The Federation Council has approved the draft law No. 390361-8 “On Amending Article 1248 of Part Four of the Russian Civil Code” (the “Draft law”). The Draft law will shortly be signed by the President and will enter into force 10 days after its publication.
According to the Draft law, article 1248(2) of the Russian Civil Code will be amended with a provision on the possibility to reimburse the costs borne before Rospatent from the losing party1. In case where a dispute is partially satisfied, the expenses shall be reimbursed in proportion to the volume of satisfied claims.
Under the Draft Law, the following costs are to be reimbursed:
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patent and other fees;
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patent attorneys, advocates and lawyers services (within reasonable limits);
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other costs incurred in connection with the consideration of a dispute in Rospatent.
Thus, based on the new version of article 1248(2) of the Russian Civil Code, the winning party in Rospatent will be able to reimburse the costs related to the proceedings of the dispute similar as litigation expenses.
The Draft law is adopted taking into account the Resolution of the Russian Constitutional Court dated 10.01.2023 No. 1-P, in which the Constitutional Court stated that article 1248(2) of the Russian Civil Code is partially inconsistent with the Russian Constitution, since the absence of the possibility for the parties to a dispute at Rospatent to recover the costs incurred unjustifiably restricts the right to intellectual property protection.
The Russian Constitutional Court also clarified that the costs incurred during Rospatent dispute may be charged to the losing party according to the rules of reimbursement of litigation expenses. However, this mechanism may be applied only in case of appealing the Rospatent decision in court and before making necessary amendments to the law.
1 The same is also applicable for disputes regarding breeding achievements resolved by the Ministry of Agriculture