On 3 April 2017, the Federal Act on the ratification of the Geneva Act of the Hague Agreement was signed into law in Russia, introducing significant changes to patent legislation for protection of industrial designs and offering new options for applicants, both Russian and from abroad. The Geneva Act itself took effect in Russia on 28 February 2018. The Russian Federation became the 68th member of the Hague Union. The complete list of all Contracting Parties currently constituting the Hague Agreement is available here.
Basic Declarations Made by Russia and Their Implications for Companies
The Hague Agreement establishes general provisions for all Contracting Parties, but allows individual countries to declare certain amendments within the agreed ranges. The following list shows basic declarations made by Russia within such agreed ranges for the Hague System:
- change of a standard fee to an individual one for designating Russia as a Contracting Party;
- no deferred publication: Publication of a Hague application means that the design filed for registration will not be held confidential. This may represent a significant drawback for companies who prefer to keep their designs secret until launch of the product in question. In this case, an applicant should consider filing a national design application directly with the Russian Patent Office and claiming a convention priority if available;
- the refusal period of six months is replaced with a period of twelve months;
- the design unity requirement must be met: all design patent applications in Russia are examined for unity; this criterion is particularly rigorous and foreign applicants who rely on the Hague Agreement should be ready to file divisional applications for those designs that do not meet the said requirement;
- the validity term of an international registration in Russia begins from the date the Russian Patent Office forwards the relevant notification to the International Bureau of the World Intellectual Property Organization;
- change in ownership of an international registration for Russia will be null and void until the Russian Patent Office receives the relevant confirmatory documents;
- patent owners may enjoy protection for 25 years starting from the international application filing date – the initial term of validity of an industrial design patent is five years and is extendable for an additional five years four times;
- the period of one month for transmitting an application materials filed through the Russian Patent Office to the International Bureau of the World Intellectual Property Organization is replaced with a period of six months.
For companies and individuals, the Hague Agreement is a great way to obtain protection for industrial designs in many countries through a typically faster and generally less expensive process than the traditional model of starting with a patent attorney in each country. Despite the administrative advantages of the Hague System, one still needs to bear in mind that design protection across the world is far from unified. Caution should be taken to ensure that the particular general requirements for each jurisdiction, Russian in particular, are met before the application is filed.
It is understood that the Russian Patent Office will need time to adopt the system and it is highly likely that in future the Office will issue additional administrative rules that clarify issues relating to the examination of international design applications.
For those who are skeptical, the traditional path of preparing and filing a national Russian design patent application claiming a priority under the Paris Convention remains available.