The State Duma is considering the bill No. 818556-8 “On Amendments to Part Four of the Civil Code of the Russian Federation” (the “Bill”), the authors of which propose to amend the procedure for making decisions on the use of inventions, utility models and industrial designs (“Objects of patent rights”) established by Article 1360 of the Civil Code of the Russian Federation.
According to the Bill, the Russian Government will be able to take decisions on granting the right to use the Objects of patent rights not only in cases of extreme necessity, but also in cases when the decision is in the interest of the economic development of the Russian Federation.
As a result, the Bill proposes to expand the range of Objects of patent rights in respect of which a decision on granting the right of use may be taken without the consent of the right holder. In addition, the authors of the Bill propose to provide for the possibility of granting the right of use not only in respect of Objects of patent rights, but also in respect of patent applications.
The Russian Government may grant the authority to make such a decision to federal executive authorities whose competence includes the branches of industry in which the Objects of patent rights are used. In order to determine the Objects of patent rights on which a decision may be taken, it is proposed to approve lists of unused or insufficiently used inventions, utility models and industrial designs.
According to the current wording of the Bill, the Objects of patent rights used in goods, works and services available in Russia shall not be included in the list. At the same time, the approval of the criteria of availability of goods, works and services is also referred to the competence of the Russian Government.
Authorized bodies will be responsible for compiling, amending and approving the lists. However, the Russian Government will approve the procedure for compiling and maintaining the lists, as well as determine the conditions and requirements to the Objects of patent rights for their inclusion in and exclusion from the lists.
In order to exclude an Object of patent rights or a patent application from the list, the right holder or the applicant will have to apply to the authorized body and prove the following circumstances:
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The patentee has started to use the Objects of patent rights in the territory of Russia;
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The patentee has taken measures to ensure the availability of goods, works and services in which the Object of patent rights are used in the territory of Russia;
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Other circumstances that caused the inclusion of the Object of patent rights in the list have ceased to exist and their occurrence is unlikely again.
Any Russian legal entity that meets the requirements established by the Russian Government may submit an application for the use of an Object of patent rights to the authorized body that approved the list.
The Bill provides for the following procedure for making a decision on granting the right to use an Object of patent rights without the consent of the right holder:
Upon receipt of an application for the use of an Object of patent rights, the authorized body that approved the list shall notify the patentee (applicant of the patent application) thereof and propose that it concludes a license agreement (preliminary license agreement) with the applicant within a certain period of time.
If the patentee (applicant of a patent application) refuses to conclude a license agreement (preliminary license agreement) or its execution, the authorized body shall forward the received application to other federal executive authorities to obtain their consent to make a decision on the use of the Objects of patent rights by the applicant.
In the absence of objections from other federal executive authorities, the authorized body that has accepted the application shall independently make a decision on granting or refusing to grant permission to use the Objects of patent rights. The authorized federal body shall notify the right holder as well as Rospatent of the decision taken.
In cases where permission to use an object of patent rights is granted under extraordinary circumstances, as well as for the purposes of defense, national security, or in other situations determined by the Russian Government, the decision to grant permission shall be taken directly by the authorized body that accepted the application.
After the decision enters into force, the applicant is granted the right to use the Objects of patent rights without the consent of the patentee during the entire period of validity of the patent.
The decision granting the right to use the Objects of patent rights may be revoked in the following cases:
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The person to whom the right of use has been granted has not exercised that right within 3 years from the date when the decision came into force;
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The right holder has taken measures to ensure the availability of goods, works and services in which the object of the patent right is used in the territory of Russia;
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The extraordinary measures that gave rise to the decision have ceased.
If the decision on granting the right to use the object of patent rights is not revoked, the person to whom such right is granted is obliged to pay remuneration to the right holder.
The Bill is one of many legislative initiatives aimed at supporting the technological development of the Russian Federation in the conditions of sanctions restrictions1.However, to date, no legislative initiatives have been developed in the Russian Federation that would significantly restrict intellectual property rights, and the rights and legitimate interests of right holders continue to be protected.
1The State Duma is considering bill No. 651038-8, the authors of which propose to withdraw legal protection from intellectual property objects belonging to right holders from unfriendly countries.