian Federation for 2008–2010”.

Table 1.10.2 demonstrates distribution of organizations having free access to FIPS full text databases on national inventions and utility models.

Table 1.10.2

Distribution of Organizations Having Free Access to FGU FIPS Full Text Databases
on National Inventions and Utility Models

Federal Districts

Related Organizations

Science Towns

State Science Centers

Science Centers
of the Russian
Academy of Science

Federal program

A Total of Institutions

Central

9

7

29

10

15

70

Northwest

2

10

4

3

19

South

7

1

6

14

Volga

10

1

6

8

25

Ural

6

3

2

11

Siberian

4

1

6

5

16

Far Eastern

2

5

2

9

Total

40

8

41

34

41

164

In 2009 Rospatent organized 45 conferences, seminars and roundtables in 23 regions of the Russian Federation:

In the Central federal district — 23 events:

April 2 — international science&practice conference and roundtable “Legal protection of IP objects under Part IV of the Civil Code of the Russian Federation (Moscow);

April 23–24 — science&methodology conference on issues of organization of patent and license activity, legal protection and utilization of works created at the expense of federal budget (city of Obninsk);

April 23–24 — interregional science&practice conference “Role and importance of intellectual property under the crises” (city of Tver);

April 28–29 — seminar “Use of patent and non patent databases while licensing for organizations of national nano-technological network of the region” (city of Belgorod);

May 27–28 — seminar “Issues of patent activity, legal protection and utilization of the results of the work” within the framework of the Federal targeted program “Development of infrastructure of nano-industry in the Russian Federation for 2008–2010» (Moscow);

June 5–6 — regional seminar for specialists of the Central federal district on the issues of Madrid system of international registration of signs, organized by WIPO along with Rospatent (city of Ryazan);

August 25–26 — seminar on priority direction “Industry of nano-systems and materials within the framework of the Federal targeted program “Development of infrastructure of nano-industry in the Russian Federation for 2008–2010» to implement the third stage of the state contract of November 19, 2008 г. № 01.647.12.3002 “Coordination of work on methodological, technological and organizational assistance of patent and license work of organization of nano-technological network” (Moscow);

August 27 — science&practice seminar “State policy in the area of intellectual property” (Moscow);

August 28 — roundtable “Federal targeted programs as instrument of state management of innovations” (Moscow);

September 3 — roundtable “Actual issues of identification and recognition of single technology: legal, economic, organization and management aspects of implementation of Article 1542 of the Code» (Moscow); 

September 9 — consultation seminar “Information and analytical support for organizations participating in the Federal targeted program “Development of infrastructure of nano-industry in the Russian Federation for 2008–2010” (Moscow);

October 1 — conference “Nano-technology — issues of legal protection” (city of Puschino);

October 8 — consultation seminar “Actual issues of preparation and submitting of accounting documentation on R&D carried out within the framework of the Federal targeted program “R&D on the priority direction of development of innovation complex of Russia for 2007–2012”. Peculiarities of information system of the State enterprise “State directorate of targeted of science and technology program” (Moscow);

October 14 — seminar “Patent and information studies aimed at raising competitiveness of Russian R&D in nano-technologies, ensuring effectiveness of their commercialization and assessment of goals of patenting them in the Russian Federation and abroad” (city of Obninsk);

October 13–14 — international seminar “Pecuriarities of patent and information support in central libraries of Russian regions” (city of Tver);

October 19 — science&methodology conference “Problems of organization and methodological support of patenting activity of organizations of Moscow” (Moscow);

October 21–22 — regional conference for specialists of the Central federal conference “Actual issues of protection of intellectual property under Part IV of Russian Civil Code” (Yaroslavl);

October 23 — science&methodology seminar “Analysis, control and accounting of implementation of State contracts in identifying, legal protection and utilization of R&D results received in state educational entities of high professional education of Moscow” (Moscow);

October 28–29 — seminar “Goals and problems of patenting the objects of agro production” (city of Voronezh);

November 10 — science&methodology conference “Summing up the results of the state contract in the area of patent and license activity in 2008–2009” (Moscow);

December 7–8 — seminar “Peculiarities of the legal protection of inventions and utility models under Part IV of the Civil Code of the Russian Federation and Administrative regulations” (Tver);

December 16–17 — XVIII science&practice conference “Priorities of innovation society — regional aspects” (Tver);

November 19 — regional science&technology conference “Problems of legal protection and effective utilization of objects of intellectual property in innovation activity of enterprises” (city of Kaluga);

In North West federal district — 5 events:

April 7 — seminar “Legal regulation of relations concerning utilization and dissemination of computer programs and databases” (St. Petersburg);

April 22–23 — seminar within the project “Intellectual property of St. Petersburg — Development of system of protection of intellectual property and establishing cooperation in that are between Russia (St. Petersburg), Finland, Sweden and Denmark” (St. Petersburg);

June 25–26 — 11-th annual science&technology conference “Petersburg Collegial Readings — 2009” (St. Petersburg);

October 22–23 — Milk forum devoted to 170 anniversary of N. Vereschagin (city of Vologda);

November 26–27 — seminar “Innovation development of the area of IT technologies trough legal protection of the results received at the expense of federal budget” (St. Petersburg).

