The right to patent protection

In order to encourage authors to create new objects in the scientific and technical field, the authors were given the opportunity to secure monopoly rights to the results of the intellectual activity they created. The confirmation of the exclusive right to such objects is a patent, which certifies the priority, authorship, and exclusive right to an invention, utility model, or industrial design (paragraph 1 of Article 1354 of the Civil Code of the Russian Federation (hereinafter referred to as the Civil Code of the Russian Federation).

According to the statistics provided by Rospatent in the annual report 2021, an average of about 35,000 patents for inventions, utility models, and industrial designs are issued annually. These indicators illustrate the active participation of the authors in the scientific development of our state.

It should be borne in mind that after filing an application for registration of an invention, utility model, or industrial design, the fight for a patent does not end, but only begins since there are still people who would also like to use similar objects in their activities. Here, the future copyright holders have a question, from what moment do they have the right to protect their object?

Ways to protect patent rights are listed in Article 1252 of the Civil Code of the Russian Federation and involve, among other things, the use of measures to recognize, restore, and suppress the illegal use of objects of patent rights, as well as recover damages/compensation for such illegal use.

By virtue of Article 1353 of the Civil Code of the Russian Federation, “the exclusive right to an invention, utility model or industrial design is recognized and protected subject to state registration of the relevant invention, utility model or industrial design, on the basis of which the federal executive authority for intellectual property issues a patent for the invention, utility model or industrial design".

Accordingly, the emergence and protection of exclusive rights to patent objects are made dependent on their mandatory state registration, as a result of which a corresponding patent is issued by the federal agency for intellectual property.

The above provision is continued in paragraph 1 of Article 1363 of the Civil Code of the Russian Federation, which indicates that the exclusive right to an invention, utility model, industrial design, and the patent certifying this right are valid subject to the requirements established by this Code, from the date of filing an application for a patent to the federal executive authority for intellectual property or in the event of separation of the application (clause 4 of Article 1381) from the date of filing the original application <…>.”.

Despite the fact that this paragraph indicates that the exclusive right to objects of patent law arises from the date of filing an application for a patent, the legislator in the next paragraph, nevertheless, clarified that the protection of the exclusive right certified by a patent can be carried out only after state registration of an invention, utility model or industrial design and the grant of a patent.

It follows from this that the legal regulation of relations related to the use of exclusive rights to inventions, utility models, or industrial designs provided for by law implies the possibility of protecting the rights to the objects in question and, accordingly, the possibility of applying civil liability measures for their illegal use only after the occurrence legally significant circumstances, due to the occurrence of which all third parties are considered notified of the emergence of patent rights from the right holder. Such circumstances are the state registration and grant of a patent for an invention, utility model, or industrial design.

Given that, unlike other objects of intellectual property, the creation of inventions or industrial designs, as a rule, requires more financial and time costs, the legislator decided to provide temporary legal protection for such objects.

So, in accordance with article 1392 of the Civil Code of the Russian Federation, an invention or industrial design, for which applications have been filed with Rospatent to the federal executive body for intellectual property, from the date of publication of information about these applications until the date of publication of information about the grant of a patent, temporary legal protection is provided.

Since, after the publication of information about applications for an invention or industrial design, the claims or essential features of an industrial design become publicly available, the interests of the person who filed such applications may be affected and have negative consequences.

At the same time, according to paragraphs 2 and 3 of the same article, temporary legal protection is considered not to have occurred if the application for an invention or industrial design was withdrawn or recognized as withdrawn, or a decision was made to refuse to grant a patent on an application for an invention or industrial design and the possibility of filing an objection against this the solution provided for by this Code has been exhausted.

It is this paragraph of the norm of the law that makes the legal protection granted to new inventions and industrial designs “temporary”, setting the conditions for their activation.

If the person who filed the application has been granted a patent for an invention or industrial design, a such patent owner has the right to receive monetary compensation from the person using the claimed invention or industrial design during the period specified in paragraph 1 of Article 1392 of the Civil Code of the Russian Federation. The amount of such remuneration is determined by agreement of the parties, and in the event of a dispute - by the court.

Consequently, this provision does not give the future right holder the right to prohibit the use of inventions or industrial designs, applications for which were filed with Rospatent, before the date of issue of the relevant patents to him, however, it warns third parties that if a special federal body decides to grant patents for such objects, they will have to compensate for the losses, by paying remuneration, that have been incurred by the patent owner in connection with the use of his patents.

From the systematic interpretation of the above norms, it can be concluded that the current legislation does not provide for the possibility of the patent owner using liability measures in the form of recovery of damages or compensation to persons who used the invention or industrial design in the absence of the patent owner's consent, for the period between the date of filing an application for the invention or an industrial design and the date of registration of patents.

In turn, in order to ensure the legitimate interests of entities that have filed an application for a patent for an invention or industrial design, the current rules of law provide for the possibility of such persons using protective measures, expressed in receiving remuneration for the use of the claimed industrial design by a third party from the date of publication of information about the application until the date of publication of information on the grant of a patent, the amount of which is determined by agreement of the parties, and in the event of a dispute - by the court.

Considering a court case on the issue that is the subject of this article, the Intellectual Property Court stated the following:

“The legal regulation of relations on the creation and use of industrial designs implies the possibility of protecting exclusive rights to the relevant intellectual property objects and, thus, the possibility of applying civil liability measures for their illegal use only after the state registration of such objects and the issuance of a patent for them, that is after the occurrence of legally significant circumstances, due to the occurrence of which all third parties are considered notified of the emergence of patent rights from the right holder.

Along with the guarantee of protection of the exclusive rights of persons who have received a patent for an industrial design, the current legislation also provides for the possibility of ensuring the legitimate interests of entities that have filed an application for a patent for an industrial design. This possibility is expressed in the right of such persons to receive remuneration for the use of the claimed industrial design by a third party from the date of publication of information about the application until the date of publication of information about the grant of a patent. The amount of this remuneration is determined by agreement of the parties, and in the event of a dispute - by the court.

Thus, the regime of legal regulation of relations for the creation and use of industrial designs is not uniform, and its content depends on the occurrence of specific legally significant circumstances that constitute the procedure for obtaining a patent for an industrial design provided for by law.”.

Summing up, we can conclude that the current Russian legislation guarantees the protection of the exclusive rights not only of holders of patents for an invention or industrial design but also of persons who have just filed an application for a patent for such an invention or industrial design, which, it seems to me, encourages authors to the creation of new objects of intellectual property.