In Volga federal district — 9 events:

25–26 февраля — science&practice seminar “Legal protection of the results of R&D activity as necessary condition of innovation development of enterprise” (City of Saransk);

March 17–18 — regional science&practice conference “Actual issues of protection of intellectual property under Part IV of the Civil Code of the Russian Federation” (City of Perm);

March 24–25 марта — VII science&practice conference “Actual issues of protection of intellectual property” (City of Nozhny Novgorod);

April 23–24 — seminar “Actual issues of protection of intellectual property under Part IV of the Civil Code of the Russian Federation and Administrative regulations” (city of Cheboksary);

June 2–3 — regional seminar for specialists of Volga federal district on the issues of Madrid system of international registration of signs organized by WIPO along with Rospatent (city of Saratov);

June 19–20 — V Euroasian forum “International aspects of informations security” (city of Kazan);

October 22 — international science&practice conference “Practice and innovation in creation, registration, protection of trademarks, firm names and commercial names” (city of Samara);

October 27 — science&practice conference on issues of protection and enforcement of intellectual property of enterprises at present time (city of Kazan);

December 25 — conference devoted to 50 anniversary of Penza state technological academy (city of Penza).

In Urals federal district — 3 events:

May 27–28 — science&practice conference on issues of intellectual property for enterprises, organizations and entities of the city of Tumen and its region (city of Tumen);

September 22–23 — regional science&practice conference for specialists of Urals federal district “Legal protection of R&D results” (city of Cheliabinsk);

October 30 — regional science&practice conference “Nano-technologies in Tumen region: problems of legal protection and commercialization” (city of Tumen).

In South federal district — 4 events:

February 8–11 — Kaspiy innovation forum (city of Astrakhan);

May 20–21 — science&practice conference for specialists of South federal district of the Russian Federation “Legal protection of R&D results — basis of innovation economy” (city of Astrakhan);

June 25–29 — honor events and conference devoted to the Day of innovator (city of Sochi);

October 15 — seminar for specialists of South federal district of the Russian Federation “Legal regulation of relations concerning creation, utilization and dissemination of computer programs and databases (city of Krasnodar).

In Far East federal district — 1 event:

September 11 — seminar “Peculiarities of legal protection of inventions” (city of Khabarovsk).

Siberian Federal District — 0

1.11. Applications of Citizens and Legal Entities, Considered by Rospatent and its Subordinary Organizations in 2009

In 2009 Rospatent and FIPS have considered 2320 applications of citizens (1427) and legal entities (893). 111 applications have been received by electronic post.

The central office of Rospatent has received 1430 direct applications (946 applications addressed to Rospatent per se, the rest were forwarded from federal authorities and Public Chamber of the Russian Federation). This figure increased by more than 22% as compared with 2008. 250 application from the total number of applications were considered by the central office of Rospatent, this figure corresponds to indices of 2008. The rest 1180 applications were forwarded for consideration to FIPS.

In 2009 there was a tendency to increase of number of applications have been observed since 2006. However, the pace of this increase as compared with previous years significantly reduced (from 25% — in 20072008, up to 7% — in 2009 as compared with previous period).

Table 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 Rospatent

946

To Other State Bodies

474

To Russian Public Chamber

10

To Subordinate Bodies of Rospatent

890

Appeals received:

Number of Appeals

From the Russian Federation

2211

From CIS Countries

83

From Other Countries

26

The said increase of number of applications occurred, generally, due to applications from citizens of the Russian Federation from three federal districts, namely South, Volga and Siberian. The total volume of those applications was equal to one third of total number of all applications from the Russian Federation.

62% of applications were the applications of citizens.

Table 1.11.2 contains data on distribution of applications of citizens of the Russian Federation among 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

1055

North-West

248

By-Volga

349

South

235

Siberia

175

Ural

106

Far East

43

Table 1.11.3 contains data on number of applications, received by Rospatent and its subordinate organizations summed up in groups for 2005–2009.

Table 1.11.3

Data on the Number of Appeals Received by Rospatent and its Subordinate Bodies
in 2005–2009 and Grouped

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

The Amount of Appeals and Addresses

2005

2006

2007

2008

2009

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

526

579

621

855

808

Assistance to Inventors

168

207

307

346

377

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

125

157

182

185

196

Legal Issues

121

129

200

270

300

Payment of Patent Fees

95

93

108

80

150

Patent Information Services

54

83

165

223

237

Contracts (Registration, Disputes Between the Parties)

84

61

54

78

63

Publication (Time Limits, Errors)

19

21

43

29

25

Registration of Discoveries

18

16

38

31

35

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

6

7

15

37

68

Personnel Issues and Work of Patent Attorneys

4

4

5

9

9

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

60

93

62

37

52

Total

1280

1450

1800

2180

2320

Insignificant increase of number of applications (around 6,5%) as compared with the previous year has occurred, generally, due to applications on issues of payment of fees, training and legal issues. That was connected with the introduction of new amounts of patent fees since the beginning of 2009, as well as with new legislation. The applications contained requests to clarify the legal provisions and proposals to amend Part IV of the Civil Code.

The submitted applications are grouped in 5 main clusters:

  • Examination of applications for results of intellectual activity (processing applications, reduction of time frames of their consideration, results of examination etc.);
  • Assistance to inventors (assistance in filling up and filing the applications, in utilization of results of intellectual activity, obtaining funding for new researches, proposals on facilitation of innovation activity etc.);
  • Legal issues (clarification of legal provisions in the area of intellectual property, enforcement of rights for ojects of patent rights, issues connected with inheritance etc.);
  • Payment of fees (procedures of payments of fees, granting privileges and delays in payments, etc.);
  • Rendering patent and information services (obtaining information of authors, patent holders, registrations, requests for copies of application materials, patent documents, carrying out information searches etc.).

The summarized share of applications on the said clusters is equal, as in 2008, to 80% from the total number of applications. At the same time the number of applications has been changed. Thus, the number of applications on the issues of examination of applications for the results of intellectual activity decreased, and a number of applications on payments of fees increased.

From the total number of applications considered 78% were requests, 3% were proposals and 19% were claims.

9 citizens were received in Rospatent personally on issues concerning the activity of the Office.

Rospatent is working constantly to ensure the right of citizen to apply to federal authorities, to raise the quality of protection of their constitutional rights and legitimate interests. The regular analysis of processing the citizens’ applications was introduced into practice of weekly work. The attention was drawn to the proposals, remarks and claims of citizens in order to take into account while amending the legislative acts in effect. When infringements of rights and legitimate interests of citizens are identified, the measures are being elaborated to exclude and prevent such infringements (administrative measures, issuing ordinances and rulings).

The consultation and Q&A service, headed by the Head of the Service of quality of Rospatent, is rendering consultations (including those by phone) concerning the area of legal protection of the results of intellectual activity, analyses and systematize requests of citizens. In 2009 when administrative regulations entered into force the number of oral applications to the consultation and Q&A service increased (by 22% as compared with 2008).

The consideration of significant part of applications (more than 20% from the total number of applications) were made by the Service of quality of Rospatent (including more than 55% of claims).

In 2009 53 filed claims on the activity of Rospatent’s officials were recognized as grounded. While receiving the claims the grounds of them were checked. From the total number of claims on actions connected to consideration of applications for the results of intellectual activity (considered more than 121 thousand applications), 42 claims were recognized as grounded, e.i. 1 such claim for about 2880 considered applications, in particular:

  • on registration of trademarks — 24 (considered more than 55 thousand applications), that is 1 grounded claim for about 2320 considered applications;
  • on issuing patents for:
    • inventions — 10 (considered more than 40 thousand applications), that is 1 grounded claim for about 4000 considered applications;
    • utility models — 8 (considered more than 12 thousand applications), that is 1 grounded claim for about 1490 considered applications.

The claims on actions concerning consideration of applications for the results of intellectual activity were, generally, of subjective character (mistakes of experts). The receiving of grounded claims were connected with negligence to the established procedures and rules of consideration of applications and, as consequence, the time frames of consideration were violated.

In the area of actions connected with registration of contracts (considered more than 15 thousand contracts on alienation of exclusive rights for inventions, utility models, industrial designs and trademarks and granting the right for their use), 1 grounded claim was for about 3910 of completed consideration of contract.

In the area of actions connected with amending the protection documents, prolongation of validity terms, there were 3 grounded claims.

Claims on actions connected with registration of contracts and amending documents were also conditioned by negligence to the established procedures of registration of contracts and violation of time frames for consideration.

The rest grounded claims concerned actions connected with consideration of appeals by the chamber of patent disputes, misprints while publishing description of patents for invention, placement of incorrect information in open registers on Rospatent’s web site concerning patent for utility model and making international search.

Among objective reasons that led to the grounded claims there are absence of strict normative regulation of procedures (that concerns the area of notification on consideration of application and procedure of payment for preliminary examination on applications for registration of trademark), the delay of the term of registration of license contract due to problems of automation system «Parus», absence of technological support for the procedure of consideration of preterm termination of legal protection of trademark when it turned into public domain, as definition of the good of certain type and other reasons.

All the necessary measures, aimed at lifting subjective and objective reasons that caused the claims, have been adopted.

In cases when the rights and legitimate interests of citizens are infringed (less than 2,3% from total number of applications) the measures were taken towards the officials guilty in infringement and organizational and other measures were taken to prevent such infringements in the future.



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